Ex Parte Adelman et al

Patent Trial and Appeal Board

Jun 9, 2016

11866989 (P.T.A.B. Jun. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/866,989 10/03/2007
43699 7590 06/13/2016
Go Daddy Operating Company, LLC
14455 NORTH HAYDEN ROAD
SUITE 219
SCOTTSDALE, AZ 85260
FIRST NAMED INVENTOR
Warren Adelman
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.
0073 8210
EXAMINER
NGUYEN, ANGELA
ART UNIT PAPER NUMBER
2442
NOTIFICATION DATE DELIVERY MODE
06/13/2016 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 WARREN ADELMAN, MICHAEL CHADWICK,
and WAYNE THAYER
Appeal2014-006824
Application 11/866,989
Technology Center 2400
Before ST. JOHN COURTENAY III, KAMRAN JIV ANI, and
JOYCE CRAIG, Administrative Patent Judges.
JIV ANI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) of the
Examiner's final decisions rejecting claims 1-14 and 17-22, which are all
the claims pending in the present patent application. Claims 15, 16, and 23-
31 are cancelled. App. Br. 1. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellants identify Go Daddy Operating Company, LLC as the real party
in interest. App. Br. 1.
Appeal2014-006824
Application 11/866,989
STATEMENT OF THE CASE
The present application relates to 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.
Spec. i-f 3.
Claim 1 is illustrative (disputed limitation emphasized):
1. A system, compnsmg: one or more
computing devices communicatively coupled to a
network and configured to:
A) receive, from a registrant of a domain
name, a request for a secure certificate from a
certification authority;
B) request, from a database running on said
one or more computing devices, a reputation score
for said domain name, or for said registrant, said
database storing in association:
i) an identification of said registrant;
ii) said domain name;
iii) said reputation score for said
registrant; and
iv) said reputation score for said
registrant; 2
C) receive said reputation score from said
database;
D) determine whether said reputation score
exceeds a predetermined value; and
2 We note elements B.iii. and B.iv. erroneously repeat the same limitation.
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Application 11/866,989
E) responsive to a determination that said
reputation score exceeds said predetermined value:
i) inserting, into said secure certificate:
a) said reputation score; or
b) a uniform resource locator
link to said reputation score; and
ii) issuing said secure certificate to said
registrant.
The Rejections
Claims 1-4, 6, 8, 9, 11-14, 18, 20, and 21 stand rejected under
35 U.S.C. § 103(a) over Beattie (US 7,003,661 B2; Feb. 21, 2006), Shull
(US 2006/0212930 Al; Sept. 21, 2006), and Akutsu (US 2002/0069129 Al;
June 6, 2002).
Claims 5 and 17 stand rejected under 35 U.S.C. § 103(a) over Beattie,
Shull, Akutsu, and Dixon (US 2006/0253584 Al; Nov. 9, 2006).
Claims 7 and 19 stand rejected under 35 U.S.C. § 103(a) over Beattie,
Shull, Akutsu, and Judge (US 2006/0015942 Al; Jan. 19, 2006).
Claims 10 and 22 stand rejected under 35 U.S.C. § 103(a) over
Beattie, Shull, Akutsu, and Farmer (VeriSign buys Network Solutions for
$21 billion deal, CNET News (Mar. 7, 2000)).
ANALYSIS
Appellants contend the Examiner fails to establish a prima facie case
of obviousness in rejecting claim 1 because "Beattie teaches nothing more
than a computer system configured to generate email addresses to be
selected by a server certificate 'requestor' (not the CA itself) so that an
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Application 11/866,989
email (not a secure certificate) may be automatically sent to the 'approver'
to approve the installation of the certificate." App. Br. 5-7; Reply Br. 2-3.
Thus, Appellants contend, the Examiner's rejection lacks "showing a CA
requesting and receiving the reputation score or a CA determining whether
the reputation score exceeds a predetermined value." App. Br. 7.
Appellants further contend:
Simply stated, Shull is absolutely silent regarding a CA, and
therefore cannot disclose the claimed limitations of 1) a CA
requesting and/or receiving a reputation score from a database;
2) the CA determining whether the reputation score exceeds a
predetermined value; and/or 3) issuing a secure certificate if the
received. Likewise, Beattie is absolutely silent regarding the
claimed limitations. In fact, the words "reputation" and "score"
(or any equivalent words) are conspicuously absent from the
Beattie reference.
App. Br. 6; Reply Br. 4. Finally, Appellants contend, "This bind trust score
is not a reputation score for a domain name or a registrant, . . . the cited
paragraphs only shows that 'such a score might be made available to users'
It is not enough to merely be 'available."' App. Br. 6.
We have considered Appellants' arguments in the Appeal Brief and
Reply Brief, as well as the Examiner's Answer thereto. We are not
persuaded by Appellants' arguments for at least the following reasons.
First, we are not persuaded by Appellants' argument that the
Examiner fails to set forth prima facie case of obviousness because the
Examiner correctly maps each claim limitation to a teaching or suggesting of
Beattie or Shull. Final Act. 3-6. A determination of obviousness does not
require the claimed invention to be expressly suggested by any one or all of
the references. See e.g., In re Keller, 642 F.2d 413, 425 (CCPA 1981). The
Examiner was not required to "seek out precise teachings directed to the
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Application 11/866,989
specific subject matter of the challenged claim" as argued by Appellants.
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Rather, the
Examiner's obviousness analysis could "take account of the inferences and
creative steps that a person of ordinary skill in the art would employ" (id.),
as well as "include recourse to logic, judgment, and common sense available
to the person of ordinary skill that do not necessarily require explication in
any reference or expert opinion," Perfect Web Techs., Inc. v. InfoUSA, Inc.,
587 F.3d 1324, 1329 (Fed. Cir. 2009).
Second, we are not persuaded by Appellants' arguments that "Shull is
absolutely silent regarding a CA" and "the words 'reputation' and 'score' (or
any equivalent words) are conspicuously absent from the Beattie reference"
because these arguments are not responsive to the Examiner's findings.
Where, as here, a rejection is based on a combination of references, one
cannot show non-obviousness by attacking references individually. Keller,
642 F.2d at 426; In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986). The Examiner cites Beattie-not Shull-for its teaching of a CA
requesting and issuing a secure certificate. Final Act. 4. Similarly, the
Examiner cites, Shull-not Beattie -for its teaching of a trust score for an
authenticated source name (i.e., a reputation score for a domain name) and a
portfolio score (i.e., a reputation score for said registrant). Id. at 5.
Third, we are not persuaded by Appellants' argument that Shull
merely teaches a trust score "might be made available to users . . . . It is not
enough to merely be 'available."' Here too, Appellants' argument is not
responsive the Examiner's findings in the combined references. The
Examiner finds, and we agree:
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Application 11/866,989
When combining Beattie and Shull, the system would perform
the automated check as described in Beattie (column 6, lines 63
- column 7, line 10.) The combined system would use the system
taught in Shull to perform the automated check. The combined
system requests and obtains a score for an online entity ([0037],
[0089], and [0100]) and then makes the decision on whether or
not to perform the action [i.e. issue the certificate] based on that
score ([0064]).
Ans. 8; Final Act. 5.
Accordingly, we sustain the Examiner's 35 U.S.C. § 103(a) rejection
of claim 1. Appellants advance no further arguments for claims 2-14 and
17-22. App. Br. 8. Accordingly, we sustain the Examiner 35 U.S.C.
§ 103(a) rejections of these claims.
DECISION
We affirm the Examiner's decisions rejecting claims 1-14 and 17-22.
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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