Appeal No. 2002-0867
Application No. 08/738,659
the network and the network expansion board (NEB) 2 within printer 4.
Further, printer 4 analyzes a received print job and prints the received data
accordingly. Col. 8, l. 24 - col. 9, l. 4.
We find that printer 4 receiving, analyzing, and printing a text
document from a PC on the network meets all the requirements of instant
claim 88.
At the oral hearing, counsel for appellant also offered an informal
definition of “electronic mail message,” along the lines that such a message
requires a subject line and is intended as communication between human
beings. However, the technical dictionary definitions of the relevant term
do not require so narrow an interpretation. Moreover, as disclosed and
claimed, the “electronic mail message” is intended for machine processing
-- counsel emphasized that when read in light of the specification, claim 88
requires that a machine, rather than a human being, analyze the electronic
mail message. The requirements of claim 88 are thus contrary to an
informal or functional definition of “electronic mail message” that requires
that the message be intended for, or readable by, human beings.3
Since we find all requirements of claim 88 met within the four
corners of the Kraslavsky reference, we consider Cohn to be merely
cumulative in the section 103 rejection. We also refer to the Kraslavsky
reference alone for the requirements that the electronic mail message is
received through a LAN (claim 108/88) and without using a telephone line
(claim 109/108/88). We thus find the subject matter of all representative
claims to be anticipated by Kraslavsky.
We sustain the rejection of claims 88-139 under 35 U.S.C. § 103. A
finding of anticipation means that the claims are also obvious under 35
U.S.C. § 103; anticipation is the epitome of obviousness. See, e.g.,
Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548, 220 USPQ 193,
198 (Fed. Cir. 1983); In re Fracalossi, 681 F.2d 792, 794, 215 USPQ 569,
3 Although not shown in the prior art before us, counsel was also asked what language in
claim 88 might be thought to distinguish over a computer workstation causing an icon (e.g.,
an envelope icon) to appear on the computer display screen to notify one that an e-mail
(intended for a human being) has been received. Counsel argued that a computer display
screen (e.g., a CRT) would not be considered a “business office device,” referring to the
paragraph bridging pages 14 and 15 of the specification. However: (1) appellant’s list of
“business office machines” is clearly illustrative, rather than exhaustive; and (2) a computer
display screen is not a “general purpose computer.” Moreover, it is far from apparent why
a printer can be considered a “business office device” but a computer display screen
cannot. Business-related text or graphics is often viewed on a display before printing.
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