Ex Parte MASSINGILL et al - Page 5




                 Appeal No. 2003-0506                                                                                  Page 5                     
                 Application No. 09/264,766                                                                                                       


                                                           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.                                               
                 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: "broadcasting from                                    
                 the base station to the user terminal the associated terminal identifier along with an                                           
                 indication of a pending message on a first forward-only radiotelephone channel. . . ."                                           
                 Giving the representative claim its broadest, reasonable construction, the limitations                                           
                 require broadcasting an indication of a pending message.                                                                         


                                                     2. 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                                         








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