Appeal No. 2003-0655
Application No. 09/406,001
(emphasis added). The combination of Pepe and Miller fails to show this feature. This
combination of references would have suggested to one of ordinary skill in the art the
obviousness of “transferring of addresses,” but without more these references would not
have suggested the obviousness of the invention of claim 18. For this reason, we will not
sustain the Examiner’s rejection of claim 18. Therefore, the rejection of claims 18-20 under
35 U.S.C. § 103 is reversed.
Other Issues
We note that the Examiner has used a single page (the Miller reference) and supporting
Microsoft publications in support thereof to show functions found in software product
“Outlook 97.” The Examiner should consider whether Pepe in combination with the software
product “Outlook 97” itself (in its entirety) is appropriate art for a rejection under
35 U.S.C. § 103.
Also, we note that the Examiner has not searched Class 707 - Databases. A cursory
search shows numerous patents, such as, Robertson 6,269,369 or Weiser et al. 5,786,819 or
Wright, Jr. et al. 6,324,542 or Siitonen et al. 6,049,796 or Nagatomo et al. 6,334,126 which seem
to be pertinent to claim 1. The Examiner should consider whether these patents or others from
this art area are appropriate for a rejection under 35 U.S.C. § 102 or § 103 when used in
combination with the references already cited in this application.
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