Appeal 2007-1762
Application 10/218,245
Anticipation
In rejecting claims under 35 U.S.C. § 102, a single prior art reference
that discloses, either expressly or inherently, each limitation of a claim
invalidates that claim by anticipation. Perricone v. Medicis Pharm. Corp.,
432 F.3d 1368, 1375-76, 77 USPQ2d 1321, 1325-26 (Fed. Cir. 2005)
(citation omitted).
Independent claim 2
We consider next the Examiner’s rejection of independent claim 2 as
being anticipated by Togawa.
In rejecting claim 2, the Examiner cites to several locations in Togawa
(Answer 3-4). However, as correctly noted by Appellants (Br. 20), the
Examiner has not provided a citation addressing recited step (d): “if both
said first e-mail address and said second e-mail address are blank, then
keeping said first e-mail address blank and a “confirm status” of said first e-
mail address NULL” (Claim 2). After being notified of this omission in the
Brief (Br. 20), the Examiner again failed to provide any citation or
explanation of how this element was treated (Answer 11-17).
Upon review of the citations proffered by the Examiner, and the
entirety of the Togawa reference, we find nothing in Togawa that fairly
discloses where if both the first and second e-mail addresses are blank, then
keeping the first e-mail address blank and a “confirm status” of the first e-
mail address NULL, as required by the language of claim 2. Therefore, we
will reverse the Examiner’s rejection of independent claim 2 as being
anticipated by Togawa.
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