Appeal No. 2001-2579 Page 5
Application No. 08/885,996
stored in the hard disk (col. 7, lines 59-64)." (Examiner's Answer at 8.) The appellant
argues, "if Sasaki suggests a single print driver, then it is not understood why
Kageyama is applied to the rejection." (Reply Br. at 6.)
"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, claim 1 specifies in pertinent part the following limitations: "storing a
single print driver in said host. . . ." Accordingly, the limitations require storing a print
driver in a computer hosting a printer.
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, 1386, 59 USPQ2d 1693,
1697(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)).
Here, Sasaki discloses a "printing system consist[ing] of a printing device in the
form of a laser printer LP capable of performing printing job [sic] according to print data,
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