Ex Parte Adelman et al

Patent Trial and Appeal BoardAug 7, 2014

11746505 (P.T.A.B. Aug. 7, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte WARREN ADELMAN and MICHAEL CHADWICK ____________ Appeal 2012-004724 Application 11/746,505 Technology Center 2400 ____________ Before CARL W. WHITEHEAD JR., JOHNNY A. KUMAR and CATHERINE SHIANG, Administrative Patent Judges. SHIANG, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1–3, 5–9, 11–39, 41–78, and 80–83. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE We have reviewed Appellants’ arguments in the Briefs, the Examiner’s rejection, and the Examiner’s response to Appellants’ arguments. We concur with Appellants’ conclusion that the Examiner erred in finding Lu (US 2009/0094379 A1; filed Nov. 7, 2008) teaches “said digital identity comprising a URL comprising a username for said Appeal 2012-004724 Application 11/746,505 2 Registrant concatenated to a domain name previously registered to said Registrant via a domain name registrar,” as recited in independent claim 1 (emphasis added).1 The Examiner does not specify how the recited “username” is mapped to Lu, but appears to map it to Lu’s unique identification. See Ans. 18–19. But as argued by Appellants (Reply Br. 15– 16), the Examiner has not directed our attention to any of Lu’s teachings showing Lu’s unique identification concatenated to a domain name previously registered to said Registrant to form the URL, as required by claim 1. Alternatively, the Examiner appears to cite Lu’s “http://www.aol.com/users/dc/-don” string. See Ans. 19. But that string does not include a username for said Registrant concatenated to a domain name previously registered to said Registrant, as required by claim 1. Contrary to the claim requirement, the “www.aol.com” domain name is not a domain name previously registered to said Registrant. Therefore, we are constrained by the record to find the Examiner erred in rejecting independent claim 1 and for similar reasons, claims 2, 3, 5–9, 11–39, 41–78, and 80–83. DECISION The Examiner’s decision rejecting claims 1–3, 5–9, 11–39, 41–78, and 80-83 is reversed. REVERSED 1 Appellants raise additional arguments. Because the identified issue is dispositive of the appeal, we do not reach the additional arguments. Appeal 2012-004724 Application 11/746,505 3 tj