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. 5Page: Previous 1 2 3 4 5 6 7 8 9 Next
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