Appeal No. 2003-0655
Application No. 09/406,001
1444. “[T]he Board must not only assure that the requisite findings are made, based on evidence
of record, but must also explain the reasoning by which the findings are deemed to support the
agency’s conclusion.” In re Lee, 277 F.3d 1338, 1344, 61 USPQ2d 1430, 1434 (Fed. Cir.
2002).
Independent claim 1 stands rejected under 35 U.S.C. § 103 as being unpatentable over the
combination of Pepe and Miller. Appellant argues, “claim 1 requires a personal communication
device, defined as a cellular telephone, pager, or PDA (See Background of Invention, Page 1,
lines 11-14). There is no suggestion that Outlook 97 works with any of these products” (brief,
pages 10-11).
In response, the Examiner points out that Appellant specifically includes a portable
computer among his list of personal communication devices in the specification at page 5,
lines 1-5. Therefore, Appellant’s argument on this point is unpersuasive. The language of
claim 1 is not limited to any particular “personal communication device” and the device of the
combination of Pepe and Miller meets the claim language.
Appellant further argues, “Miller never discusses transferring addresses between two
devices” (brief, page 11, lines 14-15). The Examiner points out that e-mail inherently requires
two computers (answer, page 5, first full paragraph). We do not choose to base our decision on
this point on inherency. Rather, the Q169709 Microsoft document, used to show the details of
Miller, explicitly states that addresses are transferred between two devices (Q169709 Summary).
Therefore, we find Appellant’s argument unpersuasive.
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