Appeal No. 2004-0434
Application No. 09/836,686
An obviousness analysis commences with a review and
consideration of all the pertinent evidence and arguments. "In
reviewing the [E]xaminer's decision on appeal, the Board must
necessarily weigh all of the evidence and argument." Oetiker,
977 F.2d at 1445, 24 USPQ2d at 1444. "[T]he Board must not only
assure that the requisite findings are made, based on evidence of
record, but must also explain the reasoning by which the findings
are deemed to support the agency's conclusion." In re Lee,
277 F.3d 1338, 1344, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002).
With respect to independent claim 10, Appellant argues at
page 11 of the brief, "Berstis does not teach or suggest
'transmitting a preselected transfer count' to a second portable
device, nor that such a count is 'indicative of the number of
times the second portable device may transfer the music file to
one or more devices' as recited in claim 10." Appellant then
points out that instead, "Berstis teaches a system in which a
count is created that indicates the number of times that a device
can transfer a file to one or more target devices." Appellant
then argues, "there is no teaching or suggestion to send a
transfer count from a first portable device to a second portable
device."
To determine whether claim 10 would have been obvious, we
must first determine the scope of the claim. Appellant's
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