Ex Parte Dellecave et al

Patent Trial and Appeal Board

Feb 23, 2016

10747259 (P.T.A.B. Feb. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
101747,259
100692 7590
AOL Inc./Finnegan
FILING DATE
12/30/2003
02/25/2016
901 New York Ave., NW
Washington, DC 20001
FIRST NAMED INVENTOR
Thomas Louis Dellecave JR.
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
10587.0269-00000 2624
EXAMINER
MUSA, ABDELNABI 0
ART UNIT PAPER NUMBER
2472
NOTIFICATION DATE DELIVERY MODE
02/25/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
regional-desk@finnegan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS LOUIS DELLECA VE, JR. and JOEL PULLIAM
Appeal2014-004543
Application 10/747,259
Technology Center 2400
Before DEBRA K. STEPHENS, SHARON PENICK, and
JOHN R. KENNY, Administrative Patent Judges.
KENNY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) from the final
rejection of claims 43, 44, 46-57, and 59---69, which constitute all claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
INVENTION
Appellants' disclosed invention relates to a notification system.
(Spec. 1, Abstract.) Claim 43, which is illustrative, reads as follows:
Appeal2014-004543
Application 10/747,259
43. A computer-implemented method of providing a
client with notifications, comprising:
performing, by a processor, the operations of:
providing instructions that cause the display of a
notification control to the client;
receiving an indication of a selection of the
notification control by the client;
identifying a plurality of topics based on the
content of a website being viewed by the
client upon selection of the notification
control, wherein identifying the plurality of
topics based on the content of the website
being viewed by the client comprises:
identifying one or more terms
appearing in the website being
viewed by the client;
relating the one or more terms
appearing in the website to an
index of metadata associated
with a user profile; and
identifying the plurality of topics
based on the relation of the one
or more terms appearing in the
website to the index of
metadata;
providing instructions that cause the display of a
notification selection control to the client, the
notification selection control displaying the
plurality of topics and enabling the client to select
at least one of the plurality of topics;
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Appeal2014-004543
Application 10/747,259
receiving an indication of a selection by the client of at
least one of the plurality of topics displayed by the
notification selection control; and
providing notifications to the client related to each topic
selected by the client.
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Nielsen us 6,055,570 Apr. 25, 2000
Ortega (et al.) US 2003/0097376 Al May 22, 2003
REJECTION APPEALED
Claims 43, 44, 46-57, and 59---69 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Ortega and Nielsen. (Final Act. 5-14.)
ISSUES
Appellants argue that Ortega and Nielsen fail to teach or suggest the
following limitations in claim 43: (i) identifying one or more terms
appearing in the website being viewed by the client; (ii) relating the one or
more terms appearing in the website to an index of metadata associated with
a user profile; and (iii) identifying the plurality of topics based on the
relation of the one or more terms appearing in the website to the index of
metadata. (App. Br. 9-13.) Appellants also argue that Ortega and Nielsen
fail to teach or suggest corresponding limitations in claims 56 and 69 and
other limitations recited in claims 48 and 61. (App. Br. 9-15.)
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Appeal2014-004543
Application 10/747,259
ANALYSIS
The Examiner maps the three disputed limitations recited in claim 43
to Nielsen's disclosure. (Final Act. 7-8.) For example, the Examiner maps
the "terms" in the first disputed limitation to the titles of Nielsen's
webpages. (Ans. 4.) From the Final Action and the Answer, however, we
are unable to discern how that mapping satisfies all three disputed
limitations (e.g., how Nielsen relates the titles of webpages to an index of
metadata and then how Nielsen identifies topics from that relation.)
Therefore, we find that the Examiner's correlation of the teachings of
Nielsen to claim 43 falls short of demonstrating that Nielsen teaches all
elements of the claim. Accordingly, we are constrained to not sustain the
Examiner's rejection of claim 43.
We also cannot sustain the Examiner's rejection of claims 44, 46-57,
or 59---69. Claims 56 and 69 have corresponding limitations that present the
same issues on appeal as the disputed limitations recited in claim 43. The
remaining claims each incorporate through dependency the limitations of
one of claims 43, 56, or 69.
In light of our decision regarding the disputed limitations in
independent claims 43, 56, and 69, Appellants' arguments regarding an
additional limitation recited in dependent claims 48 and 61 are moot.
DECISION
The decision of the Examiner to reject claims 43, 44, 46-57, and 59-
69 is reversed.
REVERSED
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