Appeal No. 2002-1710 Page 6
Application No. 09/023,441
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). "Moreover, limitations are not to be read into the claims from the
specification." In re Van Geuns, 988 F.2d 1181, 1184, 26 USPQ2d 1057, 1059 (Fed.
Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir.
1989)).
Here, claim 1 recites in pertinent part the following limitations: "[a] method of
printing on a print medium with a printer which is in communication with a host
computer, said method comprising the steps of . . . storing a single operating system in
the printer. . . ." Giving the representative claim its broadest, reasonable construction,
the limitations require storing an operating system in a printer.
b. Obviousness Determination
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
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