Appeal 2007-2241
Application 09/768,990
1 time specified in the subscriber profile as a prerequisite to delivering content
2 in accordance with the subscriber’s specified time, the Examiner should
3 consider whether such a step would be inherent to any method, such as the
4 one Tso describes, that seeks to deliver time-significant content based on the
5 time of day specified in a subscriber’s profile. Unless such a comparison
6 were first to be made, a subscriber would never be guaranteed receipt of
7 content at the time specified in his/her profile. “The obviousness analysis
8 cannot be confined by … overemphasis on the importance of published
9 articles and explicit content of issued patents … .” KSR, 127 S.Ct. at 1740,
10 82 USPQ2d at 1396.
11 Upon remand, the Examiner should reconsider whether the claimed
12 subject matter would have been obvious over Alberts and Tso. If after
13 reconsideration the Examiner determines that the addition of Batachia is
14 necessary to reject the claims for obviousness, the Examiner should make
15 that clear on the record. At that point, the sufficiency of the 131 affidavit
16 should be re-evaluated and, if it is still determined to be deficient, a full
17 explanation of the deficiencies should be communicated to Appellant, with
18 Appellant being given an opportunity to respond.
19 This remand to the examiner pursuant to 37 CFR § 41.50(a)(1)
20 (effective September 13, 2004, 69 Fed. Reg. 49960 (August 12, 2004), 1286
21 Off. Gaz. Pat. Office 21 (September 7, 2004)) is made for further
22 consideration of a rejection. Accordingly, 37 CFR § 41.50(a)(2) applies if a
23 supplemental examiner's answer is written in response to this remand by the
24 Board.
8
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: September 9, 2013