Appeal No. 2003-0655
Application No. 09/406,001
IX. Whether the Rejection of Claims 18-20 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 18-20. Accordingly, we reverse.
Unlike claim 1 which requires “a personal communication device containing an address
database” and “storing the plurality of addresses in the address database,” claim 18 is broader.
Claim 18 requires “storing the plurality of addresses in an address list of the electronic device.”
With respect to claim 1, Appellant argues Miller and the Microsoft documents teach, “the said
addresses are stored in a new address database not in said address database” (brief, page 11,
lines 10-12). We find claim 18 does not have a “said address database” nor a “said address list.”
Rather this portion of claim 18 only requires the act of storing in an address list.
Independent claim 18 stands rejected under 35 U.S.C. § 103 as being unpatentable over
the combination of Pepe and Miller. The Examiner states in the final rejection at page 7, “Pepe
discloses a method for transferring information from a computer . . . inherently using a
program.” Appellant argues, “[t]he claim actually requires address transfer software not just
transfer software” and “[t]here is no mention in Pepe et al., of transferring addresses” (brief,
page 13). 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 (answer, page 7, second
paragraph). One cannot show nonobviousness by attacking references individually where the
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