Ex Parte Kelley et alDownload PDFPatent Trial and Appeal BoardFeb 19, 201311163225 (P.T.A.B. Feb. 19, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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. 11/163,225 10/11/2005 Edward E. Kelley FIS920050189US1 4224 46136 7590 02/20/2013 WHITHAM, CURTIS,CHRISTOFFERSON & COOK, P.C. (IBM) 11491 SUNSET HILLS ROAD SUITE 340 RESTON, VA 20190 EXAMINER POGMORE, TRAVIS D ART UNIT PAPER NUMBER 2436 MAIL DATE DELIVERY MODE 02/20/2013 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 PATENT TRIAL AND APPEAL BOARD ____________ Ex parte EDWARD E. KELLEY, WAYNE M. DELIA, and TIJS I. WILBRINK 1 ____________ Appeal 2010-010542 Application 11/163,225 Technology Center 2400 ____________ Before JAMESON LEE, JUSTIN T. ARBES, and JAMES B. ARPIN, Administrative Patent Judges. ARPIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-6, 8, and 13-21. Claims 7 and 9-12 are cancelled. Br. 5. 2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 International Business Machines Corp. is the real party in interest. Appeal 2010-010542 Application 11/163,225 2 INVENTION Appellants’ invention relates to methods and computer systems for preventing Internet users from being directed to incorrect websites by domain name system (DNS) servers giving false Internet protocol (IP) addresses. See generally Spec., ¶ [0001]. Claims 1 and 2 are illustrative and are reproduced below with disputed limitations emphasized: 1. A method for authenticating internet protocol (IP) addresses received from a domain name system (DNS) server, comprising the steps of: a) storing in an IP address database located on an Internet user’s computer the IP addresses and corresponding domain names of a plurality of websites; b) after step (a), receiving from the DNS server a newly received IP address corresponding to a domain name of a desired website; c) comparing the newly-received IP address with the IP address for the desired website stored in the IP address database; d) scanning an incoming email message for universal resource locators (URLs); and e) if a URL is detected, then pinging the URL and performing steps (b) and (c). 2. The method of claim 1 wherein step (a) is performed when Internet browsing software is installed on the Internet user’s computer. The Examiner relies on the following as evidence of unpatentability: Greenfield Malik Bantz US 6,748,528 B1 US 2004/0267886 A1 US 2005/0108569 A1 June 8, 2004 Dec. 30, 2004 May 19, 2005 2 Throughout this opinion, we refer to (1) the Appeal Brief (Br.) filed January 13, 2010; and (2) the Examiner’s Answer (Ans.) mailed April 26, 2010. Appeal 2010-010542 Application 11/163,225 3 THE REJECTIONS 1. The Examiner rejected claims 1, 3-6, 13, and 15-21 under 35 U.S.C. § 103(a) as unpatentable over Bantz and Malik. Ans. 3-11. 2. The Examiner rejected claims 2, 8, and 14 under 35 U.S.C. § 103(a) as unpatentable over Bantz, Malik, and Greenfield. Id. at 11-13. OBVIOUSNESS REJECTION OVER BANTZ AND MALIK Regarding representative claim 1, the Examiner finds that Bantz teaches all of the recited limitations, except that Bantz does not teach the steps of scanning incoming emails for URLs and, if a URL is detected, pinging the URL to determine its IP address and repeating recited steps (b) and (c). Ans. 3-4. The Examiner finds, however, that these limitations are taught by Malik. Id. at 4-5. Appellants argue that Malik fails to teach or suggest the limitations missing from Bantz and that, because Malik does not teach or suggest “pinging,” the Examiner is relying upon impermissible hindsight based on Appellants’ disclosure to reconstruct the claimed invention. Br. 18-25. We are not persuaded by Appellants’ arguments. ISSUES 1. Under § 103, has the Examiner incorrectly rejected claim 1 by finding that Bantz and Malik teach “d) scanning an incoming email message for universal resource locators (URLs); and e) if a URL is detected, then pinging the URL and performing steps (b) and (c)”? Appeal 2010-010542 Application 11/163,225 4 2. Is the Examiner’s reason to combine the teachings of these references supported by articulated reasoning with some rational underpinning to justify the Examiner’s obviousness conclusion? ANALYSIS 1. Bantz. Based on the record before us, we see no error in the Examiner’s rejection of representative claim 1. Bantz teaches a system to defend against a masquerade attack. Bantz, ¶ [0002]. Bantz depicts a system in which a user workstation 1 accesses the Internet 5 via a browser 2 and a proxy 3. Id. at Fig. 1. Browser 2 supplies a domain name or URL 3 for the desired website to proxy 3, and proxy 3 accesses a DNS server 10 to obtain the IP address corresponding to the URL. Id. at ¶¶ [0022]-[0026]. After the IP address is returned by DNS server 10 to proxy 3, proxy 3 sends the IP address to a validation server 11 for validation. Id. Validation server 11 may validate the IP address in one of three methods. Br. 19; see Bantz, ¶ [0026]. First, validation server 11 may confirm that the IP address previously has been found valid. Second, validation server 11 may recognize the IP address as that of a known imposter. Third, validation server 11 may determine that there are significant differences in behavior or appearance between data taken from valid website 13 and stored in validation server 11 and data taken from imposter website 12. Appellants’ claim 1 recites that “an IP address database [is] located on an Internet user’s computer.” Bantz describes a cached version of the contents of validation server 11 on user workstation 1, which according to 3 When analyzing Appellants’ claimed invention, we equate domain names with URLs. Spec., ¶ [0002] (equating domain names and URLs). Appeal 2010-010542 Application 11/163,225 5 the Examiner teaches the IP address database of claim 1. Ans. 4 (citing Bantz, ¶¶ [0038], [0055]). Appellants argue that this separation between validation server 11 and user workstation 1 creates certain disadvantages in Bantz’s system. Br. 21-22. 4 As the Examiner finds, however, the domain names can be stored locally, rather than separately in a remote Internet server. Ans. 4. Bantz also contemplates the incorporation of validation server 11 in a “private server” (Bantz, ¶ [0053]), and recognizes from the first and second validation methods described above that a newly received IP address may be compared to known valid or invalid IP addresses (id. at ¶ [0026]). Claim 1 also recites that “the IP addresses and corresponding domain names of [the] plurality of websites” are stored in the IP address database and that this database is used to compare “the newly-received IP address with the IP address for the desired website stored in the IP address database.” Bantz describes that, “[i]f desired, the user might maintain a list of authenticated Internet addresses, so that the authentication process [described in the preferred embodiments] is not repeated for each access request.” Id. at ¶ [0055] (emphasis added); see Ans. 4. Appellants describe that, in an exemplary embodiment, their “IP address database is accumulated over time as new websites are visited.” Spec., ¶ [0007]; see also Br. 20. Thus, we agree with the Examiner that Bantz teaches recited steps (a)-(c) of 4 Appellants also do not demonstrate that overcoming the alleged disadvantages, such as the overloading of web-based resources and the resulting impaired performance of such resources, would be beyond the skill level of those of ordinary skill in the art. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Appeal 2010-010542 Application 11/163,225 6 claim 1. See Ans. 4; Br. 20 (acknowledging shared limitations between Appellants’ claimed invention and Bantz). 2. Malik. Turning to Malik, Appellants note that Malik describes systems and methods for filtering email (e.g., junk or spam) messages originating from undesirable (e.g., non-U.S.) domains. Br. 22. Appellants argue that Malik accomplishes its filtering by extracting the IP address, rather than the URL, from which an email message originates from the message. Id. at 22-23 (citing Malik, ¶ [0021]). Thus, Appellants argue that Malik does not teach or suggest scanning an incoming email message for URLs. Id. at 25. Malik teaches, however, that it may not always be possible to extract the IP address from the message header and that, in some embodiments, “the entire email message is examined to determine the originating IP address.” Malik, ¶ [0021]. Further, Malik teaches that, “if a website (e.g., funstuff.playpen.uk) that is associated with a foreign country is referenced in a hyperlink that is present in an email message, then that information may also be used to discern the non-U.S. origin of the email message.” Id. at ¶ [0022]. Therefore, the Examiner correctly finds that Malik teaches “scanning an incoming email message for [URLs].” See Ans. 4. Malik teaches that, “if the email message originating from . . . a non- U.S. email address also includes a web address in the body of the email message, such as freewebhosting.com, then that web address may be categorized as non-U.S.-originating, regardless of whether or not freewebhosting.com is a non-U.S.-originating website.” Malik, ¶ [0022]; see Ans. 20. Malik further teaches that: Appeal 2010-010542 Application 11/163,225 7 each originating IP address is conveyed to the IP address compare logic 114, which compares the originating IP address to the non-U.S. IP addresses that are stored in the non-U.S. IP address database 105. In some embodiments, IP addresses are correlated to a domain located in various geographic locations by accessing a domain name server (DNS) that stores such information. Once an initial set of IP addresses are correlated to domains and stored in the non-U.S. IP address database 105, the database may be updated from time to time with additional IP addresses that are provided by the user. Id. at ¶ [0023] (emphasis added). Thus, regardless of whether a URL appears in the message header or the message body, its corresponding IP address is extracted or otherwise determined and, in some embodiments, is added to the non-U.S. IP address database in correlation with its domain name. Ans. 16-17. Moreover, Malik teaches that a newly identified non- U.S. IP address should be compared to the address stored in the non-U.S. IP address database. Malik, ¶ [0023]. Appellants argue that Malik does not teach or suggest determining the IP address of the non-U.S. URL by “pinging,” as recited in step (e) of claim 1. Br. 24-25. Although Malik does not expressly mention “pinging,” the Examiner finds that Malik teaches the procedure by stating that foreign origin may be discerned “regardless of whether or not freewebhosting.com is a non-U.S. originating website” (Malik, ¶ [0022]), and “pinging” was a known method of determining the IP address of a website based upon its URL. Ans. 17-18; see Microsoft Computer Dictionary, p. 405 (5 th ed. 2002) (defining the noun “ping” as “A protocol for testing whether a particular computer is connected to the Internet by sending a packet to its IP address and waiting for a response” and the verb “to ping” as “To test which users Appeal 2010-010542 Application 11/163,225 8 on a mailing list are current by sending e-mail to the list asking for a response”). 5 Therefore, while Malik does not expressly mention “pinging,” a person of ordinary skill in the art would recognize that “pinging” is a possible option for ascertaining an IP address in the system disclosed in Malik. Ans. 18-19. As the U.S. Supreme Court has explained, 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. KSR, 550 U.S. at 417. Here, we find that the use of “pinging” is such a predictable variation on the other methods of determining an IP address mentioned in Malik, and the Examiner correctly found that Malik teaches that, “if a URL is detected, then pinging the URL [to ascertain its IP address].” Ans. 17-18. 3. Impermissible Hindsight. Finally, Appellants argue that, given the alleged deficiencies in Malik, the Examiner has engaged in “impermissible hindsight” and relied on Appellants’ disclosure to conclude that Bantz and Malik render claim 1 obvious. Br. 25. In In re McLaughlin, the U.S. Court of Customs and Patent Appeals stated that: Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but [where, as 5 Although Appellants provide a definition of “ping” (Spec., ¶ [0015]), we find that Appellants’ and the Microsoft Computer Dictionary’s definitions are consistent. Appeal 2010-010542 Application 11/163,225 9 here, that judgement] takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper. 443 F.2d 1392, 1395, (CCPA 1971) (emphases added). The Examiner’s findings and obviousness determination take into account only the teachings of the cited references and are not based on impermissible hindsight. See Ans. 4-5. The Examiner’s reason to combine the teachings of these references is supported by articulated reasoning with some rational underpinning to justify the obviousness conclusion. For the foregoing reasons, Appellants have not persuaded us of error in the rejection of independent claim 1. Moreover, because each of independent claims 13 and 18 includes substantially the same limitations as steps (d) and (e) of claim 1, Appellants have not persuaded us of error in the rejection of claims 13 and 18. Further, Appellants have not persuaded us of error in the rejection of claims 3-6, 15-17, and 19-21, each of which depends from one of claims 1, 13, or 18 and is not separately argued with particularity. OBVIOUSNESS REJECTION OVER BANTZ, MALIK, AND GREENFIELD Regarding representative claim 2, the Examiner finds that Bantz and Malik teach all of the limitations of claim 1, from which claim 2 depends, but do not teach performing the step of storing IP addresses and corresponding domain names in an IP address database “when Internet browsing software is installed on the Internet user’s computer.” Ans. 11. Appeal 2010-010542 Application 11/163,225 10 The Examiner finds, however, that Greenfield teaches this missing limitation. Id. Appellants argue (1) that Greenfield does not teach the limitations of claim 1 that allegedly are missing from Bantz and Malik and (2) that Greenfield’s public key ring does not correspond to Appellants’ IP address database. Br. 25-27. Further, assuming that Greenfield’s public key ring performs the same general purpose as Appellants’ IP address database, Appellants argue that, because Greenfield does not teach authenticating by “comparing” the public key ring, a person of ordinary skill would not combine these references to achieve the claimed invention. Id. at 27. We are not persuaded by Appellants’ arguments. ISSUES 1. Under § 103, has the Examiner incorrectly rejected claim 2 by finding that Bantz, Malik, and Greenfield teach that step (a) of claim 1 “is performed when Internet browsing software is installed on the Internet user’s computer”? 2. Is the Examiner’s reason to combine the teachings of these references supported by articulated reasoning with some rational underpinning to justify the Examiner’s obviousness conclusion? ANALYSIS Based on the record before us, we see no error in the Examiner’s rejection of representative claim 2. Initially, we note that, for the reasons set forth above, the Examiner demonstrates that Bantz and Malik teach all of the limitations of independent claims 1 and 13, from which claims 2 and 8 and Appeal 2010-010542 Application 11/163,225 11 claim 14 depend, respectively. 6 Therefore, Greenfield is not relied upon to and need not supply the limitations of claims 1 or 13. With respect to the Examiner’s reliance on Greenfield to teach that the Internet browser and the IP address database are loaded simultaneously on the user’s computer, Appellants misunderstand Examiner’s rejection. Greenfield teaches that “the application on the client initiating the secured communication session, such as a browser, is typically installed with a public key ring including public keys for various of the well known certificate authorities which allow the client to verify server certificates issued by these certificate authorities.” Greenfield, col. 1, ll. 60-65 (emphases added); see Ans. 11. Thus, the Examiner finds that Greenfield teaches that the public key ring may be installed with the browser and that the public key ring serves generally the same purpose, i.e., authentication or verification, as the IP address database. Ans. 20-21. We agree. Contrary to Appellants’ arguments, the Examiner does not contend that Greenfield’s public key ring teaches Appellants’ IP address database or that Greenfield teaches or suggest scanning emails and pinging identified URLs; rather, the Examiner finds that Bantz and Malik teach those limitations. Id. Nevertheless, the Examiner concludes that Greenfield’s public key ring necessarily teaches some comparison of key ring information with server certificate information. Ans. 21. Again, we agree. 6 Claims 2 and 14 are substantially identical, but depend from different base claims. Br. 31, 32. Claim 8 recites that “the IP address data base is preloaded . . . before the computer is connected to the Internet.” Id. at 32. We find that the scope of claim 8 overlaps that of claim 2, and that our conclusions regarding claim 2 are applicable to claim 8. Appeal 2010-010542 Application 11/163,225 12 For the foregoing reasons, the Examiner correctly rejected claim 2 by finding that Bantz, Malik, and Greenfield teach all of the limitations of that claim; and the Examiner’s reason to combine the teachings of these references is supported by articulated reasoning with some rational underpinning to justify the obviousness conclusion. Therefore, Appellants have not persuaded us of error in the rejection of claims 2, 8, and 14. CONCLUSION The Examiner did not err in rejecting claims 1-6, 8, and 13-21 under § 103. DECISION The Examiner’s decision rejecting claims 1-6, 8, and 13-21 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 kis Copy with citationCopy as parenthetical citation