Ex Parte Belissent et al

Board of Patent Appeals and Interferences

Jun 16, 2002

09519964 (B.P.A.I. Jun. 16, 2002)

1
The opinion in support of the decision being entered today
was not written for publication and is not binding precedent
of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JACQUES BELISSENT,
FRED BATTY, TIMOTHY MISNER,
DARYL HUFF and
ANIL SRIVASTAVA
__________
Appeal No. 2003-0334
Application 09/519,964
__________
ON BRIEF
__________
Before JERRY SMITH, KRASS, and BLANKENSHIP, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 1-19, which constitute
all the claims in the application.
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Application No. 09/519,964
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The disclosed invention pertains to a method and
apparatus for identifying, in a directory server, a new mail
domain associated with an incoming message that is received by a
messaging server.
Representative claim 1 is reproduced as follows:
1. A method of identifying, in a directory server, a new
mail domain associated with an incoming message that is received
by a messaging server, comprising:
receiving a new domain name associated with the incoming
message at the messaging server;
creating a corresponding entry in a directory in the
directory server for every component included in the new domain
name that does not already exist in the directory;
automatically updating a corresponding real domain service
record in a domain name server associated with the directory
server based upon the entry; and
identifying the new mail domain by the directory server
based upon the automatically updated real domain record.
The examiner relies on the following references:
Masters et al. (Masters) 5,920,697 July 06, 1999
Call 6,154,738 Nov. 28, 2000
(filed May 21, 1999)
Claims 1-19 stand rejected under 35 U.S.C. § 103(a). As
evidence of obviousness the examiner offers Masters in view of
Call.
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Rather than repeat the arguments of appellants or the
examiner, we make reference to the brief and the answer for the
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejection advanced by the examiner and the evidence
of obviousness relied upon by the examiner as support for the
rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellants’
arguments set forth in the brief along with the examiner’s
rationale in support of the rejection and arguments in rebuttal
set forth in the examiner’s answer.
It is our view, after consideration of the record before
us, that the evidence relied upon and the level of skill in the
particular art would not have suggested to one of ordinary skill
in the art the obviousness of the invention as set forth in
claims 1-19. Accordingly, we reverse.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine,
837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the examiner is expected to make the factual
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determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v. Montefiore
Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984).
These showings by the examiner are an essential part of complying
with the burden of presenting a prima facie case of obviousness.
Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). If that burden is met, the burden then shifts
to the applicant to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis of
the evidence as a whole and the relative persuasiveness of the
arguments. See Id.; In re Hedges, 783 F.2d 1038, 1039, 228 USPQ
685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468, 1472,
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223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d
1048, 1052, 189 USPQ 143, 147 (CCPA 1976). Only those arguments
actually made by appellants have been considered in this
decision. Arguments which appellants could have made but chose
not to make in the brief have not been considered and are deemed
to be waived by appellants [see 37 CFR § 1.192(a)].
The examiner has indicated how he finds the claimed
invention to be obvious over the teachings of Masters and Kim
[answer, pages 3-7]. With respect to independent claims 1, 10
and 14, the examiner essentially finds that Masters teaches the
claimed invention except that Masters does not explicitly show
the process of using the domain name associated with the incoming
message at the Messaging server. The examiner cites Call as
teaching that the use of a domain name associated with the
incoming message at the Messaging server was well known in the
art. The examiner finds that it would have been obvious to the
artisan to modify Masters in view of Call by including the use of
the domain name associated with an incoming message since Call
teaches that the use of a domain name was well known in the art.
With respect to independent claim 1, appellants argue
that Masters updates a routing table based on e-mail components
which are already known to an associated directory service.
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Appellants argue that Masters never describes or suggests the
need to modify the domain service record in response to changed
routing information. Appellants argue that Masters does not
teach or suggest a method or apparatus for adding new domains and
their associated domain service record as claimed. Appellants
argue that even though Call teaches the use of domains and their
associated domain service record, Call adds nothing to Masters
with respect to adding new domains and associated domain service
records. Thus, appellants argue that merely updating routing
tables, as taught by Masters and Kim, does not offer any teaching
on how to automatically update domain server records to
incorporate new domain names [brief, pages 5-6]. Appellants make
the same arguments with respect to independent claims 10 and 14.
The examiner responds that Masters teaches that a new
routing table is created when new routing information becomes
available. The examiner concludes, therefore, that Masters
discloses the process of updating the routing table based upon
newly received routing information. The examiner admits that
Masters does not teach the process of using the domain names
associated with the incoming message at the Messaging server, but
the examiner notes that Call teaches that domain names associated
with incoming messages were well known in the art. The examiner
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repeats his position that the claimed invention would have been
obvious to the artisan in view of the collective teachings of
Masters and Kim [answer, pages 8-10].
We will not sustain the examiner’s rejection of
independent claims 1, 10 and 14 for essentially the reasons
argued by appellants in the brief. The claimed invention recites
that when a new domain name is received, new entries in a
directory are created for all components that do not exist in the
directory, and a real domain service record in a domain name
server associated with the directory server is automatically
updated. As argued by appellants, Masters relates to updating
routing table information as new information is received.
Masters teaches nothing about receiving information related to a
new domain name. The fact that domain names per se were well
known provides no basis to modify Masters to base the routing
table on domain name information. As noted by appellants, the
routing in Masters relates to source and destination points which
are already known to the system. Masters simply determines the
optimum path in which to route the information. There is no
suggestion in Masters or Kim of receiving new domain names and
then creating entries in a directory and updating a domain
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service record in a domain name server as recited in claims 1, 10
and 14.
Since we do not sustain the examiner’s rejection of
independent claims 1, 10 and 14, we also do not sustain the
examiner’s rejection of any of the claims which depend therefrom.
Since we have not sustained the examiner’s rejection with respect
to any of the claims on appeal, the decision of the examiner
rejecting claims 1-19 is reversed.
REVERSED
JERRY SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
ERROL A. KRASS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
JS:svt
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Application No. 09/519,964
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