Appeal No. 2006-0981 Page 4
Application No. 10/036,618
In determining obviousness, the Board conducts a two-step analysis. First, we
construe the representative claim at issue to determine its scope. Second, we
determine whether the construed claim 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, "the PTO gives claims their 'broadest reasonable
interpretation.'" In re Bigio, 381 F.3d 1320, 1324, 72 USPQ2d 1209, 1211 (Fed. Cir.
2004) (quoting 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: "in a medical
interventional procedure, intra-operatively generating a three-dimensional dataset of
body tissue of a subject exhibiting a fault to be corrected by an implant . . . and in said
medical interventional procedure, Intra-operatively preparing said implant adapted for
introduction into said subject from three-dimensional dataset." Giving the representative
claim its broadest, reasonable construction, the limitations require generating
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