Appeal No. 2002-2177 Page 5
Application No. 08/777,424
at 8.) He adds, "[b]oth of these additional features would have had the benefit of vastly
improving the quality of the photo album of Taniguchi, and significantly enhanced
aesthetic value of Taniguchi's album." (Id.) The appellants argue, "[t]he combination of
the Taniguchi, et al. patent, the Examiner's general reference to known user interfaces
and the Adobe Photoshop™ reference would thus not teach or suggest the invention of
claim 1, i.e., would not lead a skilled artisan to a device in which an automatic layout of
photographic images occurs and the images of the layout can then be automatically
corrected based on a user intention." (Appeal Br. at 13.)
In addressing the point of contention, the Board conducts a two-step analysis.
First, we construe the representative claims at issue to determine their 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.
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).
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