Jonathan J. Lee et al.

Patent Trials and Appeals Board

May 29, 2020

13891983 - (D) (P.T.A.B. May. 29, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/891,983 05/10/2013 Jonathan J. Lee 18962-0725001/
P17633US1
1046
26183 7590 05/29/2020
FISH & RICHARDSON P.C. (APPLE)
PO BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
PENA-SANTANA, TANIA M
ART UNIT PAPER NUMBER
2457
NOTIFICATION DATE DELIVERY MODE
05/29/2020 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JONATHAN J. LEE, BRIAN A. WEINSTEIN, SAMUEL M.
WEINIG, and STEVEN JON FALKENBURG
Appeal 2018-005836
Application 13/891,983
Technology Center 2400

Before JEAN R. HOMERE, IRVIN E. BRANCH, and
DAVID J. CUTITTA II, Administrative Patent Judges.

BRANCH, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1, 3, 4, 8, 10, 11, 15, 17, 18, 22, 24, and
26–32, which are all of the pending claims. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We refer to the Specification, filed May 10, 2013 (“Spec.”); Final Office
Action, mailed July 5, 2017 (“Final Act.”); Appeal Brief, filed January 3,
2018 (“Appeal Br.”); Examiner’s Answer, mailed March 19, 2018 (“Ans.”);
and Reply Brief, filed May 17, 2018 (“Reply Br.”).

2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Apple Inc. Appeal
Br. 1.
Appeal 2018-005836
Application 13/891,983
2
CLAIMED SUBJECT MATTER
The claims are directed to providing push notifications to user
devices. Spec. ¶ 1. Claim 1, reproduced below with disputed limitations
emphasized in italics, is illustrative of the claimed subject matter:
1. A method comprising:
receiving, at a web browser application executing on a
computing device, a certificate sent by a push notification
provider associated with a website, wherein the website is
displayed using the web browser and the push notification
provider is coupled to the computing device through a network,
and wherein the certificate indicates that the push notification
provider is trusted by a push notification server to send push
notifications to user devices;
determining, by the web browser, that the certificate is
valid;
in response to determining that the certificate sent by the
push notification provider is valid, presenting a prompt on a user
interface of the web browser requesting user approval to receive
push notifications from the push notification provider;
receiving an approval to allow the push notification
provider to send push notifications to the computing device; and
in response to receiving the approval, transmitting, from
the web browser to the push notification provider, a device token
that identifies the computing device to a push notification
service.

Appeal 2018-005836
Application 13/891,983
3
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Fox
Adams
Hilaiel
Bell
Hu
US 6,421,781 B1
US 2009/0113543 A1
US 2009/0222925 A1
US 2010/0227632 A1
US 2013/0246504 A1
July 16, 2002
Apr. 30, 2009
Sept. 3, 2009
Sept. 9, 2010
Sept. 19, 2013
REJECTIONS
Claims 1, 3, 4, 8, 10, 11, 15, 17, 18, 24, 26, 29, and 30–32 stand
rejected under 35 U.S.C. § 103 as unpatentable over the combination of Hu,
Bell, and Hilaiel. Final Act. 4–9
Claims 22 and 28 stand rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Hu, Hilaiel, and Fox. Final Act. 9–10.
Claim 27 stands rejected under 35 U.S.C. § 103 as unpatentable over
the combination of Hu, Hilaiel, and Adams. Final Act. 10–11.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments. We have considered in this Decision only those arguments
Appellant actually raised in the Briefs. Any other arguments Appellant
could have made but chose not to make in the Briefs are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2017).
To the extent consistent with our analysis herein, we adopt as our own
the findings and reasons set forth by the Examiner in (1) the action from
which this appeal is taken (Final Act. 4–11) and (2) the Examiner’s Answer
in response to Appellant’s Appeal Brief (Ans. 2–7) and concur with the
Appeal 2018-005836
Application 13/891,983
4
conclusions reached by the Examiner. We highlight the following for
emphasis.
35 U.S.C. § 103
With respect to the obviousness rejection of independent claim 1,
Appellant argues error because: 1) Hu, Bell, and Hilaiel do not teach or
suggest the limitation italicized above; and 2) “one with ordinary skill in the
art [would not] be motivated to combine these references[,] at least because
Hu solved the authorizing problem through registration procedures, Bell is
not focused on websites, and Hilaiel is only concerned with signing browser
plug-in components.” Appeal Br. 10; see id. at 7–10.
Claim 1 recites:
receiving, at a web browser application executing on a
computing device, a certificate sent by a push notification
provider associated with a website, wherein the website is
displayed using the web browser and the push notification
provider is coupled to the computing device through a network,
and wherein the certificate indicates that the push notification
provider is trusted by a push notification server to send push
notifications to user devices.
Claim 1, id. at 13. In support of the first argument above, Appellant
contends Hu does not disclose this limitation because “[t]here is no
disclosure by Hu of a web browser verifying a trust certificate received from
a push notification provider.” Id. at 9. Appellant contends Bell also does
not disclose this feature because “Bell[] discloses a system for routing
notification messages through gateways,” noting that “Bell[] discloses the
use of Secure Sockets Layer (SSL) certificates for connecting with the
gateway.” Id. at 10. Appellant contends Hilaiel also does not disclose this
limitation because “Hilaiel generally discloses techniques for execution of
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restricted operations by computer program code in web browsers,” and
“discloses using certificates to sign software ‘plug-in’ components that are
added to a web browser application to add functionality.” Id. at 10.
The Examiner rejects the argued limitation based on the combined
teachings of Hu, Bell, and Hilaiel and not on their individual teachings as
argued by Appellant. See Final Act. 4–5; Appeal Br. 7–10. Each reference
cited by the Examiner must be read, not in isolation, but for what it fairly
teaches in combination with the prior art as a whole. See In re Merck & Co.,
Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). One cannot show
nonobviousness by attacking references individually when the rejection is
based on a combination of references. In re Keller, 642 F.2d 413, 425
(CCPA 1981). We do not find a persuasive argument or evidence of error in
the Examiner’s specific findings of fact regarding each reference.
The Examiner relies upon Hu for most of the elements of claim 1.
Final Act. 4–5 (citing ¶¶ 29–30, 44–45, 47, 70, 86–87, 89–92). The
Examiner finds that “Hu is silent to in response to determining that the
certificate sent by the push notification provider is valid,” but cites Belle (¶¶
15–16), concluding “[i]t would have been obvious to one of ordinary skill in
the art at the time of the invention to modify Hu's disclosure to include
Belle's limitations in order to determine that authentication certificate (valid
certificate) is sent by push service provider.” Id. at 5. The Examiner further
finds that “Hu in view of Belle is silent to determining, by the web browser,
that the certificate is valid,” but cites Hilaiel (¶ 41), reasoning that “[i]t
would have been obvious to one of ordinary skill in the art at the time of the
invention to modify Hu in view of Belle's disclosure to include Hilaiel's
limitations in order to verify that the certificate is trusted. Id.
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Application 13/891,983
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Because Appellant’s arguments fails to address the rejection based on
the proposed combination, we find Appellant’s first argument to be
unpersuasive of error.
Appellant’s additional argument based on a lack of motivation to
combine these references also in unpersuasive of error. Appeal Br. 10 (“one
with ordinary skill in the art [would not] be motivated to combine these
references[,] at least because Hu solved the authorizing problem through
registration procedures, Bell[] is not focused on websites and Hilaiel is only
concerned with signing browser plug-in components”). We find this
argument unpersuasive because Appellant’s contentions amount to bald
assertions characterizing the references without persuasively rebutting the
Examiner’s reasoning. See Final Act. 4–5. Moreover, Appellant does not
provide sufficient persuasive argument or evidence that these contentions,
even if true, would undermine the Examiner’s stated reasoning. Id. at 5.
Accordingly, for the foregoing reasons, we are unpersuaded of error in
the Examiner’s rejection of claim 1.
We note Appellant’s contention in the Reply Brief that the Examiner’s
alleged use of a different feature in Hu as the basis for the rejection, as
compared to earlier prosecution, is sufficient reason for reversal. Reply
Br. 3. We disagree. Reversal is not the appropriate recourse for a new
ground of rejection in an Examiner’s Answer. See 37 C.F.R. § 41.40(a).
Appellant could have petitioned for the new finding to require designation of
a new ground of rejection, but instead filed a Reply Brief, thereby waiving
the right. Id.
Appellant argues independent claims 8 and 15 on the same basis as
claim 1. Appeal Br. 7–10. Appellant argues the rejections of dependent
claims 3, 4, 10, 11, 17, 18, 22, 24, and 26–32 on the same basis. Id. at 11.
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Application 13/891,983
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Appellant argues the rejections of claims 22, 27 and 28 also on the same
basis and because neither Fox nor Adams cures the deficiencies with respect
to the rejection of claim 1. Id. at 11–12. Accordingly, we sustain the
rejections of all pending claims.
DECISION SUMMARY
We affirm the Examiner’s rejections as follows:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3, 4, 8,
10, 11, 15,
17, 18, 24,
26, 29, 30–
32
103 Hu, Bell, Hilaiel 1, 3, 4, 8, 10,
11, 15, 17, 18,
24, 26, 29, 30–
32

22, 28 103 Hu, Hilaiel, Fox 22, 28
27 103 Hu, Hilaiel, Adams 27
Overall
Outcome
1, 3, 4, 8, 10,
11, 15, 17, 18,
22, 24, 26–32

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED