Appeal No. 2000-1377
Application No. 08/628,415
The examiner also recognizes that Tilles does not disclose the recipient’s address
being an e-mail address but concludes, without support, that “it would have
been obvious...that the mail processing system disclosed in Tilles could also be
implemented for processing email addresses” [answer-page 4, emphasis ours]. Merely
because the claimed subject matter could be implemented is not the test for obviousness
under 35 U.S.C. § 103. There must be some reason established by the prior art or the
knowledge of the artisan that would have led the skilled artisan to implement Tilles paper
mail system for processing e-mail addresses. The only reason we can ascertain for doing
this, from the evidence of record, comes from appellant’s own disclosure.
Taking broad claim 1 as exemplary, the claim requires an “updating a recipient’s
email address.” Tilles teaches nothing related to e-mail addresses. The claim calls for
receiving “at an address-exchange server” an update message from a recipient. Tilles
discloses nothing about an address-exchange server. Therefore, Tilles cannot suggest
storing information from the update message “at the address-exchange server,” as also
required by the claim. Tilles’ database of names does not correspond to, and cannot
suggest, the claimed “address-exchange server.” In fact, the instant claimed invention
does not operate on a recipient’s name, but rather on the recipient’s e-mail address,
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