Appeal No. 1998-0714
Application No. 08/092,622
However, the first step of an obviousness analysis under
35 U.S.C. § 103 is to determine the scope of the claims. In
re Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d 1523, 1529
(Fed. Cir. 1998). Claim 1 recites a computer including a
central processing unit, a main memory, a system bus, and
first and second interfacing means, all of which are included
in Kobayashi's PPM. Claim 1 further requires that the above
elements be enclosed in a housing "having a size and shape so
that the housing can be physically mounted in a disk drive
slot of a computer system." Claim 1 does not require that the
enclosure actually be mounted in a computer system, but rather
merely requires that the enclosure be sized to fit in a disk
drive slot.
Appellants argue (Brief, page 9) that the portion of
Kobayashi relied upon by the examiner does not suggest that
the housing be mounted in a disk drive slot. Appellants point
out (Brief, pages 9-10) that Kobayashi discloses (column 3,
lines 40-42 and 60-65) that the PPM is to be as small as
possible while still providing the minimum components needed
for personal processing capability, and that the size will be
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