Ex Parte Dellecave et alDownload PDFPatent Trial and Appeal BoardFeb 23, 201610747259 (P.T.A.B. Feb. 23, 2016) Copy Citation 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; 2 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.) 3 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 4 Copy with citationCopy as parenthetical citation