Appeal No. 2006-2648 Page 5
Application No. 09/788,387
is interpreted to meet the limitation of inserting image data in a desirable
position within the sequence of image data.
(Examiner's Answer at 3-4.) The appellants argue, "unlike Sato, where insertion is
restricted to specific positions, the present invention enables insertion of the image data
at a desired position of the user, which is manually specified or by programming the
system, to automatically place the image in the desired position." (Reply Br. at 6.)
"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 is anticipated." Ex parte Pittaro, No. 2005-
2057, 2006 WL 1665401, at *2 (Bd.Pat.App & Int. 2006).
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."
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