Appeal 2007-0666
Application 09/738,992
a previous user and fax the hardcopy back to the computer
which is saved with the most recent user's marks.
(Id. 21.) The Appellants argue, "Simonoff discloses a system where
annotations are shared that are made to an electronic white board." (Br. 12.)
They also argue that "the examples of Cass cited in the Examiner's Answer
on page 21 . . . are directed to a method for using arbitrary documents as
computer readable forms. . . ." (Reply Br. 2.) Therefore, the issue is
whether teachings from Carleton, Tran, Simonoff, Cass, and Levine would
have suggested transmitting, to each of a plurality of workstations, data
representing handwritten annotations that were made to a paper document
via at least two of the workstations, and displaying at least one of the
handwritten annotations at each of the workstations.
"Both anticipation under § 102 and obviousness under § 103 are two-
step inquiries. The first step in both analyses is a proper construction of the
claims. . . . The second step in the analyses requires a comparison of the
properly construed claim to the prior art." Medichem, S.A. v. Rolabo, S.L.,
353 F.3d 928, 933, 69 USPQ2d 1283, 1286 (Fed.Cir. 2003) (internal
citations omitted).
III. CLAIM CONSTRUCTION
"Our analysis begins with construing the claim limitations at
issue." Ex Parte Filatov, No. 2006-1160, 2007 WL 1317144, at *2 (B.P.A.I.
2007). "The Patent and Trademark Office (PTO) must consider all claim
limitations when determining patentability of an invention over the prior
art." In re Lowry, 32 F.3d 1579, 1582, 32 USPQ2d 1031, 1034 (Fed. Cir.
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