Appeal No. 2003-0655
Application No. 09/406,001
art the obviousness of the invention as set forth in claim 6 for the reasons discussed above with
respect to claims 1 and 2 from which it depends. Accordingly, we reverse.
VI. Whether the Rejection of Claim 10, 11, and 16 Under 35 U.S.C. § 103 is proper?
It is our view, after consideration of the record before us, that the evidence relied upon
and the level of skill in the particular art would not have suggested to one of ordinary skill in the
art the obviousness of the invention as set forth in claims 10, 11, and 16. Accordingly, we
reverse.
Independent claim 10 stands rejected under 35 U.S.C. § 103 as being unpatentable
over the combination of Pepe and Miller. Appellant argues that Pepe does not inherently
comprise a step of selecting or using transfer software as pointed out by the Examiner at page 5
of the Final Rejection (brief, page 12). However, what is before us is not Pepe standing alone,
rather it is the combination of Pepe and Miller. In response, the Examiner points out that the
combination of Pepe and Miller inherently includes software and points to the e-mail of Miller.
One cannot show nonobviousness by attacking references individually where the rejections are
based on combinations of references. See In re Keller, 642 F.2d 413, 426, 208 USPQ 871, 882
(CCPA 1981); In re Merck & Co., 800 F.2d 1091, 1097, 231 USPQ 375, 380 (Fed. Cir. 1986).
The device of the combination of Pepe and Miller meets the software language of claim 10.
Therefore, Appellant’s argument on this point is unpersuasive.
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