Ex Parte Hayes et al - Page 7

                Appeal 2006-3350                                                                              
                Application 10/287,411                                                                        

                basis for combining the disclosures of Sai and Huang.  Accordingly, we                        
                determine that the Examiner has shown all claimed elements were known in                      
                the prior art but has not given any reason why one skilled in the art would                   
                have combined the prior art elements to make Appellants’ claimed                              
                invention.  On the record before us, it follows that the Examiner erred in                    
                rejecting claims 1 and 17 under § 103(a).  Since claims 2-16 and 18-29 are                    
                narrower than claims 1 and 17, it also follows that those claims were not                     
                properly rejected under § 103(a) over Huang and Sai.                                          

                                         CONCLUSION OF LAW                                                    
                      Appellants have shown that the Examiner has not given sufficient                        
                reason why one skilled in the art would have incorporated Sai’s storage of                    
                the recording request into the portable device of Huang so as to result in the                
                claimed elements. On the record before us, claims 1-29 have not been shown                    
                to be unpatentable.                                                                           


                                                 DECISION                                                     
                      The Examiner’s rejection of claims 1-29 is Reversed.                                    











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