Ex Parte McPherson et al

Patent Trial and Appeal Board

Aug 29, 2018

13251607 (P.T.A.B. Aug. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/251,607 10/03/2011
110084 7590 08/31/2018
MH2 Technology Law Group LLP (w/Verisign)
1951 Kidwell Drive
Suite 310
Tysons Corner, VA 22182
FIRST NAMED INVENTOR
Danny McPherson
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
11569.0100 7835
EXAMINER
MASUD, ROKIB
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
08/31/2018 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):
docketing@mh2law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANNY MCPHERSON, JOSEPH WALDRON, and
ERIC OSTER WEIL
Appeal2017-003703
Application 13/251,607
Technology Center 3600
Before CARLA M. KRIVAK, NABEEL U. KHAN, and
AMBER L. HAGY, Administrative Patent Judges.
HAGY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Non-Final Rejection of claims 1-32, which are all of the pending claims. 2
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify Verisign, Inc., as the real party in interest. (App. Br.
3.)
2 Claims 33-37 have been withdrawn. (App. Br. 28-29 (Claims App'x);
Non-Final Act. 2).)
Appeal2017-003703
Application 13/251,607
STATEMENT OF THE CASE
Introduction
According to Appellants, their invention pertains to "methods and
systems for authenticating DNS resolution requests and providing
authentication dependent responses." (Spec. ,r 1.) By way of background,
Appellants' Specification states that, typically, when a user seeks to access
an Internet resource at a domain name, a DNS resolution request will return
an IP address to the user "regardless of the status of the user's permission to
ultimately use the resource." (Id. ,r 3.) Appellants' Specification further
notes, however, that "[i]f the user does not have a valid account" with a
desired resource that requires authentication credentials, "allowing the user
to access the site at all may be unnecessary and poses a potential security
risk." (Id. ,r 4.) Appellants' Specification further states:
A method and system is desired that can perform
authentication of a DNS requester prior to returning an IP address
( or network layer identifier or service location identifier), to in
part ensure that the requester has authorization to access to the
ultimate resource before opening the door or disclosing the
address. The following disclosure solves these problems and
provides added conveniences and functionality to the name
resolution process. For example, ... this pre-authentication
system allows administrators to prescribe specialized behavior at
the DNS level based on the authentication status of the requester.
(Id. ,I 8.)
Exemplary Claims
Claims 1, 10, 19, and 28 are independent. Claims 1 and 28,
reproduced below with the disputed limitations italicized, are exemplary of
the claimed subject matter:
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Application 13/251,607
1. A method for authenticating a DNS request, comprising:
receiving at an authenticating server comprising an
electronic processor a DNS resolution request including a
domain name and authentication information, wherein the
information is not in the domain name, and wherein the
authentication information comprises at least one of a
username/password combination, or a security certificate;
validating, on the authenticating server comprising an
electronic processor, the authentication information;
determining, by the authenticating server comprising an
electronic processor, a DNS action based on the validation of the
authentication information, wherein the DNS action comprises at
least one of: sending a response message with an IP address,
network layer identifier, or service location identifier; delaying
sending a response message; sending a response message with an
IP address corresponding to a website address containing
authentication instructions; or responding with an alternative IP
address corresponding to a special version of a resource
configured to look just like the resource; and
executing, on the authenticating server compnsmg an
electronic processor, the DNS action.
28. A method for authenticating a DNS request, comprising:
receiving, at an authenticating server comprising an
electronic processor, a DNS resolution request from a user,
wherein the request includes a domain name to be resolved and
an authentication certificate, wherein the authentication
certificate was issued by a community authority trust in response
to a request for identification authentication by the user, and
wherein [the] authentication certificate was added to the DNS
resolution request by a device other than a device that originates
the DNS resolution request;
validating, on the authenticating server comprising an
electronic processor, the authentication certificate;
determining, by the authenticating server comprising an
electronic processor, a network layer address or service location
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address based on the validation of the authentication certificate;
and
sending the network layer address to the user.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Shuster
Hotz et al. ("Hotz")
Hegde et al. ("Hegde")
Boesgaard Sorensen
US 2002/0073335 Al
US 2004/0039798 Al
US 2006/0242321 Al
US 8,468,351 B2
REJECTIONS
June 13, 2002
Feb.26,2004
Oct. 26, 2006
June 18, 2013
Claims 1-6, 8-15, 17-24, 26, and 27 stand rejected under 35 U.S.C.
§ I03(a) as being unpatentable over Hotz and Hegde. (Non-Final Act 2-7.)
Claims 7, 16, and 25 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Hotz, Hegde, and Sorensen. (Non-Final Act. 7-8.)
Claims 28-32 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Shuster and Hegde. (Non-Final Act. 8-10.)
ISSUES
1. Whether the Examiner erred in finding the combination of Hotz
and Hegde teaches or suggests "receiving at an authenticating server
comprising an electronic processor a DNS resolution request including a
domain name and authentication information, wherein the information is not
in the domain name, and wherein the authentication information comprises
at least one of a usemame/password combination, or a security certificate,"
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Application 13/251,607
as recited in independent claim 1 and commensurately recited in
independent claims 10 and 19.
2. Whether the Examiner erred in finding the combination of
Shuster and Hegde teaches or suggests "wherein [the] authentication
certificate was added to the DNS resolution request by a device other than a
device that originates the DNS resolution request," as recited in independent
claim 28.
ANALYSIS
A. Claims 1-27
The Examiner finds Hotz teaches most of the limitations of claim 1,
except the Examiner finds "Hotz does not explicitly disclose the feature
wherein the information is not in the domain name," for which the Examiner
relies on Hegde in combination with Hotz. (Non-Final Act. 3--4.) With
regard to the disputed limitation "receiving at an authenticating server
comprising an electronic processor, a DNS resolution request including a
domain name and authentication information ... ," the Examiner finds
"figure 1 [ of Hotz] shows receiving at a DNS server 100 query as it is
described in the abstract stating 'The user request may be a domain name
resolution request as the query mechanism provides an Internet Protocol (IP)
address corresponding to the domain name."' (Id. at 3.)
Claim 1 's recitation of "authentication information comprises at least
one of a username/password combination, or a security certificate" provides
two alternative options for the authentication information. We conclude that
this limitation is satisfied if either one of the two stated options is met. The
Examiner, however, finds only one of the stated options is taught or
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suggested by the prior art, finding Hotz teaches the "username/password
combination." (Ans. 2 (citing Hotz ,r 123).) The Examiner does not find the
"security certificate" option is taught by Hotz or Hegde, either alone or in
combination. (See id.)
Appellants argue the Examiner's findings are in error because neither
Hotz nor Hegde, alone or in combination, disclose either option in the
disputed limitation of claim 1. Because the Examiner finds only the
usemame/password combination to be taught or suggested by the prior art,
we do not address Appellants' arguments regarding the proper construction
of "security certificate." (See App. Br. 10-11; Reply Br. 4--5.)
We are persuaded by Appellants' argument that neither Hotz nor
Hegde teach or suggest a DNS resolution request comprising a
usemame/password combination, as recited in independent claim 1 ( and
commensurately recited in independent claims 10 and 19). (See App. Br.
12.) The portion of Hotz cited by the Examiner states that "[t]he LOGIN
table describes identity within the DNS system ... [and] includes
information on how to authenticate a user to system." (Hotz ,r 123; Ans. 2.)
Although this disclosure mentions a password, it does not disclose including
the password in a DNS resolution request. Rather, as Appellants contend,
and we agree, "[ a ]t most, Hotz discloses a usemame/password that is used
only to log in and peiform administrative functions" on a DNS database.
(Id. (citing Hotz at page 7, "Table List & Summary") (emphasis added)).
Thus, Hotz does not disclose using a usemame/password in a DNS
resolution request, as claimed. The Examiner makes no findings that Hegde
makes up for the deficiency in Hotz's disclosure. (See Non-Final Act. 4.)
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For the foregoing reasons, we are persuaded of error in the
Examiner's finding that the combination of Hegde and Hotz teaches or
suggests "a DNS resolution request including a domain name and
authentication information, ... wherein the authentication information
comprises at least one of a usemame/password combination, or a security
certificate," as recited in independent claim 1 and commensurately recited in
independent claims 10 and 19. Therefore, we do not sustain the Examiner's
35 U.S.C. § 103(a) rejection of independent claims 1, 10, or 19, or of the
claims dependent thereon, 3 over the combination of Hegde and Hotz. 4
B. Claims 28-32
With regard to claims 28-32, the Examiner finds Shuster teaches most
of the limitations of independent claim 2 8, except for the disputed limitation
requiring the authentication certificate to be "added to the DNS resolution
request by a device other than a device that originates the DNS resolution
request," for which the Examiner relies on Hegde. (Non-Final Act. 8-9.) In
particular, the Examiner finds "Hegde teaches a method wherein [the]
authentication certificate was added to the DNS resolution request by a
device other than a device that originates the DNS resolution request
3 With regard to dependent claims 7, 16, and 25, which the Examiner rejects
over Hegde, Hotz and an additional reference (Boesgaard S0rensen), the
Examiner makes no findings that Boesgaard S0rensen remedies the
deficiencies we have found regarding the base combination. (See Non-
Final Act. 7-8.)
4 In the event of further prosecution on remand, the Examiner may wish to
consider whether the Shuster reference, cited only in connection with claims
28-32, teaches or suggests the subject matter as recited in independent
claims 1, 10, or 19, as well as in any of the claims dependent thereon. (See,
e.g., Shuster ,r,r 41--42 and Fig. 5.)
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(paragraph [0034] discusses database located at DNS server assign priority
to the request)." (Id. at 9.)
Appellants argue the Examiner's findings are in error because Hegde
does not disclose adding any information to a DNS resolution request, much
less "authentication information" as claimed. (App. Br. 16.) In particular,
Appellants argue:
[P]aragraph 34 is about assigning priority to requests to translate
domain names. Hegde elaborates on this process in the
paragraphs following paragraph 34. See Hegde, paragraphs 35-
43. In some embodiments, the priority is based on a tag present
in the request. See Hegde, paragraph 37. However, Hegde
makes clear that such a tag is added to the request by the
requesting device itself. See Hegde, paragraph 38 (" ... the client
data processing system adds the tag or provides tag data when
sending the request. Thus, some cooperation from the source is
required."). Accordingly, at most, Hegde discloses that the
requestor itself may add noncertificate data to a request. This
clearly fails to meet the feature at issue.
(Id. at 17.)
We are persuaded of error for the above reasons as stated by
Appellants. 5 According, we do not sustain the Examiner's 35 U.S.C.
§ 103(a) rejection of independent claim 28, or of the claims dependent
thereon.
5 Appellants' contentions present additional issues. Because the identified
issue is dispositive of Appellants' arguments on appeal, we do not reach the
additional issues.
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DECISION
The Examiner's 35 U.S.C. § 103(a) rejections of claims 1-32 are
reversed.
REVERSED
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