Ex Parte GULICK - Page 8



          Appeal No. 2001-0594                                                        
          Application No. 08/929,153                                                  

          event to change the signal line on the bus to provide a wake-up             
          indication.                                                                 
               The examiner’s response, at the penultimate page of the                
          answer, is that the second bus interface circuit is an “inherent”           
          feature because “it is understood that the interface circuit is             
          essential for connecting devices together.”  The examiner’s                 
          response to just about every argued claim limitation is that it             
          is “inherent” [see the penultimate page of the answer and the               
          preceding page].  The examiner cannot merely assert “inherency”             
          without a convincing explanation as to why such feature is                  
          inherent.  In order for something to be “inherent”, the claimed             
          limitation must necessarily follow from what is taught by the               
          applied reference.  There is no indication in Walsh that the                
          interface circuit necessarily operates in the claimed manner or             
          that the entire bus in Walsh is necessarily inactive. Moreover,             
          even assuming, arguendo, that a second bus interface could be               
          considered “inherent,” that, in and of itself, does not explain             
          why such a second bus interface would need to be responsive to a            
          wake-up event to change the signal line on the bus driven by the            
          second integrated circuit from a first to a second voltage level,           
          thereby providing a wake-up indication to the first integrated              
          circuit indicating that a wake-up event has occurred.                       
                                         -8–                                          




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