Ex Parte TelescoDownload PDFPatent Trial and Appeal BoardSep 23, 201411763556 (P.T.A.B. Sep. 23, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte WILLIAM J. TELESCO ____________ Appeal 2012-005221 Application 11/763,5561 Technology Center 2400 ____________ Before HUBERT C. LORIN, NINA L. MEDLOCK, and BRUCE T. WIEDER, Administrative Patent Judges. WIEDER, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134 from the Examiner’s final decision rejecting claims 1–5, 8–16, and 18–26. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE CLAIMED SUBJECT MATTER Appellant’s claimed invention relates to “computer networks, and, in particular, to methods, systems, and computer program products for tokenized domain name resolution.” (Spec. ¶ 3.) 1 According to Appellant, the real party in interest is William Telesco. (Appeal Br. 1.) Appeal 2012-005221 Application 11/763,556 2 Claim 1 is illustrative and is reproduced below: A method for tokenized domain name resolution comprising: receiving a resolvable tokenized domain name, the resolvable tokenized domain name targeting a desired destination domain name system (DNS) server, the resolvable tokenized domain name including a second level domain name, a top level domain name and a predefined token embedded within the tokenized domain name; resolving, on a computer, the resolvable tokenized domain name, comprising: parsing, on the computer, the resolvable tokenized domain name to identify the embedded predefined token; extracting, on the computer, the embedded predefined token from the resolvable tokenized domain name; removing, on the computer, the embedded predefined token from the resolvable tokenized domain name resulting in a stripped domain name, the stripped domain name comprising the second level domain name and the top level domain name; and performing, on the computer, at least one predefined process in response to extracting the embedded predefined token; and transferring the stripped domain name to the desired destination DNS server in response to completing the performing. THE REJECTIONS The following rejections are before us: Claims 1, 12, and 23 are rejected under 35 U.S.C. § 103(a)2 as being unpatentable over Pouzzner (US 2004/0044791 A1, pub. Mar. 4, 2004) and Pan et al. (US 7,058,626 B1, iss. June 6, 2006). 2 Now 35 U.S.C. § 103. Appeal 2012-005221 Application 11/763,556 3 Claims 2, 13, and 18 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Pouzzner, Pan, and, Albert et al. (US 2003/0056096 A1, pub. Mar. 20, 2003). Claims 3 and 14 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Pouzzner, Pan, and, Van De Vanter et al. (US2004/0003373 A1, pub. Jan. 1, 2004). Claims 4 and 15 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Pouzzner, Pan, and Gruber et al. (US 2004/0122682 A1, pub. Jun. 24, 2004). Claims 5, 16, and 24 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Pouzzner, Pan, and, Shen et al. (US 6,636,781 B1, iss. Oct. 21, 2003). Claims 8 and 19 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Pouzzner, Pan, and Umayabashi et al. (US 2004/0047353 A1, pub. Mar. 11, 2004). Claims 9 and 20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Pouzzner, Pan, Umayabashi, and Kastelewicz et al. (US 2004/0153667 A1, pub. Aug. 5, 2004). Claims 10, 21, 25, and 26 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Pouzzner, Pan, and Fairweather (US 2007/0112714 A1, pub. May 17, 2007). Claims 11 and 22 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Pouzzner, Pan, and Green et al. (US 2005/0288920 A1, pub. Dec. 29, 2005). Appeal 2012-005221 Application 11/763,556 4 ANALYSIS Claims 1, 12, and 23 are the only independent claims on appeal. All of the independent claims, and hence all of the claims in the application, call for receiving a resolvable tokenized domain name, the resolvable tokenized domain name targeting a desired destination domain name system (DNS) server, the resolvable tokenized domain name including a second level domain name, a top level domain name and a predefined token embedded within the tokenized domain name . . . . The Examiner states that Pouzzner discloses this limitation and “a method for tokenized domain name resolution.” (Answer 5–6.) In support, the Examiner cites paragraph 142 of Pouzzner which states: The DNS system may also include a first module, such as a Referral Domain Name Service (“RDNS”), for determining whether one of the queried domain name expressions contains 7-bit DNS-legal character strings, 8-bit DNS-legal character strings, or another type of character strings [sic]. In this regard, RDNS may consider the character set token and/or product token in an HTTP message. (Answer 43-44.) Pouzzner generally relates to a system “for managing data, including a database for implementing a key value operation, such as DNS resource record lookup, with a key having a predetermined encoding . . . .” (Pouzzner Abstract.) Appellant argues that “the encoding disclosed in Pouzzner is a mapping between characters and binary resulting in a binary representation that is equivalent to the original domain name text and does not teach or suggest ‘a predefined token embedded within the tokenized domain name.’” (Appeal Br. 20.) Appellant argues further that the “tokens” in Pouzzner are HTTP and not DNS protocol tokens or strings. (Appeal Br. 18–19.) Appeal 2012-005221 Application 11/763,556 5 The Examiner asserts that “‘case-insensitive tokens’, ‘character set token’ and ‘product token’ [as used in Pouzzner] is [sic] similar to a predefined token embedded within the tokenized domain name.” (Answer 6.) The Examiner further asserts that, “the instant specification par. [0060] states ‘embedded tokens can include any combination of characters’ . . . . So, ‘token’, according to specification [sic], is very broad.” (Answer 44.) The Examiner is correct that Pouzzner discloses character strings in a domain name expression and that “embedded tokens [according to the instant specification] can include any combination of characters.” (Id.) But the term “embedded tokens” is not as broad in scope as suggested by the Examiner. According to the instant specification, “embedded tokens can be identified and extracted to trigger execution of one or more processes prior to accessing the domain name itself.” (Spec. ¶ 5.) Also, claim 1 recites “performing, on the computer, at least one predefined process in response to extracting the embedded predefined token; and transferring the stripped domain name to the desired destination DNS server in response to completing the performing.” In other words, although “embedded predefined token,” as used in the instant specification, can include any combination of characters, not every combination of characters is an “embedded predefined token.” The broadest reasonable interpretation of “embedded predefined token” is not so broad as to include HTTP protocol strings. The Examiner’s construction is unreasonably broad. Therefore, we agree with Appellant that the Examiner has not, under a proper construction, presented a prima facie case that Pouzzner discloses or suggests a “predefined token embedded within the tokenized domain name.” Appeal 2012-005221 Application 11/763,556 6 We do not address the question of whether Pouzzner, Pan or the other references cited include sections, not argued by the Examiner, which disclose an “embedded predefined token” when that term is properly construed. DECISION The Examiner’s rejections of claims 1–5, 8–16, and 18–26 under 35 U.S.C. § 103(a) are reversed. REVERSED APJ Initials: Ssc Copy with citationCopy as parenthetical citation