Ex Parte Grassian et al - Page 4

                Appeal 2007-0833                                                                               
                Application 10/280,254                                                                         
                mode to transfer files between a host device and memory of the handheld                        
                device, and (2) upon detecting a second external condition, retrieving a                       
                second set of operational instructions to playback multimedia data stored in                   
                the memory when the handheld device is not connected to the host, as                           
                recited in representative claim 20.  (Br. 8.)  In response, the Examiner                       
                contends that Kikinis teaches the cited limitations, and therefore anticipates                 
                representative claim 20.  (Answer 4 and 9.)                                                    
                     Additionally, Appellants contend that Kikinis taken in combination                       
                with either Ha and/or Aguilar does not render claims 1 through 4, 6 through                    
                13, 15 through 19, 22, 24, 27 and 29 unpatentable.  Particularly, Appellants                   
                contend that, among other things, neither Kikinis nor Ha nor Aguilar teaches                   
                the file transfer mode and playback mode, as claimed.  (Br. 9 and 10.)  The                    
                Examiner, in contrast, contends that both Ha and Aguilar complement                            
                Kikinis’ teachings to yield the invention as recited in claims 2 through 6, 8                  
                through 10 and 12 through 18.  (Answer 5, 8 and 11.)  Therefore, the                           
                Examiner concludes that it would have been obvious to one of ordinary skill                    
                in the art to combine the teachings of the cited references to render the cited                
                claims unpatentable.  (Id.)                                                                    
                We affirm.                                                                                     

                                                        ISSUES                                                 
                The pivotal issues in the appeal before us are as follows:                                     
                (1) Have Appellants shown that the Examiner failed to establish that the                       
                    disclosure of Kikinis anticipates the claimed invention under 35 U.S.C.                    
                    § 102(b).  Particularly, does Kikinis’ disclosure of a personal directory                  
                    assistant with a microcontroller that loads different programs to operate                  

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