Ex Parte Adelman et al

Patent Trial and Appeal Board

Dec 12, 2014

12487565 (P.T.A.B. Dec. 12, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WARREN ADELMAN and JUSTIN JILG
____________

Appeal 2012-006230
Application 12/487,565
Technology Center 2400
____________

Before CARLA M. KRIVAK, KRISTEN L. DROESCH, and
DANIEL N. FISHMAN, Administrative Patent Judges.

DROESCH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek review under 35 U.S.C. § 134(a) of the Examiner’s
rejection of claims 1–3, 5–14, 16–26, and 28–32.1 We have jurisdiction
under 35 U.S.C. § 6(b). We AFFIRM.
BACKGROUND
Appellants’ invention is directed to a method for generating and
registering screen name-based domain names. Spec. ¶ 4; Abs.

1 Claims 4, 15, and 27 have been cancelled
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Application 12/487,565

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Independent claim 1 is illustrative, and is reproduced below:
1. A method performed by at least one microprocessor on at least
one server computer executing a plurality of instructions stored
on at least one computer-readable media, said method
comprising the steps of:
A) registering, by at least one server computer
communicatively coupled to a network, a screen name for a
software application to a registrant;
B) generating, by said at least one server computer, a domain
name comprising at least one identifying information
received from said registrant during said registering step A);
and
C) registering, by said at least one server computer, said
domain name to said registrant.

REJECTIONS
Claims 1–3, 5, 6, 8–14, 16, 17, 19–26, 28, 29, 31, and 32 stand
rejected under 35 U.S.C. § 102(b) as anticipated by Schneider (U.S. Pat. No.
6,901,436 B1, May 31, 2005).
Claims 7, 18, and 30 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Schneider and Matt Mazur, CNET!-Domain Pigeon blog
post, http://www.mattmazur.com/2009/04/cnet last visited Dec. 4, 2014
(“Mazur”).
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments in the Appeal Brief presented in response to the Final Office
Action and Appellants’ arguments in the Reply Brief presented in response
to the Answer. We highlight and address specific findings and arguments
for emphasis as follows.
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Independent Claim 1
We agree with the Examiner’s finding that Schneider describes the
limitations of claim 1. See Ans. 4–5, 8–11. With respect to claim 1,
Appellants assert the part of Schneider cited for teaching a screen name
based upon information provided during a domain name2 registration
process merely teaches determining whether a keyword is available for
registration in a second naming system. App. Br. 6; Reply Br. 3 (citing col.
15, ll. 53–58). Appellants argue there is no teaching in Schneider that the
keyword is received from the registrant, and there is no teaching the
keyword comprises identifying information about the registrant. App. Br. 6;
Reply Br. 3. Appellants further argue that the part of Schneider cited for
teaching generating a domain name based on information provided during
the screen name registration process merely teaches registering the same
keyword across a plurality of naming systems. App. Br. 6; Reply Br. 3
(citing col. 16, ll. 7–26). Appellants contend additionally that the
Examiner’s citation to column 18, lines 36–56, and column 20, lines 19–26
of Schneider teaches retrieval of identifiers from databases, but does not
teach or suggest identifying information received from the registrant during
the process of registering a screen name. Reply Br. 5–6.
We are not persuaded by Appellants’ arguments. Schneider describes
a flowchart of the steps for registering similar identifiers across a plurality of

2 In the event of further prosecution, we suggest consideration of whether the
recitations of “screen name” and “domain name” are directed to non-
functional descriptive material. See In re Ngai, 367 F.3d 1336, 1339 (Fed.
Cir. 2004); Ex parte Nehls, 88 USPQ2d 1883, 1887–90 (BPAI 2008)
(precedential).
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naming systems. Col. 12, ll. 19–21; col. 15, l. 45–col. 16, l. 26; Figs. 2a, 4.
Schneider also describes identifiers as static and having a persistence that
usually takes the form of a name or label to help people remember and
commonly agree upon the identification of an object for a given naming
system. Col. 4, ll. 33–36. Schneider further describes that in some naming
systems, identifiers may be registered to an object or entity such as an
individual, and further provides domain names and screen names as
examples of registered identifiers. Col. 4, ll. 38–47. Schneider further
explains the invention is not limited to registration of identifiers such as
domain names and keywords. Col. 19, ll. 40–46. Schneider states that other
registerable naming systems having one or more registerable namespaces
may include identifiers such as a screen name. Col. 19, l. 46–col. 20, l. 28.
Thus, Schneider’s description is not limited to the registration of domain
names and keywords. Schneider’s description of registerable identifiers
includes domain names and screen names.
Turning to Schneider’s Figure 4, Schneider describes the selection by
a user of a first identifier (i.e., domain name) at step 410. Col. 15, ll. 46–48;
see also Fig 2a; col. 12, ll. 21–26 (describing receiving the selection of a
first identifier via a user interface at step 205). When the first selected
identifier (domain name) is available in step 415, the availability of an
identifier in a second naming system (i.e., keyword) that is similar or
identical to the identifier of the first naming system is searched in step 425.
Col. 15, ll. 53–63; see also Fig. 2a, col. 12, ll. 28–30, 34–38 (describing the
allocation of the first selected identifier at step 215, and determining the
availability of a similar or identical identifier in a second naming system at
step 225). At step 435, a determination is made that the second identifier
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(i.e., keyword) is to be registered, and it is registered at step 440. Col. 15,
ll. 61–63; see also Fig. 2a, col. 12, ll. 38–43 (describing the identification of
a matching identifier in the second naming system at step 230, and
registering it at step 240). At steps 340, 345, the identifier from the first
naming system (i.e., domain name) may also be registered. Col. 15, l. 66–
col. 16, l. 2; see also Fig. 2a, col. 12, ll. 50–51 (describing the identifier from
the first naming system may be registered at steps 245, 240´).
Thus, in accordance with Schneider’s explanation that registerable
identifiers include domain names and screen names, Schneider describes
registering a screen name (i.e., first selected identifier) to a registrant at step
240´, 345, generating a domain name comprising at least one identifying
information received from the registrant during the registering step (i.e., an
identical or matching identifier in second naming system) at step 230, 425,
and registering the domain name to the registrant at step 240, 345. See Figs.
2a, 4.
For these reasons, we sustain the Examiner’s rejection of claim 1 as
anticipated by Schneider.
Claims 2–3, 5–14, 16–26, and 28–32
Claims 12 and 23 are also independent claims. Claims 2, 3, and 5–11
depend from claim 1; claims 13, 14, and 16–22 depend from claim 12; and
claims 24–26 and 28–32 depend from claim 23. Appellants do not present
separate substantive arguments addressing claims 2, 3, 5–14, 16–26, and 28–
32. App. Br. 8–9. Accordingly, for the same reasons as claim 1, we sustain
the Examiner’s rejections of claims 2, 3, 5, 6, 8–14, 16, 17, 19–26, 28, 29,
31, and 32 as anticipated by Schneider, and claims 7, 18, and 30 as
unpatentable over Schneider and Mazur.
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DECISION
We AFFIRM the rejection of claims 1–3, 5, 6, 8–14, 16, 17, 19–26,
28, 29, 31, and 32 under 35 U.S.C. § 102(b) as anticipated by Schneider.
We AFFIRM the rejection of claims 7, 18, and 30 under 35 U.S.C.
§ 103(a) as unpatentable over Schneider and Mazur.
TIME PERIOD
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

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