Ex parte NIELSEN - Page 3




               Appeal No. 2000-1377                                                                                               
               Application No. 08/628,415                                                                                         


                      Claims 1, 9, 10, 18, 19 and 27 stand rejected under 35 U.S.C. § 103 as                                      
               unpatentable over Tilles.                                                                                          
                      Reference is made to the brief and answer for the respective positions of appellant                         
               and the examiner.                                                                                                  
                                                           OPINION                                                                
                      We REVERSE and REMAND.                                                                                      
                      Each of the claims on appeal, albeit very broad in scope, is directed to electronic                         
               mail (e-mail).                                                                                                     
                      The examiner relies on Tilles as the basis for rejecting the instant claims.  However,                      
               Tilles is clearly directed to regular, paper mail and, in no way, does Tilles discuss e-mail.                      
               Thus, it is difficult to see how Tilles is applicable to claims which recite the updating of a                     
               recipient’s e-mail address, or updating information associated with a user’s program                               
               wherein a recipient’s e-mail address in the user’s program is updated.                                             
                      The examiner relies, in large part, on column 5, line 50 through column 6, line 10 of                       
               Tilles.  That portion of the patent discloses the searching of an address of a piece of                            
               incoming mail for a name that corresponds to a name stored in a database and, upon                                 
               recognizing the addressee’s name, the system identifies a present mail stop of the                                 






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