Appeal No. 2006-1413 Page 6
Application No. 09/952,073
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: "placing an order
for an electronic device. . . ." We agree with the examiner's aforementioned finding that
the limitations do not require purchasing or ordering the electronic device itself. To the
contrary, giving the representative claim its broadest, reasonable construction, the
limitations can merely require ordering a service for the electronic device.
2. Obviousness Determination
"Having determined what subject matter is being claimed, the next inquiry is
whether the subject matter would have been obvious." Ex Parte Massingill, No. 2003-
0506, 2004 WL 1646421, at *3 (Bd.Pat.App & Int. 2004). The question of obviousness
is "based on underlying factual determinations including . . . what th[e] prior art teaches
explicitly and inherently. . . ." In re Zurko, 258 F.3d 1379, 1383, 59 USPQ2d 1693, 1696
(Fed. Cir. 2001) (citing Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459,
467 (1966); In re Dembiczak, 175 F.3d 994, 998, 50 USPQ2d 1614, 1616 (Fed. Cir.
1999); In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995)). "'A
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