Appeal No. 2005-2439
Application No. 09/754,378
rejections as a mere formality although we have not considered
the technical merits of the rejections.
We now consider the examiner’s rejection of the claims under
the first paragraph of 35 U.S.C. § 112. With respect to claim
82, the examiner objects to the phrase “wherein the at least one
subsequent incentive is provided to the user via an electronic
mail message” because the specification does not disclose
utilizing an electronic mail message to provide coupons to the
user [answer, page 4]. Appellants respond by citing several
exemplary portions of the specification which allegedly support
claim 82 [brief, page 12]. The examiner responds that
appellants’ citations only support electronic downloading of
coupons, but not utilizing e-mail to provide coupons to the user
[answer, page 16]. Appellants respond that an e-mail is an
electronic transmittal so that the specification supports claim
82 [reply brief, pages 2-3].
We agree with appellants that the specification supports the
invention of claim 82. The examiner has drawn a distinction
between electronic downloading, which is supported by the
disclosure, and communication by way of e-mail, which the
examiner argues is not supported by the disclosure. Although
appellants do not identify any portion of the specification which
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