Appeal No. 1996-1838 Page 14
Application No. 08/119,655
and claims dependent thereon are patentably distinct from
claim 24 of U.S. Patent No. 5,321,680 in the absence of any
evidence establishing that the claimed header portion
including address information was known in the art. While the
examiner has stated that the claims under appeal are obvious
variants of claim 24 of U.S. Patent No. 5,321,680, the
examiner has not produced any evidence that the claimed header
portion including address information was so much as known in
the art, much less that it would have been obvious to add such
a header portion including address information to the
inventor's previously claimed subject matter.8
In summary, the examiner has failed to establish that the
claims under appeal are not patentably distinct from claim 24
of U.S. Patent No. 5,321,680. Likewise, the examiner has
failed to establish that the claims under appeal are obvious
8While the examiner did not require restriction between
the claims under appeal and claim 24 of U.S. Patent No.
5,321,680, as far as we are able to determine there would be
no reason why it would not have been proper for the examiner
to have made a restriction requirement under the criteria of
distinctness set forth in MPEP § 806.05(c).
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