Appeal No. 2003-0655
Application No. 09/406,001
will be imported”), which are then saved (line 7, “click ‘Save’”) on an electronic
device in the form of a second computer (see the SUMMARY and MORE
INFORMATION of Microsoft document Q169709).
9. Microsoft document Q169709 shows that the plurality of addresses in the file
attachment of Miller was extracted from an address database at a first computer
(SUMMARY and Identify the PAB File Your Mail Profile Uses).
10. Miller at line 4 shows attaching the file containing the extracted plurality of addresses
to an e-mail message (“there will be a message”).
Appellant’s specific argument that Pepe fails to teach, “transferring addresses” is
unpersuasive. We find that Pepe indicates the need for an e-mail system to support a mobile
office and the hardware system to support the e-mail. Pepe is silent as to the details of how the
e-mail would function and is silent as to how the system user would add or store his client’s
e-mail addresses at the mobile office. We find that one of ordinary skill in the art would be
motivated to look to the prior art for a solution to implementing these details. We find that
Miller shows these details. The combination of Pepe and Miller, with the supporting Microsoft
documents, would have suggested to one of ordinary skill in the art the obviousness of the
general “transferring of addresses” and the details of how that transfer occurs as shown in the
combination.
However, claim 18 recites more than this. In addition, claim 18 requires “requesting an
electronic address of an electronic device, when the address transfer option is selected”
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