Appeal No. 2002-1697 Page 4
Application No. 09/023,039
OPINION
Rather than reiterate the positions of the examiner or the appellants in toto, we
address the main point of contention therebetween. The examiner asserts, "Dolphin
discloses . . . forwarding a computer-readable data storage device to an individual
(column 4: lines 23-38), the device storing compliance information and computer-
executable instructions for obtaining consent for computer-aided delivery of additional
compliance information (column 4: lines 23-38)[.]" (Examiner's Answer at 3.) Noting
that "[n]either Dolphin nor Tanaka deals with the issue of computer-aided delivery of
compliance information or obtaining user consent to the same," (Appeal Br. at 12), the
appellants argue, "[t]he[ir] combination fails to teach any of the claim limitations of
obtaining consent, communicating the individual's consent or the delivery, and storing
of compliance information. . . ." (Id. at 12-13.)
In addressing the point of contention, the Board conducts a two-step analysis.
First, we construe claims at issue to determine their scope. Second, we determine
whether the construed claims would have been obvious.
1. CLAIM CONSTRUCTION
"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.
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