Appeal No. 2002-0867
Application No. 08/738,659
New Ground of Rejection -- 37 CFR § 1.196(b)
We enter the following new ground of rejection against the claims in accordance
with 37 CFR § 1.196(b): Claims 10, 16, 36, 42, 74, 78, 82, and 86 are rejected under 35
U.S.C. § 102(e)(2) as being anticipated by Kraslavsky.
Independent claims 10, 16, 36, and 42 recite transmitting information through
“electronic mail.” The instant specification does not set forth any particular definition for
the term. We are thus faced with the problem of determining the metes and bounds of
the recitation; a problem that we addressed in a decision in an earlier appeal in a
related application. In particular, in that application (S.N. 08/738,461; Appeal No. 1999-
2767), we determined that the term is broad in scope. We reproduce below the
pertinent section from the earlier decision, which applied the claimed “electronic mail
message” to the Kraslavsky reference.
A section 103 analysis begins with a key legal question -- what is the
invention claimed? Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561,
1567, 1 USPQ2d 1593, 1597 (Fed. Cir. 1987). At the oral hearing,
appellant’s counsel confirmed that Kraslavsky discloses a process that
meets all requirements of instant claim 88, with one exception argued by
appellant -- although the reference discloses receiving and analyzing
electronic messages, the messages are not deemed to be electronic “mail”
messages. Determining the metes and bounds of the recitation “electronic
mail message” is thus a material inquiry in proper interpretation of claim 88.
Counsel for appellant conceded that the instant specification does
not provide a definition for the relevant term. However, counsel submitted
that the term is well-known in the art, and that a formal definition may be
found by reference to technical dictionaries.
The McGraw-Hill Dictionary of Scientific and Technical Terms, (5th
ed. 1994), at page 663, defines electronic mail as “[t]he electronic
transmission of letters, messages, and memos through a communications
network.” The New IEEE Standard Dictionary of Electrical and Electronics
-6-
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