Appeal No. 2004-2232 Page 4
Application No. 09/608,496
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 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.
Cir. 1987). In answering the question, "[t]he Patent and Trademark Office (PTO) must
consider all claim limitations when determining patentability of an invention over the
prior art." In re Lowry, 32 F.3d 1579, 1582, 32 USPQ2d 1021, 1034 (Fed. Cir. 1994)
(citing In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 403-04 (Fed. Cir. 1983)).
Here, claim 1 recites in pertinent part the following limitations: "invoking a model-
building mechanism in a data mining system based on the generated definition, wherein
the model-building mechanism builds a predictive model that generates an output for
the derived measure." Claims 16 and 31 recite similar limitations. Considering these
limitations, claims 1, 16, and 31 require a model-building mechanism that builds a
predictive model that generates an output for a derived measure.
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