Appeal No. 2004-0856 Page 4
Application No. 09/676,704
domain corresponding to the fastest one of a plurality of clocks, as presently claimed."
(Reply Br. at 2-3.)
In addressing the point of contention, the Board conducts a two-step analysis.
First, we construe claims at issue to determine their scope. Second, we determine
whether the construed claims would have been obvious.
1. CLAIM CONSTRUCTION
"Analysis 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). In answering the question, "every limitation positively recited in a claim must
be given effect in order to determine what subject matter that claim defines." In re
Wilder, 429 F.2d 447, 450, 166 USPQ 545, 548 (CCPA 1970). "All words in a claim
must be considered in judging the patentability of that claim against the prior art." In re
Wilson, 1424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970).
Here, claim 1 recites in pertinent part the following limitations: "(i) detect a fastest
one of a plurality of clocks and (ii) operate said storage element in a single clock domain
of [sic] corresponding to said fastest one of said plurality of clocks." Claims 16
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