Ex Parte HIATT, JR. - Page 12




               Appeal No. 2003-0655                                                                                               
               Application No. 09/406,001                                                                                         

               rejections are based on combinations of references.  See Keller, 642 F.2d at 426, 208 USPQ at                      
               882; Merck & Co., 800 F.2d at 1097, 231 USPQ at 380.                                                               
                      Now, the question before us is, what would the combination of Pepe and Miller (with the                     
               Microsoft documents to show the operational details of Miller) have taught to one having                           
               ordinary skill in the art?  To answer this question, we find the following facts:                                  
                   1.     Pepe shows at column 1, lines 17-26, “a mobile office.”                                                 
                   2.     Pepe shows at figure 1, “a personal communications internetworking (“PCI”)” for                         
                          communication between devices on the network.                                                           
                   3.     Pepe shows at figure 1, item 22, that the PCI includes “an e-mail terminal”                             
                          comprising a computer.                                                                                  
                   4.     Pepe shows at figure 1, item 30, that the PCI includes “a personal digital assistant                    
                          (PDA)” comprising an electronic device in the form of a wireless notebook computer                      
                          terminal.                                                                                               
                   5.     Pepe at column 3, lines 20-25, and column 17, lines 64-67, shows the sending and                        
                          receiving of e-mail over the PCI network.                                                               
                   6.     Pepe states at column 5, line 37, that “routing addresses” are used for the wireless                    
                          terminals on the network.                                                                               
                   7.     Pepe at column 3, lines 20-25, and column 17, lines 64-67, shows the sending and                        
                          receiving of email over the PCI network.                                                                
                   8.     Miller at lines 4-14 shows receiving an e-mail (“In your Inbox”) including a file                       
                          attachment (“Save Attachments”) containing a plurality of addresses  (“address book                     
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