Ex Parte Gonzalez - Page 4

            Appeal 2007-0964                                                                                
            Application 09/984,929                                                                          

            delivered”(emphasis original).  Thus, Appellant argues that Terada does not teach               
            or suggest the claim limitation of “distributing said electronic document after                 
            creating the distribution list.” (Br. 6-7, Reply Br. 2-3)                                       
                   The Examiner contends that the rejection is proper and finds that Terada                 
            teaches the creation of a distribution list.  Creation of this list is triggered by             
            delivering or storing an e-mail created fresh.  (Answer 9).                                     
                   Thus, the second issue for us to consider is whether Terada teaches or                   
            suggests distributing said electronic document after creating the distribution list.            
            We note that Appellant’s arguments on pages 6 through 7 of the Brief discuss                    
            claims 1 through 15, 17 through 29, and 31 through 35 as a group.  Thus, in                     
            accordance with 37 C.F.R.  § 41.37(c)(1)(vii) we claims 1 through 15, 17 through                
            29, and 31 through 35 together as one group and select claim 1 as representative of             
            the group to decide this issue.                                                                 
                   Third issue:                                                                             
                   Appellant contends that the rejection of claim 36 under 35 U.S.C. § 102(e)               
            or under 35 U.S.C. § 103 is in error.  Appellant contends that in Terada the                    
            electronic document is delivered prior to saving the distribution list.  As such                
            Appellant reasons that Terada does not teach or suggest the claim 36 limitation of              
            “saving said distribution list at the time of distributing said electronic document.”           
                   The Examiner maintains that the rejection is proper as Terada teaches in                 
            paragraphs 53 and 54 that the list is created and stored at the time of delivery.               
                   Thus, the third issue for us to consider is whether Terada teaches or suggests           
            “saving said distribution list at the time of distributing said electronic document.”           





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