Appeal No. 2006-2742
Application No. 10/115,138
in a single prior art reference. See Atlas Powder Co. v. IRECO
Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1946-47 (Fed. Cir.
1999); In re Paulsen, 30 F.3d 1475, 1478-79, 31 USPQ2d 1671, 1673
(Fed. Cir. 1994). Here, we agree with Appellants that this
requirement can be met only if the claims are interpreted in the
way suggested by the Examiner. As discussed above with respect
to the 35 U.S.C. ' 112 rejection of claim 7 and after a review of
the claim language and the specification, we remain unconvinced
by the Examiner=s position that the claims are limited to an
e-mail address and a unique ID that are both included in a file.
As argued by Appellants (brief, page 14; reply brief, page 5),
the unique ID is clearly required to be included in the e-mail
address, while the e-mail address, in turn, is included in the
file generated by the file generating unit.
In view of our analysis above, we find that Talati cannot
prima facie anticipate the claimed subject matter since the
reference fails to teach all the limitations of claims 1 and 5-8.
Accordingly, the 35 U.S.C. ' 102 rejection of claims 1 and 5-8
over Talati cannot be sustained.
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