Ex Parte CRONCH et al - Page 5




                 Appeal No. 2002-1710                                                                                  Page 5                     
                 Application No. 09/023,441                                                                                                       


                 of the examiner or the appellants in toto, we address the following points of contention                                         
                 therebetween:                                                                                                                    
                         -        storing an operating system                                                                                     
                         -        combining Sasaki and Kashiwazaki.                                                                               


                                                    1. Storing an Operating System                                                                
                         The examiner finds, "Sasaki teaches . . .  storing a single operating system in the                                      
                 printer (e.g.[,] col. 2, lines 62-65). . . ."  (Examiner's Answer, § 11, ¶ 1.2)  The appellants                                  
                 argue, "Kashiwazaki, et al. does not disclose storing a single operating system in a                                             
                 printer.  Rather, Kashiwazaki, et al. disclose storing at least two operating systems in a                                       
                 printer."  (Appeal Br. at 8)                                                                                                     


                         In addressing the point of contention, the Board conducts a two-step analysis.                                           
                 First, we construe the representative claim to determine its scope.  Second, we                                                  
                 determine whether the construed claim would have been obvious.                                                                   


                                                           a. 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.                                               


                         2We need the examiner to number the pages of his answers.                                                                







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