Appeal No. 2002-1735 Page 6
Application No. 08/903,878
directed to a printer with an expandable image buffer (see the title for example)."
(Appeal Br. at 8.)
"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). 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).
As mentioned regarding the indefiniteness rejection, independent claims 1, 8-10,
17, 18, and 39-41 specify in pertinent part the following limitations: a printer featuring "a
buffer memory possessing a fixed image-data storage capacity smaller than a quantity
of image data representing one frame of the image. . . ." Giving the independent claims
their broadest, reasonable construction, the limitations require that the image-data
storage capacity of a printer's buffer can neither be expanded nor contracted.
Having determined what subject matter is being claimed, the next inquiry is
whether the subject matter would have been 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
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