Appeal No. 2001-2425
Application No. 09/276,474
rationale...” (Paper No. 5-page 5). Clearly, whatever rationale was applied by the
examiner against claims 8 and 15-28 is not appropriate for claims 35-51 since these
claims (claim 35, for example) are completely different from claims 8 and 15. Thus, the
examiner erroneously lumped claims 35-51 together with claims 8 and 15-28. Although
claims 35-51 are nothing like claims 8 and 15, because the examiner grouped them all
together, we have nothing from the examiner indicating any basis whatsoever for
rejecting claims 35-51 over Bullinger.
Even though appellants present no arguments regarding the specifics, for
example, of independent claim 35, we will not sustain the rejection of this claim, or any
of claims 35-51, under 35 U.S.C. § 103 because the examiner has quite clearly failed to
establish a prima facie, or any, case of obviousness with regard to the subject matter of
these claims. This is not to say that there would be no rationale under which these
claims may have been properly rejected in view of Bullinger. We do not know. We
simply assert that, whatever case might have been made, the examiner has, quite
clearly, not made it.
We have not sustained the rejection of claims 8-28 under 35 U.S.C. § 103
because we are not convinced that Bullinger suggests that the same data paths are
used in both the normal and test modes of operation.
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