Appeal No. 2006-1729
Application No. 10/107,628
reviewing the [E]xaminer’s decision on appeal, the Board must
necessarily weigh all of the evidence and argument.” Oetiker,
977 F.2d at 1445, 24 USPQ2d at 1444. “[T]he Board must not only
assure that the requisite findings are made, based on evidence of
record, but must also explain the reasoning by which the findings
are deemed to support the agency’s conclusion.” In re Lee, 277
F.3d 1338, 1344, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002).
With respect to representative claim 1, Appellants argue in
the Reply Brief that the combination of Rajski and Hong does not
teach a compactor characterized by a binary matrix having a row
for each of the plurality of circuit elements and a column for
each compactor output. Particularly, at pages 3 and 4 of the
Reply Brief, Appellants indicate that both references are devoid
of any teachings pertaining to a matrix, and they thus cannot be
relied upon to make a prima facie case of obviousness.
With the above discussion in mind, we find that the
combination of Rajski and Hong does not teach the claimed
invention. As noted in the discussion of representative claim 22
above, Rajski teaches a plurality of scan chain inputs (44) that
are fed into a compactor (48) to produce a plurality of
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