Appeal No. 2003-0655
Application No. 09/406,001
OPINION
With full consideration being given to the subject matter on appeal, Examiner’s rejections
and the arguments of Appellant and Examiner, for the reasons stated infra, we reverse the
Examiner’s rejection of claims 1-11 and 13-20 under 35 U.S.C. § 103.
I. Can a reference that has a date after the filing date of the application be used to
show that a claim is obvious?
The Examiner relies on Microsoft Publications Q162203 dated February 22, 2001 and
Q169709 dated November 14, 2000, to show the details of operation of the Miller reference.
These Microsoft references are dated after Appellant’s filing date and are not legally prior art.
Appellant argues, “[t]hus, the reference of these publications provides no legal or logical support
for the examiner’s position” (brief, page 14).
We note that the Examiner is relying on hearsay statements (the two Microsoft
publications) about the operation of the system described in Miller. The statements are out-of-
court written assertions offered by the examiner to prove the truth of the matter asserted, namely,
that Miller’s importing of a personal address book to Outlook 97 worked in a certain way before
the date of the publications.
It is our view that the Examiner was correct in his reliance on the Microsoft publications.
“The general rule is that administrative agencies like the PTO are not bound by the rules of
evidence that govern judicial proceedings.” In re Epstein, 32 F.3d 1559, 1565, 31 USPQ2d
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