Ex Parte FRIEND - Page 2




         Appeal No. 2002-0145                                                       
         Application No. 09/090,990                                                 


              Representative independent claim 1 is reproduced as follows:          
                   1.  A process for sending Hypertext Markup Language              
              (HTML) formatted electronic mail across a computer network,           
              comprising the steps of:                                              
                   creating an HTML document;                                       
                   checking the designated recipients for HTML capability;          
              and                                                                   
                   sending said document to said designated recipients in           
              accordance with said recipient’s HTML capability.                     
              The examiner relies on the following references:                      
         Zachery             5,283,887                Feb.  1, 1994                 
         Tang et al. (Tang)     5,630,060             May  13, 1997                 
         Pallmann            6,094,684                Jul. 25, 2000                 
                                                 (filed Apr.  2, 1997)              
              Claims 1-30 stand rejected under 35 U.S.C. § 112, second              
         paragraph.                                                                 
              Claims 1-30 stand further rejected under 35 U.S.C. § 103 as           
         unpatentable over either Zachery over “what was well known in the          
         art” or “Tang, in view of Pallmann.”  (Answer, pages 4 and 6).             
              Reference is made to the briefs (paper nos. 13 and 15) and            
         answer (paper no. 14) for the respective positions of appellant            
         and the examiner.                                                          
                                  OPINION                                           
              With regard to the rejection under 35 U.S.C. § 112, second            
         paragraph, the inquiry is whether the claims do, in fact, set out          

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