Appeal No. 2004-1621 Page 3
Application No. 08/653,425
Claim 1 stands rejected under 35 U.S.C. § 102(e) as anticipated by U.S. Patent
No. 5,696,537 ("Solhjell").
OPINION
Rather than reiterate the positions of the examiner or the appellants in toto, we
focus on the point of contention therebetween. Finding that "'Solhjell discloses a
computer mouse having a magnetic care [sic, core] ball (64 in Fig. 11),'" (Examiner's
Answer at 3 (quoting Final Rej.)), the examiner concludes, ‘"[a] third contact (the free
rolling 18 as shown in Fig. 5) is replaced with a magnet (66 in fig. 11), therefore, there is
no third contact between the ball and another wheel as claimed.'" (Id.) The appellants
argue, "there is no explicit mention of the removal of the free roller," (Appeal Br. at 4),
and "there is no implicit argument of the removal of the free roller. . . ." (Id. at 4-5.)
In addressing the point of contention, the Board conducts a two-step analysis.
First, we construe the claim at issue to determine its scope. Second, we determine
whether the construed claim is anticipated.
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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