Appeal No. 2000-1377
Application No. 08/628,415
although, in the examiner’s defense, it would appear that operation on a name would be
similar to operation on an e-mail address since many e-mail addresses are merely
recipients’ names together with an identification of a server, or internet service provider.
In response to appellant’s arguments, the examiner argues [answer-page 8] that the
skilled artisan would have been “motivated to use the network email system for processing
email because doing so would enabled [sic] the system to process both regular mail and
email.” The problem with this conclusion is that the examiner points to nothing that would
have suggested a prior art desire to process both regular mail and email. The response
appears to us to be based, at least in part, on impermissible hindsight.
If the examiner’s rejection is predicated on a suspicion that the instant claims are
too broad in the scope of protection they seek, we would agree with the examiner that the
instant claims (e.g., claim 1 basically requires only receipt at a server of a message sent
by an e-mail user, the message comprising merely the user’s old and new e-mail
addresses) appear rather broad. However, the way to narrow the scope of the claims is
through the presentation of more appropriate prior art. Reliance on prior art directed to
an automation system for paper mail, without more, is insufficient for a proper rejection of
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