Appeal 2007-0964
Application 09/984,929
stand rejected under 35 U.S.C. § 102(e) as being anticipated by or in the alterative
under 35 U.S.C. § 103(a) as being unpatentable over Terada. Throughout the
opinion we make reference to the Brief and Reply Brief (filed June 20, 2006 and
November 1, 2006, respectively), and the Answer (mailed September 8, 2006) for
the respective details thereof.
ISSUES
First issue:
Appellant contends that the Examiner’s rejection based upon 35 U.S.C.
§ 101 is in error. Specifically, Appellant states that claims 22 through 29 and 34
are directed to a computer readable medium on which is imbedded a computer
program. Appellant argues that the computer readable medium is statutory subject
matter and does not include signals. (Br. 5, Reply Br. 2)
The Examiner contends that the rejection is proper. The Examiner states
that Appellant’s Specification defines the medium as a storage medium or a data
carrier and accordingly finds that the claim encompasses a data carrier or a signal.
(Answer 8)
Thus, the first issue for us to consider is whether claims 22 through 29 and
34 are directed to a signal and therefore not directed to statutory subject matter
under 35 U.S.C. § 101.
Second issue:
Appellant contends that the Examiner’s rejection of claims 1 through 15, 17
through 29, and 31 through 35under 35 U.S.C. § 102(e) or under 35 U.S.C. § 103
is in error. Appellant contends, on page 6 of the Brief, that in Terada a distribution
list is created “after the E-mail from which the addresses are extracted is
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