Ex Parte Putman et al - Page 2




             Appeal No. 2005-2622                                                           Page 2               
             Application No. 09/923,089                                                                          
             operator."  (Examiner's Answer at 8.)  The appellants argue that Clark's "ability to                
             perform different functions responsive to inputs from different sources (e.g., user panel           
             keypad 16 or operator panel keypad 27)," (Req. Reh'g at 3), "does not require (nor                  
             teach or suggest) Applicants' recited features which include outputting different user              
             interfaces through different display devices on the banking machine, responsive to                  
             separate determinations made by a processor in the machine as to the type or                        
             capabilities of the particular input device associated with the corresponding display               
             device."  (Id.)                                                                                     


                   In addressing the point of contention, the Board conducts a two-step analysis.                
             First, we construe the independent claims at issue to determine their scope.  Second,               
             we determine whether the construed claims are anticipated or 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, "[c]laims must be read in view of the                       
             specification, of which they are a part."  Markman v. Westview Instruments, Inc., 52                
             F.3d 967, 979, 34 USPQ2d 1321,  1329 (Fed. Cir. 1995).                                              









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