Appeal No. 2006-1413 Page 5
Application No. 09/952,073
A. PLACING ORDER FOR ELECTRONIC DEVICE
The examiner makes the following findings.
Jaalinoja only teaches that a user purchases token for mobile
communication means (i.e. electronic device) [Jaalinoja, see abstract].
However, claims 1 and 7 directly or indirectly recite purchasing or ordering
services for said electronic device by a user. Claims 1 and 7 do not recite
the Iimitation of purchasing or ordering said electronic device by a user
(emphasis added).
(Examiner's Answer at 7.) The appellants argue, "[P]aragraph 0021 of Jaalihoja only
teaches that 'a user can order tokens 10,' which is different from the claimed step of
placing an order for an electronic device." (Appeal Br. at 4.)
"In addressing the point of contention, 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." Ex Parte Massingill,
No. 2003-0506, 2004 WL 1646421, at *2 (Bd.Pat.App & Int. 2004).
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.
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