Ex parte YAMAMOTO et al. - Page 5




          Appeal No. 1999-2708                                       Page 5           
          Application No. 08/896,533                                                  


          clearance between” shutters and an insertion opening, the                   
          skirt being “exclusive to the hinged shutter side,”                         
          (Examiner’s Answer at 4, 6), the examiner asserts, “Iizuka (US              
          4,607,301) teaches a shutter mechanism comprising a shutter                 
          leaf (D1) swingably mounted in an opening.  At least one                    
          resilient skirt (5) is provided along the remaining sides of                
          the shutter (D1) opposite to a hinged side.”  (Id.)  He                     
          further asserts, “[i]t would have been obvious to one of                    
          ordinary skill in the art at the time the invention was made                
          to provide the resilient skirt hinged shutter, as taught by                 
          Iizuka,” (id.), to the shutter leaves of Harlan and Aoki.  The              
          appellants argue, "any teaching of IIZUKA that is imported                  
          into and combined with AOKI would not result in a combination               
          of features rendering the invention . . . unpatentable."                    
          (Appeal Br. at 12.)                                                         


               In deciding obviousness, “[a]nalysis begins with a key                 
          legal question -- what is the invention claimed?”  Panduit                  
          Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567, 1 USPQ2d                   
          1593, 1597 (Fed. Cir. 1987)(emphasis in original).  “Claim                  








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