Ex parte NIELSEN - Page 5




             Appeal No. 2000-2245                                                                                     
             Application No. 08/661,686                                                                               


             what action, e.g., delete, is to be taken because Gross neither discloses nor suggests                   


             that the trusted recipient is “one of a plurality of trusted recipients,” as claimed.                    
                    Additionally, since there is no more than a single possible trusted recipient                     
             disclosed by Gross, and that single trusted recipient must have the e-mail presented in                  
             order to decide whether it is to be deleted, there can be no “automatically preventing                   
             presentation of said e-mail message to one or more of said plurality of trusted recipients,”             
             as required by each of the independent claims 1, 12, 23 and 31.  This language cannot                    
             apply to the single possible trusted recipient in Gross because the single recipient must                
             read the message before deciding to delete it.  Thus, this single trusted recipient would not            
             have been prevented from receiving the e-mail message and, since there are no others                     
             authorized to read the e-mail and decide what action to take in Gross, because there is no               
             teaching of a “plurality of trusted recipients” in Gross, then a “presentation prevention                
             mechanism configured to prevent presentation of an e-mail message to one or more of a                    
             plurality of trusted recipients,” as set forth in claim 23, cannot be met by Gross.                      
                    Connections is no help in providing for the deficiencies of Gross since Connections               
             is merely an article describing the necessity of establishing policies by companies for                  
             providing guidelines regarding e-mail content in order to avoid legal liability.  There is               
             nothing therein that would provide a suggestion to the artisan to                                        


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