Appeal No. 2001-2425
Application No. 09/276,474
registers, multiplexers, and decoders in conjunction with existing buses to provide test
access” [abstract]. Accordingly, Bullinger is not employing the same elements, or data
paths, to provide both normal and test modes of operation.
Independent claims 8, 15, 22, 24, 26 and 28 all require that the same data paths
are used in both the normal and test modes of operation. While appellants group the
claims into two groups and argue only independent claims 8 and 15, it does not appear
that these arguments are directed to independent claims 35, 41, 47 and 49, and the
claims dependent thereon, which do not recite that the same data paths are used for
both a normal and test mode of operation. While appellants grouped the appealed
claims into two groups, choosing claims 8 and 15 as representative of these groups, we
are not bound to appellants’ selection of representative claims. We could have chosen
claim independent 35, for example, which is broader, in some aspects, than
independent claim 8. Claim 35 contains limitations which were not argued by
appellants and, had the examiner presented a prima facie case of obviousness with
regard to claim 35, for example, it would have been proper for us to sustain such a
rejection in the face of appellants’ lack of any argument with regard to this claim.
However, the examiner’s position is that as to “claims 35-51, they fail to
distinguish over rejected claims 8, 15-28, accordingly, they are rejected under the same
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