Appeal No. 2004-0171 Page 4
Application No. 09/239,295
OPINION
Rather than reiterate the positions of the examiner or the appellants in toto, we
address a dispositive point of contention therebetween. The examiner asserts, "Brown
teaches transform [sic] an original document to another document by modifying the
original document, such as substituting or inserting portions (Brown, column 3, lines 26-
30, 'a system and method for modifying documents, and specially for replacing an
original document portion with a substitute document portion or inserting a substitute
document portion')." (Examiner's Answer at 18.) The appellants argue, "[a]s Brown
merely discloses a method and system for swapping an original document portion with a
substitute document portion, Brown does not re-author a document as that term would
be understood by one of ordinary skill in the art, as defined in the specification" (Reply
Br. at 4.)
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 are anticipated or 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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