Ex Parte Jablow

Board of Patent Appeals and Interferences

Jul 18, 2012

09835376 (B.P.A.I. Jul. 18, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
09/835,376 04/17/2001 David A. Jablow 129250-000902/US 5786
32498 7590 07/19/2012
CAPITOL PATENT & TRADEMARK LAW FIRM, PLLC
P.O. BOX 1995
VIENNA, VA 22183
EXAMINER
LAZARO, DAVID R
ART UNIT PAPER NUMBER
2455
MAIL DATE DELIVERY MODE
07/19/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte DAVID A. JABLOW
________________

Appeal 2010-003700
Application 09/835,376
Technology Center 2400
________________

Before ROBERT E. NAPPI, ERIC S. FRAHM, and LARRY J. HUME,
Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-003700
Application 09/835,376

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This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1-5, 8-24, 27-39, and 42-51. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
STATEMENT OF THE CASE 1
The Invention
In accordance with the present invention there are
provided methods and systems for providing personalized
notification concerning an “event”.
One such event is a lottery. Others are: a sports or
entertainment event, an educational event or an exam, for
example.
In each case, a network controller is adapted to receive
personal information from a user and administrative
information from an administrator responsible for the event.
The personal information comprises many elements, one
element being the one or more methods of notification preferred
by a user.
At an appropriate point in time the controller is adapted
to compare the administrative information (e.g., winning lottery
number) to the personal information (e.g., lottery numbers
selected by the user) or vice-versa. If a match occurs, the
controller is adapted to send a personalized notification to the
user according to one of the preferred methods of notification
(e.g., by email).
Spec. ¶¶ [0005] – [0009], “Summary of the Invention”.

1 Throughout this Decision, we refer to the Appeal Brief (App. Br.) filed
June 15, 2009; the Reply Brief (Reply Br.) filed Nov. 1, 2009; the originally-
filed Specification (Spec.); the Final Office Action (FOA) mailed Sep. 21,
2006; and the Examiner’s Answer (Ans.) mailed Sep. 4, 2009.
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Exemplary Claim
Exemplary independent claim 20 under appeal reads as follows
(emphasis added to contested limitations):
20. A method for providing personalized notification
comprising:
comparing personal information and administrative information
related to an event a user is participating in; and
sending a personalized notification, using a user's preferred
method of notification, to the user concerning the user's
participation in the event.
Prior Art
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Ruckdashel US 6,144,942 Nov. 7, 2000
Aronin US 6,454,650 B1 Sep. 24, 2002 (filed May 9, 2000)
Rejection on Appeal
The Examiner has rejected claims 1-5, 8-24, 27-39, and 42-51 under
35 U.S.C § 103(a) as being unpatentable over Aronin in view of Ruckdashel.
(Ans. 3-5; FOA 2-5; and App. Br. 8).
GROUPING OF CLAIMS
Based upon Appellant’s arguments, we select representative method
claim 20 to decide this appeal for the claims on appeal, i.e., claims 1-5, 8-24,
27-39, and 42-51. (See App. Br. 8-9).
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We have only considered those timely-submitted arguments that
Appellant actually raised in the Briefs. Arguments Appellant could have
made but chose not to make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii)(2009).
PRINCIPLES OF LAW
When it is necessary to select elements of various teachings in order
to form the claimed invention, we ascertain whether there is any suggestion
or motivation in the prior art to make the selection made by applicant.
Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1143 (Fed. Cir. 1985).
In KSR, the Court stated “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 127 S. Ct.
1727, 1739, 82 USPQ2d 1385, 1395 (U.S. 2007).
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. . . . [A] court
must ask whether the improvement is more than the predictable
use of prior art elements according to their established
functions.

Id. at 1740, 82 USPQ2d at 1396
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ISSUES
35 U.S.C § 103(a): Claims 1-5, 8-24, 27-39, and 42-51
Appellant contends that the Examiner has not shown that Ruckdashel
“disclose[s] or suggest[s] the sending of a notification using a user’s
preferred method of notification concerning an event that user is
participating in . . . [but instead] pertains to events that a user may
participate in.” (App. Br. 8; Reply Br. 1, emphasis in original).
Appellant goes on to assert that “the present claims are not directed to
an event a user is interested in or may participate in . . . [but] are directed to
events a user is ‘participating in’ and related notifications.” (App. Br. 8;
Reply Br. 4).
Appellant also contends that “[f]rom the Examiner's Answer it now
appears that the Examiner is relying on Aronin for every feature of the
independent claims except for sending a notification using a user's preferred
method of notification, a feature the Examiner indicates is disclosed in
Ruckdashel.” (Reply Br. 1).
Further, Appellant contends that:
Aronin appears to relate to events a user is participating in,
Ruckdashel does not . . . [and, i]n fact, Ruckdashel is explicitly
directed to a scheduler . . . [and w]hether or not a user actually
participates in a scheduled event is of no concern to Ruckdashel . . .
[because n]one of Ruckdashel’s notifications relate to an event a user
has actually participated in.
Reply Br. 1.
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Finally, Appellant contends for the first time in the Reply Brief that:
Combining Aronin and Ruckdashel would require
Ruckdashel to change its principle of operation from a
scheduler to a “results-oriented” system. This would require
Ruckdashel to change all of its screen displays (such as that
shown in Figure 6) and the scheduling software that controls
the generation of such displays. Such extraordinary changes are
not within the skill of one of ordinary skill in the art. In fact, a
brief search of issued patents in the field of software
development illustrates that the knowledge required to control
screen displays and generate scheduling software can be far
above that known by those of ordinary skill in the art.
Reply Br. 1.
Issue 1: Did the Examiner err in finding that Aronin in combination
with Ruckdashel teaches or suggests all the claimed limitations of claim 20,
specifically the limitation that recites “sending a personalized notification,
using a user's preferred method of notification, to the user concerning the
user's participation in the event?”
Issue 2: Was Appellant’s argument alleging that the Examiner erred
in combining Ruckdashel with the teachings of Aronin submitted in a timely
manner?
ANALYSIS
Issue 1: We have reviewed the Examiner’s rejections in light of
Appellant’s arguments that the Examiner has erred. We disagree with
Appellant’s conclusions with respect to claims 1-5, 8-24, 27-39, and 42-51,
and we adopt as our own (1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken and (2) the reasons
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and rebuttals set forth by the Examiner in the Examiner’s Answer (Ans. 3-7)
in response to Appellant’s Arguments (App. Br. 8-9).
We concur with the conclusions reached by the Examiner, particularly
that Aronin teaches a system and method for providing personalized
notification that compares personal and administrative information related to
an event a user is participating in. (See Ans. 3, citing Aronin at col. 9, ll. 1-
8). We further agree with the Examiner (Ans. 6-7) that the teaching of
Ruckdashel is relied upon merely to teach providing notification by the
user’s preferred method of notification, e.g., by wireless pager, email,
wireless telephone, etc. (See Ans. 4, citing Ruckdashel at Abstract, Figs. 5
and 7, and col. 5, ll. 21-36). Thus, we find that the combination of the cited
art discussed above teaches the limitation at issue in claim 20.
In light of the teachings of Aronin and Ruckdashel as cited by the
Examiner and as discussed above, we find that “sending a personalized
notification, using a user's preferred method of notification, to the user
concerning the user's participation in the event” represents nothing more
than using a known technique to perform its known function to produce
predictable results. Thus, Appellant’s arguments that such a technique
would not have been obvious are unpersuasive.
Issue 2: We have reviewed the Examiner’s stated basis for
motivation to modify the teachings of Aronin with the teachings of
Ruckdashel. We disagree with Appellant’s conclusions with respect to the
combinability of the references as suggested by the Examiner, and we adopt
as our own (1) the findings and reasons set forth by the Examiner in the
action from which this appeal is taken and (2) the reasons and rebuttals set
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forth by the Examiner in the Examiner’s Answer (Ans. 6) in response to
Appellant’s Arguments (App. Br. 8-9; Reply Br. 1).
The Examiner has set forth a statement of motivation to modify the
teachings of Aronin with Ruckdashel (Ans. 4 and 6-7) which we find meets
the requirements of KSR cited above, i.e., the Examiner has provided an
“articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.”
It was not until the Reply Brief that Appellant first broached the new
argument that modifying Aronin by the teachings of Ruckdashel would
require Ruckdashel to change its principle of operation such that the
combination of the references is improper. Appellant further belatedly
argues that the changes required to be made to Ruckdashel would be
“extraordinary changes [that] are not within the skill of one of ordinary skill
in the art . . . [and] that the knowledge required to control screen displays
and generate scheduling software can be far above that known by those of
ordinary skill in the art.” (Reply Br. 1).
These arguments are deemed waived. Appellant has not explained
why, nor is it apparent that, these arguments were necessitated by a new
point in the Answer or any other circumstance constituting “good cause” for
its belated presentation. See Ex parte Borden, 93 USPQ2d 1473, 1473-74
(BPAI 2010) (“informative”2) (absent a showing of good cause, the Board is
not required to address argument in Reply Brief that could have been
presented in the principal Brief).

2 The “informative” status of this opinion is noted at the following Board
website: http://www.uspto.gov/ip/boards/bpai/decisions/inform/index.jsp.
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Application 09/835,376

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Even assuming, arguendo, that the above-cited new argument should
be considered, the argument only amounts to attorney argument that lacks
any supporting factual basis in the record before us and which is therefore
unpersuasive.
Accordingly, we sustain the Examiner’s rejection of claims 1-5, 8-24,
27-39, and 42-51.
DECISION
The decision of the Examiner to reject claims 1-5, 8-24, 27-39, and
42-51 under 35 U.S.C. § 103(a) as being obvious over Aronin and
Ruckdashel is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

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