Appeal No. 2004-0499
Application No. 09/251,789
7 of the specification does suggest various ways in which
addresses can be collected, i.e., e-mail, list server,
subscription maintenance directories, we find no description of
any “automatic” operation associated with the address collection
or assembling.
In view of the above discussion, it is our opinion that,
under the factual situation presented in the present case, the
statutory written description requirement has not been satisfied
because Appellants were clearly not in possession of the claimed
invention at the time of filing of the application. Therefore,
we sustain the Examiner’s rejection of claims 1-29 under the
first paragraph of 35 U.S.C. § 112.1
Turning to a consideration of the Examiner’s rejection of
claims 1-29 under 35 U.S.C. § 103(a) as being unpatentable over
Korel, we sustain this rejection as well. With respect to
representative independent claim 1, Appellants’ arguments in
response to the Examiner’s 35 U.S.C. § 103(a) rejection assert a
1 Appellants filed a declaration under 37 CFR § 132 in support of their
position as to the adequacy of the disclosure along with the Reply Brief.
This declaration has not been entered into the record by the Examiner as not
being timely filed (Paper No. 19, mailed June 2, 2003) and, accordingly, has
not been considered by us in this appeal.
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007