Appeal No. 2000-2245
Application No. 08/661,686
Thus, the examiner cannot point to anything in Gross or Connections to suggest the
claimed “junk mail report message” and relies solely on official notice that lists and
messages are generally compiled. Even if lists and messages were known to have
been “generally compiled,” the examiner has not shown how or why it would have been
obvious to provide, in the Gross system, a notification mechanism configured to receive a
“junk mail report message” containing information about an e-mail message classified as
junk e-mail by a trusted group recipient or a presentation prevention mechanism
configured to prevent presentation of an e-mail message to one or more of a plurality of
trusted recipients, wherein the presentation prevention mechanism includes a junk e-mail
reporting mechanism configured to send a junk e-mail report message to a trusted group
server.
The examiner’s conclusory statements that generally compiled lists and messages
of operating transactions for monitoring purposes “may be reasonably ascribed to the mail
messages relating of [sic] such activity” does not adequately
address the issue of motivation to combine the Gross and Connections references. This
factual question of motivation is material to patentability, and could not be resolved on
subjective belief and unknown authority. The examiner must not only make requisite
findings, based on the evidence of record, but must also explain the reasoning by which
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