Ex Parte Telesco

Patent Trial and Appeal Board

Sep 23, 2014

11763556 (P.T.A.B. Sep. 23, 2014)

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
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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.
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Application 11/763,556

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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

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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.)
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Application 11/763,556

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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

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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:

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