Ex Parte Gonzalez - Page 7

            Appeal 2007-0964                                                                                
            Application 09/984,929                                                                          

            generation of a distribution list is triggered by delivering an e-mail.  However, as            
            discussed supra we find that Terada also teaches that there are other triggering                
            events for generation of the distribution list e.g. storing the distribution list.  Also,       
            as discussed supra, we find that the step of storing the e-mail occurs prior to                 
            distributing the e-mail.  Thus, we find that Terada teaches in one mode of                      
            operation the system will generate a distribution list prior to delivering the e-mail,          
            i.e. delivering the e-mail after the distribution list is created.  We therefore find for       
            the Examiner, as we find ample evidence to support the Examiner’s rejection of                  
            claims 1 through 15, 17 through 29, and 31 through 35, and Appellant has not                    
            convinced us of error in the Examiner’s rejection.                                              
                   Third issue:                                                                             
                   Independent claim 36 recites “saving said distribution list at the time of               
            distributing said electronic document.”  As discussed in our findings of fact,                  
            Terada teaches generating a distribution list from an e-mail.  Terada teaches                   
            several triggering events for the creation of the distribution list.  These triggering          
            events can result in generating and saving of the distribution list before or after the         
            delivery of the e-mail.  However, we do not find that Terada teaches or suggests                
            that any of the triggering events result at the time of distributing the e-mail.  Thus,         
            we find for the Appellant as we do not find that Terada teaches or suggests all of              
            the limitations of independent claim 36.                                                        

                                                 CONCLUSION                                                 
                   We find for the Examiner as we find that Terada teaches the claimed feature              
            of delivering the e-mail after a distribution list is created.  Thus, Appellant’s               
            arguments have not persuaded us of error in the Examiner’s rejection of claims 1                
            through 15, 17 through 29, and 31 through 35 under 35 U.S.C. § 102(e), and we                   

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