Appeal No. 1999-2767
Application No. 08/738,461
After consulting technical dictionaries for the relevant terms, we concluded that
the broadest reasonable interpretation of “electronic mail message” did not preclude
files transferred by electronic communication over the local area network (LAN)
disclosed by one of the two references which the examiner submitted as evidence of
obviousness for the claimed subject matter. As a result, we found that the subject
matter of the representative claims was anticipated by the reference describing the
electronic communication over the LAN. We sustained the examiner’s rejection of the
claims under 35 U.S.C. § 103 because anticipation has been held to be the “epitome”
of obviousness.
Appellant submits that we erred in failing to denominate the affirmance as a new
ground of rejection, as provided for by 37 CFR § 1.196(b), and request that we do so.
Appellant cites In re Kronig, 539 F.2d 1300, 1302, 190 USPQ 425, 426 (CCPA 1976),
for the proposition that a rejection must be considered “new” if the appellant has not
had a fair opportunity to react to the thrust of the rejection.
Because our interpretation of “electronic mail message” as used in the instant
claims was apparently different (i.e., broader) than the examiner’s interpretation of the
term, we grant the relief requested by appellant. We characterize our affirmance of the
rejection as a new ground of rejection under 37 CFR § 1.196(b).
Appellant points to nothing in our opinion that we consider as corresponding to
any allegation of error with respect to the merits of the decision. To the extent
appellant’s request may be construed in any fashion as challenging the merits of the
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