Appeal No. 2004-1026 Page 6
Application No. 09/028,480
Cir. 1987). In answering the question, "the Board must give claims their broadest
reasonable construction. . . ." In re Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d 1664,
1668 (Fed. Cir. 2000). "Moreover, limitations are not to be read into the claims from the
specification." In re Van Geuns, 988 F.2d 1181, 1184, 26 USPQ2d 1057, 1059 (Fed.
Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir.
1989)).
Here, claim 19 recites in pertinent part the following limitations: "determining if an
input pen stroke is located in the first or second screen area according to detected
pen-down coordinates on said screen. . . ." Claim 9 recites similar limitations. Giving
claims 9 and 19 their broadest, reasonable construction, the limitations require detecting
where a pen is put down on a display.
2. Obviousness Determination
Having determined what subject matter is being claimed, the next inquiry is
whether the subject matter would have been obvious. The question of obviousness is
"based on underlying factual determinations including . . . what th[e] prior art teaches
explicitly and inherently. . . ." In re Zurko, 258 F.3d 1379, 1383, 59 USPQ2d 1693, 1696
(Fed. Cir. 2001) (citing Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459,
467 (1966); In re Dembiczak, 175 F.3d 994, 998, 50 USPQ 1614, 1616 (Fed. Cir. 1999);
In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995)).
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