Appeal 2007-1762
Application 10/218,245
3. Claims 44 and 45 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Bilbrey. 3
4. Claims 25-33 and 47 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the teachings of Bilbrey.
5. Claims 20, 23, 36, and 41 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the teachings of Togawa.4
Rather than repeat the arguments of Appellants or the Examiner, we
make reference to the Briefs, the Final Action, and the Answer for the
respective details thereof.
Enablement under 35 U.S.C. § 112, first paragraph
We consider first the Examiner’s rejection of claims 2, 20-23, 29-33,
36-38, and 41-43 as being based on a disclosure which is not enabling. The
Examiner argues that limitation (d) of claim 2 “appears to be an impossible
situation because synchronizing two e-mail addresses that do not exist
simply would not occur in the system that Applicant describes as their
depends upon claim 42, we also find that dependent claims 42 and 43 have
been improperly rejected by the Examiner. Therefore, we pro forma reverse
the Examiner’s rejection of claims 21, 22, 37, 38, 42, and 43 as being
anticipated by Togawa and we reverse the Examiner’s rejection of claim 23
as being unpatentable over Togawa.
3 The Examiner indicates that claim 14 is also rejected under this rationale
(Answer 5). However, claim 14 has been withdrawn from consideration in
this appeal by Appellants (Br. 4).
4 See Footnote 2 which explains why dependent claim 23 has been
improperly rejected by the Examiner.
5
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