Ex Parte Adelman et al

Patent Trial and Appeal Board

Oct 22, 2012

10976547 (P.T.A.B. Oct. 22, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte WARREN ADELMAN and MICHAEL CHADWICK
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Appeal 2010-005948
Application 10/976,547
Technology Center 2100
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Before ROBERT E. NAPPI, KALYAN K. DESHPANDE, and
JASON V. MORGAN, Administrative Patent Judges.

DESHPANDE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-005948
Application 10/976,547

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STATEMENT OF CASE
1

The Appellants seek review under 35 U.S.C. § 134(a) of a final
rejection of claims 1-42, the only claims pending in the application on
appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM.

The Appellants invented systems and methods for tracking domain
name related reputations, such as reputations of domain names, reputations
of domain name registrants, and reputations of email addresses.
Specification ¶ 0004.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below:
1. A method, comprising the step of:
a) presenting a search engine results based on a domain
name related reputation data, wherein said domain name related
reputation data is maintained by a Registering Entity.

REFERENCES
The Examiner relies on the following prior art:
Oliver US 2004/0169678 A1 Sep. 2, 2004
Gardos
Rowan
Shraim
US 6,880,007 B1
US 2006/0015722 A1
US 2006/0069697 A1
Apr. 12, 2005
Jan. 19, 2006
Mar. 30, 2006

IronPort, “Reputation-Based Mail Flow Control,” Information Disclosure
Statement by Applicant, 2002, 5 pages.

1
Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Dec. 22, 2009) and Reply Brief (“Reply Br.,” filed Feb. 25,
2010), and the Examiner’s Answer (“Ans.,” mailed Jan. 25, 2010), and Final
Rejection (“Final Rej.,” mailed Oct. 21, 2008).
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Google, “Google SafeSearch Filtering,” Wayback Machine, 7-2003, 2 pages.

REJECTIONS
Claims 1, 2, 4-6, 8, 10, 11, 14, 17, 18, 20, 21, 23-25, 27, 29, 30, 33,
36, 37, and 39-42 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Oliver and Gardos.
Claims 3 and 22 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Oliver, Gardos, and Google.
Claims 7, 15, 19, 26, 34, and 38 stand rejected under 35 U.S.C.
§103(a) as being unpatentable over Oliver, Gardos, and Rowan.
Claims 9, 16, 28, and 35 stand rejected under 35 U.S.C. §103(a) as
being unpatentable over Oliver, Gardos, and Shraim.
Claims 12, 13, 31, and 32 stand rejected under 35 U.S.C. §103(a) as
being unpatentable over Oliver, Gardos, and IronPort.

ISSUE
The issue of whether the Examiner erred in rejecting claims 1-42 turns
on whether the combination of Oliver and Gardos teaches or suggests
“domain name related reputation data is maintained by a Registering Entity,”
whether the Examiner established a prima facie case of obviousness, and
whether Gardos teaches away from the claimed invention.

ANALYSIS
Independent Claims 1, 20, and 39-42
The Appellants first contend that Gardos fails to disclose “reputation
data,” as required by independent claims 1, 20, and 39-42. App. Br. 6-11
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and Reply Br. 4-7. The Appellants specifically argues that the Examiner’s
construction of the term “reputation data” to encompass accreditations is
improper and the Examiner’s interpretation of Gardos is incorrect. Reply
Br. 4-7.
We disagree with the Appellants. In rejecting claims 1, 20, and 39-42,
the Examiner found that Oliver describes “domain name related reputation
data” and found that Gardos describes information related to a domain name
is maintained by a registering entity. Ans. 5-11 (citing Oliver ¶¶ 0135 and
0137 and Gardos 3:58-67). We agree with the Examiner that a person with
ordinary skill in the art would have found it obvious to have “domain name
related reputation data is maintained by a Registering Entity” based on
Gardos’ disclosure of a registering entity maintaining domain related
information. Ans. 5-11 (citing Gardos 3:58-67). As such, we agree with the
Examiner that the combination of Oliver and Gardos describes “domain
name related reputation data is maintained by a Registering Entity.”
Furthermore, the Appellants’ contention that Gardos fails to describe
“domain name related reputation data is maintained by a Registering Entity”
does not persuade us of error on the part of the Examiner because the
Appellants are responding to the rejection by attacking the references
separately, even though the rejection is based on the combined teachings of
the references. Nonobviousness cannot be established by attacking the
references individually when the rejection is predicated upon a combination
of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986). As such, the Appellants’ arguments that Gardos fails to
describe “domain related” reputation data and that data is “maintained by the
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Registering Entity” as described by the Specification are not found to be
persuasive. App. Br. 6-11 and Reply Br. 4-6.
The Appellants additionally argue that the Examiner has failed to
properly combine Oliver and Gardos because the Examiner has failed to
consider the references as a whole. App. Br. 10-11 and Reply Br. 7. We
disagree with the Appellants. Here, the Appellants’ arguments that the
Examiner has failed to consider the references as a whole are again
tantamount to an attack on the references individually. As such, the
Appellants’ argument is not persuasive for the same reasons discussed
supra.
The Appellants also contend that the Examiner has failed to establish
a prima facie case of obviousness because Gardos teaches away from the
claimed invention. App. Br. 11-12 and Reply Br. 9. The Appellants argue
that because Gardos discloses that it is inconvenient to manage information
for a number of domain names, the Examiner has failed to establish a prima
facie case of obviousness because the Examiner is relying on the very
systems discredited by Gardos. App. Br. 11-12. We disagree with the
Appellants. First, the Appellants appear to withdraw this argument. Reply
Br. 9. Furthermore, as discussed supra, the Examiner found that Gardos
describes a registering entity manages and maintains domain related
information, Oliver describes domain related reputation data, and the
“domain related reputation data maintained by the Registering Entity” is
obvious over the combination of Oliver and Gardos. Ans. 5-11. Gardos
explicitly describes the need for maintaining information related to domain
names by a registering entity. Gardos 3:58-67. Gardos does not discredit or
discourage the use of domain related information or the maintenance of such
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information by a Registering Entity. The Appellants have not provided any
additional evidence or rationale to illustrate how Gardos teaches away from
the claimed invention. As such, we do not find the Appellants’ argument to
be persuasive.

Dependent claims 2-19 and 21-38
The Appellants contend that the Examiner erred in rejecting claims 2-
19 and 21-38 for the same reasons set forth in support of independent claims
1, 20, and 39-42. App. Br. 12, and Reply Br. 9. We disagree with the
Appellants. The Appellants’ arguments in support of claims 1, 20, and 39-
42 were not found to be persuasive supra and are not persuasive here for the
same reasons. As such, we sustain the Examiner’s rejection of dependent
claims 2-19 and 21-38.

CONCLUSIONS
The Examiner did not err in rejecting claims 1-42.

DECISION
To summarize, our decision is as follows.
 The rejection of claims 1-42 is sustained.

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) (2011).

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AFFIRMED

ELD