Ex Parte Hua et al - Page 8


                Appeal 2007-1762                                                                             
                Application 10/218,245                                                                       
                                             Dependent claim 8                                               
                      We have reversed the Examiner’s rejection of independent claim 2 as                    
                being anticipated by Togawa.  Therefore, we will also reverse the                            
                Examiner’s rejection of claim 8 as being anticipated by Togawa, as claim 8                   
                depends from claim 2.                                                                        
                                     Independent claims 19, 35 and 40                                        
                      We consider next the Examiner’s rejection of independent claims 19,                    
                35 and 40 as being anticipated by Togawa.                                                    
                      In rejecting independent claims 19, 35 and 40, the Examiner directly                   
                relies upon ¶ 31 of Togawa (Answer 5) and argues that the citations used in                  
                the rejection of claim 2 also address claim 19 (Answer 13).6 Appellants                      
                argue that Togawa fails to disclose: “said user registering at said partner                  
                site” (claim 19), or “said user changing profile fields other than e-mail                    
                address” (claims 19, 35), or “said user changing a field in said profile data                
                other than e-mail address” (claim 40) (Br. 24).                                              
                      We note that the Examiner has not provided any citation specifically                   
                addressing the limitation of “said user registering at said partner site” (claim             
                19).  We agree with Appellants that paragraph 31 of Togawa fails to disclose                 
                a user registering at a partner site or a user changing profile fields other than            
                an e-mail address.  In paragraph 31, we find the only disclosed change is                    
                made to the server name (i.e., domain name) of an e-mail address (i.e., the                  
                portion after the @ symbol in an e-mail address).  Togawa merely discloses                   
                that such server name is “updated due to a provider change, a company                        
                name change, and a staff reassignment (transfer) etc.” (see Togawa, ¶ 31).                   



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