Ex Parte Schena et al - Page 7



         Appeal No. 2006-1831                                                       
         Application No. 09/755,383                                                 
              shortcoming is not remedied by Noll, even if the latter were          
              properly combinable with Hannaford et al., a point which has          
              not been adequately advanced in the rejection of the claims           
              and which is not conceded by Applicants.                              
              In order for us to decide the question of obviousness,                
         “[t]he first inquiry must be into exactly what the claims                  
         define.” In re Wilder, 429 F.2d 447, 450, 166 USPQ 545, 548 (CCPA          
         1970). “Analysis begins with a key legal question-- what is the            
         invention claimed ?”...Claim interpretation...will normally                
         control the remainder of the decisional process.” Panduit Corp.            
         v. Dennison Mfg., 810 F.2d 1561, 1567-68, 1 USPQ2d 1593, 1597              
         (Fed. Cir. 1987), cert denied, 481 U.S. 1052 (1987).                       
              We note that representative claim 47 reads in part as                 
         follows:                                                                   
                   a touchpad sensor configured to detect a position and            
                   motion of an object in an x-y plane, said touchpad sensor        
                   further configured to detect a degree of force applied to        
                   said touchpad sensor in a z-direction and to output at           
                   least one sensor signal, the sensor signal being based on        
                   the position of the object, the motion of the object and         
                   the detected degree of force.                                    
         We note that at paragraphs 101 through 103, Appellants’                    
         specification states the following:                                        
                   [0101] FIG. 4f is a perspective view of another alternate        
                   embodiment of a sensing system including a planar sensor         
                   162. Sensor 162 includes a planar sensor or "touch pad"          
                   161 having rectangular sensing area and a pointer 162.           
                   Planar sensor 161 is preferably positioned somewhere             
                   beneath linkage 40; it is shown approximately at the             
                   position of opening 76 in FIG. 4f, but can be provided in        
                   other positions as well. Pointer 162 is coupled to               
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