Ex Parte Bushlack et al

Patent Trial and Appeal Board

Nov 24, 2017

13731724 (P.T.A.B. Nov. 24, 2017)

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.
13/731,724 12/31/2012 Jeremy Bushlack 0295 8404
43699 7590
Go Daddy Operating Company, LLC
14455 NORTH HAYDEN ROAD
SUITE 219
SCOTTSDALE, AZ 85260
EXAMINER
HARMON, COURTNEY N
ART UNIT PAPER NUMBER
2159
NOTIFICATION DATE DELIVERY MODE
11/28/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
inventions@godaddy.com
pat-dept@quarles.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEREMY BUSHLACK, RICHARD MERDINGER,
JODY KOLKER, ALEX PASSOS,
and JOE SNITKER
Appeal 2016-002370
Application 13/731,7241
Technology Center 2100
Before JOHNNY A. KUMAR, JAMES W. DEJMEK, and
SCOTT E. BAIN, Administrative Patent Judges
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) from the
Examiner’s final rejection of claims 1—24, which are all the claims pending
in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.2
1 According to Appellants, the real party in interest is Go Daddy Operating
Company, LLC. App. Br. 2.
2 Our Decision refers to Appellants’ Appeal Brief filed (filed Jan. 28, 2015)
(“App. Br.”); Reply Brief filed (filed Dec. 15, 2015) (“Reply Br.”);
Examiner’s Answer mailed (mailed Oct. 15, 2015) (“Ans.”); Final Office
Action mailed (mailed Sept. 11, 2014) (“Final Act.”); and original
Specification filed (filed Dec. 31, 2012) (“Spec.”).
Appeal 2016-002370
Application 13/731,724
STATEMENT OF THE CASE
Appellants’ invention relates to registration of domain names where
new business rules are accepted by storing the business rules in an electronic
document stored in a database. Abstract.
Claims 1, 8, and 15 are independent claims. Claim 1 illustrates
Appellants’ invention, as reproduced below:
1. A system, comprising: a server communicatively coupled to a
network database storing a plurality of electronic documents, wherein each
electronic document in the plurality of electronic documents contains a
plurality of business requirements for one, and only one, Top-level Domain
(TLD), wherein no two electronic documents contain business requirements
for the same TLD and wherein the business requirements for a TLD are used
to programmatically configure a Registrar to register a plurality of domain
names having the TLD.
App. Br. 14—19 (Claims App.).
Examiner’s Rejections
Claims 1—24 are rejected under 35U.S.C. § 101 because the claimed
invention is directed to a judicial exception. Ans. 10.3
Claims 1—5, 8—12, 15, 16, 19—21, and 24 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Holmes et al. (US 2006/0230380 Al,
Oct. 12, 2006). Final Act. 3.
3 On page 16 of the Reply Brief, Appellants note the Examiner only
“rejected claims 1-20 under 35 USC § 101 . . . claims 21-24 were not
addressed . . . but the Examiner may have intended to include claims 21-24
in this rejection.” For the purpose of this Appeal, we treat claims 21—24 as
being rejected under 35 U.S.C. § 101, together with claims 1—20, consistent
with Appellants’ understanding.
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Application 13/731,724
Claims 6, 7, 13, 14, 17, 18, 22, and 23 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Holmes in view of Schneider (US
2008/0005127 Al, Jan. 3, 2008). Final Act. 12.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments (Appeal Brief and Reply Brief) that the Examiner has erred.
1. Non-Statutory Subject Matter
In Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014), the Supreme Court reiterates an analytical two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice, 134 S. Ct. at 2355.
The first step in the analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts,” such as an abstract idea.
Id. If the claims are directed to eligible subject matter, the inquiry ends.
Thales Visionix Inc. v. United States, 850 F.3d 1343, 1349 (Fed. Cir. 2017);
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016). If
the claims are directed to a patent-ineligible concept, the second step in the
analysis is to consider the elements of the claims “individually and ‘as an
ordered combination’” to determine whether there are additional elements
that “‘transform the nature of the claim’ into a patent-eligible application.”
Enfish, 822 F.3d at 1334 (citing Mayo, 566 U.S. at 79). In other words, the
second step is to “search for an ‘inventive concept’—i.e., an element or
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Application 13/731,724
combination of elements that is ‘sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Alice, 134 S. Ct. at 2355 (citing Mayo, 566 U.S. at 72—73).
In rejecting claims 1—20 under 35 U.S.C. § 101, the Examiner finds
The idea of the claims appears to be directed towards
nothing more than the concept of updating a set of rules from
an authoritative source of said rules. Such a practice is
fundamental to not only TLD registrations, but any
promulgation of rules from a central authority (e.g[.],
distributing a copy of changes to state law to libraries).
Ans. 11.
In addition, the Examiner also finds
The claim amounts to no more than stating updating and editing
the set of rules set by the authoritative source and is no more
than a field of use or merely involve insignificant extra solution
activity, they do not add significantly more to the exception.
Id. at 12.
Appellants present a series of arguments as to why the claims should
be patent-eligible under 35 U.S.C. § 101, which we address in the order
presented.
First, Appellants argue claims 1, 8, 15, and 20 are not an abstract idea
because
The claim limitation of “the business requirements for a TLD
are used to programmatically configure a Registrar to register a
plurality of domain names having the TLD” ties the claim to a
particular machine, i.e., a “Registrar.” The whole purpose of the
invention is to configure or transform the Registrar to either be
able to register domain names with new TLDs that the Registrar
was not able to register before or be easily updated when the
business requirements for a TLD changes. Those of
ordinary skill in the art at the time of the invention would know
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Application 13/731,724
that a “Registrar” is a very complex “machine” providing
specific functions comprising electrical devices
(servers, routers, cabling, etc.) specifically arranged to allow
registrants to register domain names over the Internet. As the
claims are fundamentally tied to a “Registrar” (the
whole purpose of the invention) which is specifically recited in
the claims and a “Registrar” is particular machine, claims 1, 8,
15 and 20 are not abstract ideas.
Reply Br. 16. However, these arguments are not persuasive because (1) the
Supreme Court’s Alice two-step framework is applicable to all statutory
categories under § 101; and (2) Appellants may not circumvent the
prohibition on the patenting of abstract ideas simply by drafting claims to
include generic computer hardware. Alice, 134 S. Ct. at 2359 (explaining
that allowing claims to a computer system configured to implement an
abstract idea “would make the determination of patent eligibility ‘depend
simply on the draftsman’s art,’ thereby eviscerating the rule that ‘[l]aws of
nature, natural phenomena, and abstract ideas are not patentable’”) (citations
omitted). As recognized by the Supreme Court, “the mere recitation of a
generic computer cannot transform a patent-ineligible abstract idea into a
patent-eligible invention.” See id. at 2358—59 (concluding claims “simply
instructing] the practitioner to implement the abstract idea of intermediated
settlement on a generic computer” not patent eligible).
Second, Appellants argue, like the claims in DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1256-57 (Fed. Cir. 2014),
the claimed solution is necessarily rooted in computer
technology in order to overcome a problem (efficiently and
reliably programmatically configuring a Registrar to register
domain names with a new TLD to domain name registrants). As
the claimed solution is solving a specific problem necessarily
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Application 13/731,724
rooted in computer technology (and not just a general business
practice being performed on the Internet)
Reply Br. 18. We do not agree. Contrary to Appellants’ arguments, the
claims merely use a computer as a vehicle for implementing the abstract idea
of “updating a set of rules from an authoritative source of said rules.” The
subject matter is not an improvement in computer technology itself, but
rather is a commercial challenge. For that reason, we do not agree with
Appellants that this case is like DDR Holdings.
Lastly, Appellants argue that the “[cjlaims [are] not abstract as they
include meaningful limitations - shown by being different from Holmes and
all other prior art.” Reply Br. 17.
We do not agree. The second step of the Alice inquiry is to “search
for an ‘inventive concept.’” According to the Federal Circuit, an “inventive
concept” sufficient to “transform” the claimed “abstract idea” into a patent-
eligible application under the second step of the Alice inquiry can be
established in several ways, including:
(1) in DDR, an “inventive concept” is found because
DDR’s claims (i) do not merely recite “the performance of
some business practice known from the pre-Internet world”
previously disclosed in Bilski and Alice, and instead (ii) provide
a technical solution to a technical problem unique to the
Internet, i.e., a “solution [] necessarily rooted in computer
technology in order to overcome a problem specifically arising
in the realm of computer networks,”
DDR, 773 F.3d at 1257;
(2) in Bascom Global Internet Services, Inc. v. AT&T
Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), an “inventive
concept” is found because Bascom’s claims, when considered
as “an order combination,” “transform the abstract idea of
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filtering content into a particular, practical application of that
idea,” i.e., “installation of a filtering tool at a specific location,
remote from end-users, with customizable filtering features
specific to each end user,”
Bascom, 827 F.3d at 1350; and
(3) in Amdocs (Israel) Ltd. v. Openet Telecom, Inc.
841 F.3d 1288 (Fed. Cir. 2016), an “inventive concept” is found
because, like DDR and Bascom, Amdocs ’ claims “entail[] an
unconventional solution (enhancing data in a distributed
fashion) to a technological problem (massive record flows
which previously required massive databases)” and “improve
the performance of the system itself,”
Amdocs, 841 F.3d at 1302.
However, in contrast to the claims in DDR, Bascom, and Amdocs,
Appellants’ claimed invention does not include any “inventive concept” and
only recites a series of steps of “updating a set of rules from an authoritative
source of said rules.”
Because Appellants’ claims 1—24 are directed to a patent-ineligible
abstract concept under Alice step 1, and do not recite something
“significantly more” under Alice step 2, we sustain the Examiner’s rejection
of these claims under 35 U.S.C. § 101 as being directed to non-statutory
subject matter in light of Alice and its progeny.
2. Anticipation/Obviousness
We have reviewed the Examiner’s anticipation and obviousness
rejections of claims 1—24 in light of Appellants’ contentions that the
Examiner has erred.
Further, we have reviewed the Examiner’s response to Appellants’
arguments. The Examiner has provided a comprehensive response to each
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argument presented by the Appellants on pages 3 through 10 of the Answer.
We have reviewed this response and concur with the Examiner’s findings
and conclusions. We adopt as our own (1) the findings and reasons set forth
by the Examiner in the action from which this appeal is taken and (2) the
reasons set forth by the Examiner in the Examiner’s Final Action and
Answer in response to Appellants’ Appeal Brief. Final Act. 3—14; Ans. 3—
10. We have considered Appellants’ Reply Brief, but find it unpersuasive to
rebut the Examiner’s responses.
We highlight and address specific findings and arguments for
emphasis as follows.
First, Appellants’ contend “Holmes does not teach a plurality of
electronic documents.” App. Br. 8. In response, the Examiner finds Holmes
discloses the claimed electronic documents:
[In Holmes,] the electronic documents are the rules that
are associated with domain/product pairs respectively, the
routines and constraints on the rules are business requirements
that are associated with separate domains and related products
for each domain that can be registered by a customer,
respectively. Furthermore, Holmes discloses the
business requirements for a TLD are used to programmatically
configure a Registrar to register a plurality of domain names
having the TLD (see Holmes, Fig. 3, Fig. 6, para [0050], para
[0051]
Ans. 4—5 (emphasis added).
Second, Appellants contend Holmes fails to disclose “wherein each
electronic document in the plurality of electronic documents contains a
plurality of business requirements for one, and only one, Top-level Domain
(TLD),” as recited in claim 1. App. Br. 10.
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Application 13/731,724
The Examiner finds the “one, and only one” claimed feature is met by
Holmes:
[In Holmes,] the rules are preferably stored in a relational
database on the server that is separate and different from the
relational database in which the product restrictor list is stored,
so that each rule can be individually associated with
a particular domain/product pair on the product restrictor list,
para [0050] “the rules are organized as a hierarchy of
components and subcomponents, wherein each component and
subcomponent is defined by the requirements of a
particular domain registry.”, para [0055] “rules under the
document rule type rules could be edited to: create a new and
unique rule name”, “For the select-from rule type, the user can:
create a new and unique rule name; indicate the format of the
rule (e.g., “country,” “yes/no,” and “other”); and provide
associated notes. Similarly, existing check box rules can be
edited to change the rule name, caption, description, notes, rule
audience and failure messages”, para [0064], “a "Rule ID”
search field 43 and “Rule Name” search field 45 are provided in
which the user can search by Rule ID number (e.g., RS203) and
Rule Name (e.g., ES-Registration Qualification), respectively.).
Therefore, there are separate document rules for each TLD,
respectively and rules can be searched and uniquely configured
with routines and constraints for each TLD.
Ans. 7—8 (emphases added).
Accordingly, we sustain the Examiner’s § 102 rejection of
independent claim 1, as well as commensurate independent claims 8, 15, and
20, and dependent claims 2—5, 9—12, 16, 19, 21, and 24, not separately
argued.
Appellants have provided no separate arguments towards patentability
for claims 6, 7, 13, 14, 17, 18, 22, and 23. Therefore, the Examiner’s § 103
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rejection of claims 6, 7, 13, 14, 17, 18, 22, and 23 is sustained for similar
reasons as noted supra.
CONCLUSION
We conclude Appellants have not demonstrated the Examiner erred in
rejecting claims 1—24 under 35 U.S.C. § 101.
We affirm the Examiner’s rejection of claims 1—5, 8—12, 15, 16, 19—
21, and 24 as being anticipated under 35 U.S.C. § 102(b).
We affirm the Examiner’s rejection of claims 6, 7, 13, 14, 17, 18, 22,
and 23 as being unpatentable under 35 U.S.C. § 103(a).
DECISION
We affirm the Examiner’s final rejection of claims 1—24.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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