Appeal No. 2000-2226 Page 4
Application No. 08/827,107
“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). Here, independent claim 1 specifies in pertinent part the following
limitations: "a cursor controller comprising a joystick . . . wherein a top portion of said
joystick is indented to better accommodate manipulation of said joystick with a human
thumb or finger. . . ." Accordingly, the claim requires a joystick having an indented top.
Having determined what subject matter is being claimed, the next inquiry is
whether the subject matter is obvious. “In rejecting claims under 35 U.S.C. Section
103, the examiner bears the initial burden of presenting a prima facie case of
obviousness.” In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.
1993) (citing In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992)). "’A prima facie case of obviousness is established when the teachings from the
prior art itself would appear to have suggested the claimed subject matter to a person
of ordinary skill in the art.’" In re Bell, 991 F.2d 781, 783, 26 USPQ2d 1529, 1531 (Fed.
Cir. 1993) (quoting In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA
1976)).
Here, the examiner does not assert that Nishiyama discloses a joystick at all, let
alone a joystick having an indented top. Instead, he relies on “a [sic] indented (304)
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