Appeal No. 2003-0655
Application No. 09/406,001
Finally, Appellant argues, Miller fails to teach storing the plurality of addresses in the
address database of the personal communication device (brief, page 11, lines 3-14). The
Examiner points out that the teaching of Miller shows that the portable device’s original address
file could be fully replaced by the new address file sent from the computer. The Examiner then
argues that this “replacement” reads on the current invention (answer, page 4, last paragraph).
We find the Examiner’s reading of the Miller reference to be correct. However, we do not agree
that “replacement” meets the language of claim 1. Claim 1 specifically requires storing “in the
address database.” Therefore, this argument by Appellant is persuasive and we will not sustain
the Examiner’s rejection under 35 U.S.C. § 103.
III. Whether the Rejection of Claims 2, 4, and 5 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 2, 4, and 5. Accordingly, we reverse.
As noted above with respect to independent claim 1, 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).
The Examiner’s rebuttal was persuasive on this point with respect to claim 1. However,
such is not the case for claim 2. The language of claim 2, is limited to a particular personal
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