Appeal No. 2000-1377
Application No. 08/628,415
claims specifically directed to an e-mail system.
While we reverse the examiner’s decision because the reasoning purporting to
support the rejection of the claims under 35 U.S.C. § 103 is found to be unconvincing of
obviousness, we remand the application to the examiner for search and consideration of
more appropriate prior art directed to e-mail systems and capabilities. We also remand
the application to the examiner for a consideration of the analogous nature of regular and
e-mail systems and as to whether an obviousness rejection may be based on software-
driven systems being insubstantially different from hardware systems. See Overhead
Door Corp. v. Chamberlain Group Inc., 194 F.3d 1261, 1269, 52 USPQ2d 1321, 1326
(Fed. Cir. 1999). If the rejection made by the examiner in the instant case was meant to
convey such an analogy between the regular mail system of Tilles and the claimed e-mail
system, such a comparison was not apparent.
In making any new ground of rejection or further explaining how Tilles might be
analogized to the claimed e-mail system, the examiner should consider all of the claims
pending in the instant application.
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007