Appeal No. 2005-2338
Application No. 09/754,001
Rejection of claims 2, 3, 4, 12, 13, 19 and 20 under 35 U.S.C. § 102
We next consider the rejection of claims 2, 12 and 19 as being anticipated
by Teper. Appellants argue on page 9 of the brief:
[C]laims 2, 12 and 19 are further patentable over Teper, because
Teper failed [sic fails] to teach the required “receiving of a request for
roaming capability” as well as “the request comprising an e-mail address”
(hereinafter “request2”).
In paragraph 2 of the rejection, the Examiner continued to assert
that Teper teaches “roaming capability” because the Examiner interprets
the term to mean “access to online services is being made available to
more than one user, due to Applicants’ disclosure in page 11, 3rd
paragraph of the specification…. Instead person [of] ordinarily skill in the
art would clearly understand “roaming” to mean a user being able to
access the one or more service from any client in any location, especially
in view of other complementary usage of the term throughout the
specification.
In response the examiner states, on page 7 of the answer: “Tamer [sic
Teper] discloses accessing the Internet using a Service Provider is deemed to be
accessed anywhere in the world and further describes email capability. See
7:40-65; 8:1-20.”
We disagree with the examiner. Claim 2 includes the limitation
“determining if a request for roaming capability is received, said request for
roaming capability includes an e-mail address.” Claims 12 and 19 contain similar
limitations. Thus, we find that the scope of these claims includes a determination
of whether there is a request for roaming. As appellants assert, we find that
appellants’ specification on page 11 identifies that roaming is the ability for users
to access and utilize one or more services from any client or location. We concur
with the examiner and find that Teper teaches that the Internet can be used and
that the user can access service providers from many locations. However, we
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