Appeal No. 1996-3670 Page 10
Application No. 08/217,063
“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). We agree with
the appellant that the claimed software for detecting when a
server obtains updated programs resides on the PC of claim 1.
Having determined what subject matter is being claimed, the
next inquiry is whether the subject matter is anticipated or
obvious. "’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, we are not persuaded that teachings from the prior art
itself would have suggested that the claimed software for
detecting when a server obtains updated programs resides on the
PC of claim 1. To the contrary, we agree with the appellant that
“[i]n Kirouac, it appears that the ‘comparison software’ resides
on the central computer.” (Appeal Br. at 6.) Specifically,
“[a]s patches P are made to either the mandatory programs MP1 or
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