Appeal No. 2000-2245
Application No. 08/661,686
provide for a plurality of trusted recipients in Gross or for the prevention of the
presentation of e-mail messages to one or more of a plurality of trusted recipients, as
required by instant claims 1, 12 and 23 and, by extension, to dependent claims 2-11, 13-
22 and 24-27.
Accordingly, we will not sustain the rejection of claims 1-3, 5-7, 9-14, 16-18 and 20-
27 under 35 U.S.C. § 103.
Turning now to independent claim 29, this claim does not require the plurality of
trusted recipients or the prevention of presenting an e-mail message to one or more of the
plurality of trusted recipients, as in claims 1, 12 and 23. This claim does require, however,
a “junk mail report message” and appellant argues that this is not taught or suggested by
Gross. Independent claims 31 and 37 contain similar limitations regarding a junk mail
report message. The examiner’s only rationale in this regard is that to the extent the
claims “add limitations of generating lists and messages regarding the results of the
processes, it is officially noticed that computing operations generally
compile lists and messages of operating transactions for auditing and system monitoring
purposes and are therefore obvious additions to the applied art. Further, as previously
argued in the prior action, such documentation may be reasonably ascribed to the mail
messages relating of [sic: to] such activity” [answer-pages 6-7].
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