Ex Parte Hart

Patent Trial and Appeal Board

Jan 29, 2015

11485600 (P.T.A.B. Jan. 29, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MATT E. HART
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Appeal 2012-010717
Application 11/485,6001
Technology Center 2400
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Before JEREMY J. CURCURI, JENNIFER L. McKEOWN, and,
IRVIN E. BRANCH, Administrative Patent Judges.

McKEOWN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–26. App. Br. 3. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm-in-part.

STATEMENT OF THE CASE
Appellant’s invention generally relates to a system that improves
security during web-browsing. More specifically, the system receives a
URL from the user and queries a DNS server for an IP address for the URL.

1 The real party in interest is Intuit, Inc.
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The system determines a public-key associated with the URL and uses the
public-key to encrypt a string that is sent to a remote system. The system
can receive a response from the remote system and determine whether the
DNS server has been compromised using the response from the remote
system. If it is determined that the DNS server has been compromised, the
system alerts the user. Abstract.
Claim 1 is illustrative and is reproduced below, with key disputed
limitations emphasized:
1. A non-transitory computer-readable storage medium
storing instructions that when executed by a computer cause the
computer to perform a method for improving security during
web-browsing, the method comprising:
receiving a Universal Resource Locator (URL) from a
user;
determining an Internet Protocol (IP) address for the
URL by querying a Domain Name Server (DNS) server;
determining a public key associated with the URL;
encrypting a string using the public key to obtain an
encrypted string;
sending the encrypted string to a remote system which is
associated with the IP address;
receiving a response from the remote system;
determining that the DNS server has been compromised
when the response from the remote system does not match an
expected response; and
responsive to determining that the DNS server has been
compromised, alerting the user, thereby improving security
during web-browsing.

THE REJECTIONS
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Lerat US 2002/0010627 Al Jan. 24, 2002
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Robotham US 6,704,024 B2 Mar. 9, 2004
Dent US 6,769,060 B1 July 27, 2004
Kelley US 2007/0083670 Al Apr. 12, 2007
(filed Oct. 11, 2005)
Claims 8–13 and 20–24 stand rejected under 35 U.S.C. § 101 because
the claimed invention is directed to non-statutory subject matter. Ans. 4–5.
Claims 1, 2, 4–9, and 11–26 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Dent, Kelley, and Lerat. Ans. 5–9.
Claims 3 and 10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dent, Kelley, Lerat, and Robotham. Ans. 9.

THE 35 U.S.C. § 101 REJECTION
Appellant here presents no arguments with respect to the rejection of
claims 8–13 and 20–24 under 35 U.S.C. § 101. Moreover, Appellant
suggests that they are not contesting that rejection at this point. See Reply
Br. 3 (“For the purposes of this appeal, and without admission as to the
appropriateness of the other grounds raised by the Examiner, Appellants
will address the Examiner’s reliance on Dent and Kelley in view of Lerat in
rejecting independent claims 1, 8, 14, 20, and 25-26 in the instant
application under 35 U.S.C. § 103.”)(emphasis added). As such, we
summarily affirm the Examiner’s rejection of claims 8–13 and 20–24 under
35 U.S.C. § 101.

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THE OBVIOUSNESS REJECTION BASED ON DENT, KELLEY AND LERAT
The Examiner here finds that Dent, Kelley, and Lerat together teach
the limitations of claim 1. Ans. 5–7. Appellant, on the other hand, contends
that the cited combination fails to teach determining that the DNS server has
been compromised when the response from the remote system does not
match an expected response.

ISSUE
Does the cited combination of Dent, Kelley, and Lerat teach
determining that the DNS server has been compromised when the response
from the remote system does not match an expected response, as recited in
claim 1?

ANALYSIS
Based on the record before us, we are persuaded that the Examiner
erred in rejecting the claims as obvious.
The Examiner here relies on Dent as teaching the disputed limitation
— determining whether the DNS server has been comprised when the
response from the remote system does not match an expected response. See
Final Act. 4–5; Ans. 6. The Examiner notes that Dent does not teach a DNS
server and relies on Kelley for that limitation. Ans. 6. The Examiner
additionally cites Lerat as support for the combination, namely for teaching
protecting from DNS spoofing. Ans. 6–7 (citing Lerat ¶¶ 162–163).
Appellant contends that Dent fails to teach the disputed limitation
because it is directed to a two-party identity-verification system. App. Br.
10–11. More specifically, “Dent describes a technique for enabling a first
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‘party A’ to verify the identity of a second ‘party B’ (and vice versa).” App.
Br. 11; see also Dent col. 3, ll. 51–52 (“The present invention is a method
for bilateral identity authentication over a communication channel.”). In
contrast, according to Appellant, the disputed limitation requires three
entities or parties, the computer (doing the determining), a DNS server, and
a remote system. And the claimed limitation further requires that the
computer determine that the DNS server is compromised based on a
response from the remote system. App. Br. 11.
We understand that the Examiner finds that Dent teaches the disputed
limitation because Dent determines that a remote party cannot be verified.
According to the Examiner, this in turn suggests that the DNS server has
been compromised. For example, the Examiner finds that “[a]n attempt to
connect to the server would be made signing with the public key, and a false
server would not contain the private key necessary to return a proper
response. This would indicate that there is a man in the middle attack and/or
DNS spoofing occurring.” Ans. 7.
We disagree. Instead, we agree with the Appellant that Dent is
directed to bilateral identity verification system, in contrast to the claimed
invention which is directed to authentication of a DNS server through a
remote system. While Dent teaches verifying (or not) a remote party based
on that remote party’s response, Dent does not suggest use of a remote
party’s response to authenticate a DNS server.
Kelley does not cure the deficiency of Dent. As the Examiner states,
Kelley “discloses basic URL -> IP retrieval from a DNS agent that Dent
fails to disclose (receiving a URL... determining an IP ...) and a response that
a DNS server has been compromised (exposed to suspicion, discredit or
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mischief).” Final Act. 2. The mere use of a DNS server to obtain URL
addresses does not in turn teach using a remote system response to
determine whether the DNS server is compromised.
Therefore, we find that the Examiner erred in rejecting claims 1, 2, 4–
9, and 11–26 under 35 U.S.C. § 103(a) as unpatentable over Dent, Kelley,
and Lerat.

THE OBVIOUSNESS REJECTION BASED ON DENT, KELLEY,
LERAT, AND ROBOTHAM
As discussed above, we are persuaded that the Examiner erred in
rejecting claims 1 and 8, from which claims 3 and 10 depend. The Examiner
does not propose Robotham to cure the deficiency of Dent, Kelley, and
Lerat. As such, we are similarly persuaded that the Examiner erred in
rejecting claims 3 and 10 as unpatentable over Dent, Kelley, Lerat, and
Robotham.

CONCLUSION
The Examiner erred in rejecting claims 1–26 as unpatentable over the
cited prior art combinations.

DECISION
The Examiner’s decision rejecting claims 1–26 under 35 U.S.C. § 103
is reversed, but the decision rejecting claims 8–13 and 20–24 under
35 U.S.C. § 101 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).
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AFFIRMED-IN-PART

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