Appeal No. 2002-1623
Application 09/619,933
that such is in the form of advertising. The claims require
the advertising be in the email message as message content.
“Creation or use of self-removing messages in systems or methods
that are not specifically directed to advertising would not
infringe these claims.” Principal Brief, page 6. Advertising
in an email to the extent set forth in the claims on appeal
essentially has been defined by appellant at specification,
page 3, at lines 15 and 16, such that “email advertisements
(including without limitation coupons, contact information,
descriptions of goods and/or services, comparisons, and
promotional materials)” are not encompassed by the simple
birthday greeting taught by the noted appendix to Hansen.
For similar reasons, we must reverse the separate
rejection of other dependent claims under 35 U.S.C. § 103 on the
basis of Hansen alone. The examiner’s reliance upon the Tseung
patent in the rejection of claims 6 through 8 and 33 through 36
under 35 U.S.C. § 103 is highly disfavored since it has not been
included in the statement of the rejection but merely is evidence
to support the examiner’s general assertion that broadcasting
messages was well-known in the art. This amounts to an attempt
to bootstrap the examiner’s formal rejection by indirectly
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