Ex Parte Ruiz et al

Board of Patent Appeals and Interferences

Sep 11, 2012

10407967 (B.P.A.I. Sep. 11, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte TIM RUIZ and ROBERT PARSONS
__________

Appeal 2012-009704
Application 10/407,967
Technology Center 2100
__________

Before KEVIN F. TURNER, STEPHEN C. SIU, and JUSTIN T. ARBES,
Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1, 3, 4, 6, and 8-10. Claims 2, 5, 7, and 11-
19 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
The disclosed invention relates generally to systems and processes for
registering domain names (Spec. 5).
Claim 1 reads as follows:
1. A system comprising:
A) a web page on a registrar website configured to receive a
requested domain name;
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B) one or more zone file server computers communicatively
coupled to a network and comprising an internal database containing
one or more domain names registered with one or more registries,
wherein the one or more domain names were parsed from one or more
zone files downloaded regularly from the one or more registries by the
one or more zone file server computers;
C) one or more web servers communicatively coupled to the
network and comprising:
i) a check availability service software displayed on the
web page and configured to send a domain availability check request,
responsive to receiving the requested domain name; and
ii) a zone file check service software communicatively
coupled to the zone file server and configured to query the internal
database for the requested domain name without contacting a registry
and responsive to receiving the domain availability check request
from the check availability service software, wherein, responsive to
finding the requested domain name in the internal database, the web
page displays that the domain name is not available, and wherein,
responsive to not finding the requested domain name in the internal
database, the requested domain name is searched in one or more
registry databases hosted by each of the one or more registries and the
results are displayed on the web page.

The Examiner relies upon the following references as evidence in
support of the rejections:
Gardos US 6,745,248 B1 Jun. 1, 2004
(filed Aug. 2, 2000)
Fellman US 2002/0065903 A1 May 30, 2002
Hickman US 6,996,609 B2 Feb. 7, 2006
(filed Apr. 28, 1997)

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The Examiner rejects claims 8 and 9 under 35 U.S.C. § 112, 1st
paragraph as failing to comply with the written description requirement;
claims 1, 4, 8, and 10 under 35 U.S.C. § 103(a) as unpatentable over
Fellman and Gardos; and claims 3, 6, and 9 under 35 U.S.C. § 103(a) as
unpatentable over Fellman, Gardos, and Hickman.

ISSUES
Did the Examiner err in rejecting claims 1, 3, 4, 6, and 8-10?

PRINCIPLES OF LAW
Under the written description requirement of 35 U.S.C. § 112, the
disclosure of the application relied upon must reasonably convey to the
artisan that, as of the filing date of the application, the inventor had
possession of the later claimed subject matter. Vas-Cath Inc. v. Mahurkar,
935 F.2d 1555, 1563 (Fed. Cir. 1991).
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17-
18 (1966).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).
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ANALYSIS
Written Description
Claim 8 recites files that are optimized by parsing one or more domain
names and one or more corresponding websites from the one or more zone
files. Claim 9 depends from claim 8. The Examiner states that the
Specification lacks “support for the concept of parsing a corresponding
website” (Ans. 5) while Appellants argue that the Specification discloses
that “‘[z]one files, containing all the registered domain names with their
corresponding web sites, may be periodically downloaded from the
Registries’” (App. Br. 10) (citing Spec., pg. 5, ll. 27-30).
To the extent that one of ordinary skill in the art would have
understood that downloading data includes parsing data, we agree with
Appellants that the Specification discloses “parsing” data including
websites.
The Examiner erred in rejecting claims 8 and 9 under 35 U.S.C. §
112, 1st paragraph as failing to comply with the written description
requirement.

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Obviousness
Appellants assert that “neither [Fellman nor Gardos] teaches . . . an
internal database” (App. Br. 11). Claim 1 recites an “internal database” that
contains domain names parsed from zone files downloaded regularly from
registries. As the Examiner points out, Gardos discloses “download[ing] the
root zone file . . . directly from the Registry . . . and [utilizing] the
downloaded root zone file data” (col. 4, ll. 14-16) (Ans. 28). Gardos also
discloses that “[a]fter downloading, the root zone file data may be stored”
(col. 4, l. 57). Since the data in Gardos is stored, one of ordinary skill in the
art would have understood that the data are stored in a particular location or
within a particular structure, such as a database. Appellants have not
provided sufficient evidence that the database of Gardos differs from the
database as recited in claim 1.
Appellants also assert that Fellman and Gardos fail to disclose data
being “parsed from one or more zone files” (App. Br. 11), but Appellants do
not indicate that the Specification provides a specialized definition of the
term “parse.” In the absence of such a definition, we construe the term
“parse” broadly but reasonably as would have been understood by one of
ordinary skill in the art and in light of the Specification to include any
activity involving the analysis or identification of data. Gardos discloses
identifying data in a root zone file associated with a Registry (by utilizing
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queries and “analyzing” the data) and downloading the identified data.1
Appellants have not indicated a meaningful difference between identifying
data of Gardos, for example, and data “parsed from one or more zone files”
as recited in claim 1.
Also, Appellants state that the Specification discloses “zone files . . .
may be periodically downloaded . . .” (App. Br. 10) and equates the
downloading of files to “zone file information . . . [being] parsed and ‘stored
in an internal database . . .’” (App. Br. 10). Hence, Appellants appear to
state that “parsing” data is “downloading” data. Gardos discloses
downloading data (e.g., “[d]ownloading an authoritative zone file” –
Abstract). Hence, even utilizing Appellants’ alternative construction, we
cannot agree that Gardos fails to disclose parsed data.
Appellants argue that Gardos merely discloses an “unparsed zone file”
(App. Br. 11), which would “defeat the purpose of parsing the domain
names” (id.). We disagree with Appellants at least because Appellants have
not adequately demonstrated that Gardos fails to suggest “parsed data” (i.e.,
data which are analyzed or identified, as broadly but reasonably construed),
as described above.

1 “. . . at least some entities . . . have direct access to the root zone file . . .
[q]ueries could be directed into the root zone file and the data analyzed in
that manner . . .” (col. 4, ll. 29-32); “[a]fter downloading, the root zone file
data may be stored on a data server” (col. 4, ll. 57-59).
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Appellants also argue that Fellman and Gardos fail to suggest
querying “without contacting a registry” (App. Br. 11). However, as the
Examiner indicates (Ans. 8-9), Gardos discloses “downloaded root zone file
data” (col. 5, l. 42) and performing “[s]tring searches . . . on the root zone
data file” (col. 5, ll. 44-45) to identify desired data “in the downloaded root
zone file” (col. 5, ll. 47-48). In other words, Gardos discloses downloading
data from a Registry, then searching the downloaded data. Appellants have
not demonstrated that Gardos discloses searching (or “contacting”) the
Registry. We therefore are not persuaded by Appellants’ argument.
Appellants also argue that Fellman and Gardos fail to disclose
querying the database for a requested domain name “responsive to”
receiving a request, as recited in claim 1 (see, e.g., App. Br. 12). However,
as indicated by the Examiner (Ans. 29-31), Gardos discloses identifying a
“search characteristic” and performing “a string search . . . in the
downloaded root zone file” (e.g., col. 2, ll. 65-67). One of ordinary skill in
the art would have understood that the “search characteristic” of Gardos
would have been obtained in a “request” for the characteristic being
searched since “requests” include such inquiries. Likewise, one of ordinary
skill in the art, being “a person of ordinary creativity, not an automaton”
(KSR, 550 U.S. at 421), would have understood that the search for the
desired characteristic of Gardos would have been performed in response to
the request for the desired characteristic since the desired characteristic is, in
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fact, being searched. Appellants have not provided sufficient evidence to the
contrary.
Appellants also argue that, while Fellman discloses “displaying an
unavailable domain name” (App. Br. 12), the combination of Fellman and
Gardos fails to disclose or suggest “displaying the unavailability of a domain
name responsive to finding the requested domain name in an internal
database” because, according to Appellants, “Fellman fails to teach . . . an
internal database and Gardos fails to teach . . . finding a domain name in an
internal database” (App. Br. 12). However, as previously described and in
contrast to Appellants’ assertion, Gardos discloses “finding a domain name
in an internal database.” Therefore, we are not persuaded by Appellants’
argument. In any event, the Examiner relies on the combination of Fellman
and Gardos rather than any one of Fellman or Gardos alone. For this
additional reason, we find unavailing Appellants’ arguments, even if
assumed to be true, that each of Fellman and Gardos individually fails to
disclose separate and distinct claim features.
Appellants also argue that Fellman and Gardos fail to disclose or
suggest “databases being searched responsive to not finding the requested
domain in the internal database” (App. Br. 12). However, as we stated in
our previous decision regarding this issue:
The Examiner points to the downloading of the Registry in
Gardos, with its inherent economies of speed and cost, and the
more up-to-date searching of the Registry itself taught by
Fellman, and states that it would be obvious to combine both
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teachings to get the advantages of both, to wit search the
cheaper method first, and if one does not get a ‘hit’ then go to
the Registry . . . A closer review of Gardos shows that both
methods are actually taught by that reference alone (col. 4, ll.
27-35). Gardos then states the speed and sophistication
advantages of the download method (col. 4, l. 38) but
recognizes that the data is not up-to-date (col. 4, l. 24).
Considering all these teachings, we do not consider it erroneous
to find that Gardos (and Fellman) provide sufficient teaching to
render obvious the claimed process.

(Decision on Appeal, Appeal No. 2008-4504, Application 10/407,967,
p. 12)
Appellants provide additional arguments regarding the alleged failure
of Fellman and Gardos to disclose or suggest an internal database (see, in
general, App. Br. 13-14), parsed data (App. Br. 16-18), querying the internal
database (App. Br. 19-20), and the Examiner’s alleged reliance on
“inherency” (App. Br. 14-15). We disagree with Appellants for at least the
reasons set forth above and in the Examiner’s response (see Ans. 38-55).
Appellants argue that “[t]he art used by Examiner teaches away from
the present invention” (App. Br. 21). “A reference may be said to teach
away when a person of ordinary skill, upon [examining] the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant.” Para-Ordnance Mfg., Inc. v. SGS Importers Int’l, Inc. 73 F.3d
1085, 1090 (Fed. Cir. 1995) (quoting In re Gurley, 27 F.3d 551, 553 (Fed.
Cir. 1994)).
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Appellants argue Gardos “teaches away from the concept of querying
an internal database” (App. Br. 21). However, as set forth above and as
indicated by the Examiner, Gardos discloses querying an internal database.
Gardos cannot “teach away” from a disclosure that Gardos provides.
Further, even assuming (without deciding) that Appellants’ characterization
of Fellman and Gardos is correct, Appellants’ have not indicated how either
Fellman or Gardos discourages one of ordinary skill in the art from
“following the path” set out in either reference or would lead one of ordinary
skill in the art in a “divergent” direction (i.e., querying a database). We
therefore are not persuaded by Appellants’ argument.
Claims 4, 8, and 10 recite similar features. Appellants do not provide
additional arguments with respect to Hickman or in support of claims 3, 6, or
9, which depend from claims 1, 4, or 8.

CONCLUSIONS
Based on the findings of fact and analysis above, we conclude that the
Examiner erred in rejecting claims 8 and 9 under 35 U.S.C. § 112, 1st
paragraph, and did not err in rejecting claims 1, 4, 8, and 10 under 35 U.S.C.
§ 103(a) as unpatentable over Fellman and Gardos and claims 3, 6, and 9
under 35 U.S.C. § 103(a) as unpatentable over Fellman, Gardos, and
Hickman.

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DECISION
We reverse the Examiner’s rejection of claims 8 and 9 under 35
U.S.C. § 112, 1st paragraph, and affirm the Examiner’s rejections of claims
1, 3, 4, 6, and 8-10 under 35 U.S.C. § 103(a). Because we have affirmed at
least one ground of rejection with respect to each claim on appeal, the
Examiner’s decision is affirmed. See 37 C.F.R. § 41.50(a)(1).
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