Appeal No. 2005-2338
Application No. 09/754,001
find no disclosure in the sections cited by the examiner of a determination of
whether a request is a request for roaming capability which contains an email
address. Accordingly, we will not sustain the examiner’s rejection of claims 2,
12 and 19 under 35 U.S.C. § 102.
Claims 3 and 4 are dependent upon claim 2 and claim 13 is dependent
upon claim 12. We reverse the examiner’s rejection of these claims 35 U.S.C.
§ 102 for the reasons discussed supra with respect to claims 2 and 12.
Next we consider the rejection of claim 20 under 35 U.S.C. § 102.
Appellants argue on page 10 of the brief:
Claims 3, 13 and 20 are also further patentable over Teper,
because Teper failed to teach the required limitation of “said facilitating
comprises sending an email, including the GUID associated with the
subscriber, to the email address.” The limitation does not merely recites
[sic recite] transmission of email. As discussed earlier, it requires the
employment of an email having the GUID, sent to an email address
associated with a “roaming capability” to make possible roaming for the
user (“said facilitating comprises”).
Col. 9, lines 55-57 merely teach sending billing statements to a
user via email. In the cases of col. 10, lines 51-57 and col. 3, lines 14-16,
neither contain any teaching that has anything to do with email, and
certainly not the recited required use of the email, having a GUID to
effectuate roaming access.
In response the examiner asserts, on page 7 of the answer, that Teper
discloses that the GUID is sent in a message to the user, citing column 9, lines
50-60 and column 10, lines 25 to 54.
We agree with appellants. Claim 20 is dependent upon claim 18 and
includes limitations for an apparatus that stores machine executable instructions,
which operate to receive a request from a client to access a subscribed online
service of an online service provider, and to send an e-mail, including the GUID
12
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