Ex Parte Curran et al

Patent Trial and Appeal Board

Oct 19, 2016

13626670 (P.T.A.B. Oct. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/626,670 09/25/2012
43699 7590 10/21/2016
Go Daddy Operating Company, LLC
14455 NORTH HAYDEN ROAD
SUITE 219
SCOTTSDALE, AZ 85260
FIRST NAMED INVENTOR
Nathan Curran
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.
0290 9731
EXAMINER
WILLIAMS, JENEE LAUREN
ART UNIT PAPER NUMBER
2469
NOTIFICATION DATE DELIVERY MODE
10/21/2016 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 NATHAN CURRAN and WSTIN JILG
Appeal2015-004369
Application 13/626,670
Technology Center 2400
Before JEAN R. HOMERE, JOSEPH P. LENTIVECH, and
NABEEL U. KHAN, Administrative Patent Judges.
LENTIVECH, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of claims 1-18, the only claims pending in the
application on appeal. App. Br, Claims Appendix. We have jurisdiction
over the pending claims under 35 U.S.C. § 6(b ).
We reverse.
1 According to Appellants, the real party in interest is Go Daddy Operating
Company, LLC. App. Br. 1.
Appeal2015-004369
Application 13/626,670
STATEMENT OF THE CASE
Appellants' Invention
Appellants' invention generally relates to enhanced domain name
generation and registration. Spec. i-f 3. The enhanced domain may comprise
a domain name, a web space automatically enabled and associated with the
domain name, and at least one application automatically enabled and
associated with the domain name. Spec., Abstract. Claim 1, which is
illustrative, reads as follows:
1. A method, comprising:
A) receiving from an Internet user, by at least one server
computer communicatively coupled to a network, a request for a
starter website, said request comprising a requested domain
name;
B) responsive to receiving said request for said starter website,
and without receiving further requests from said Internet user;
i) registering, by said at least one server computer, said
domain name to said Internet user;
ii) provisioning, by said at least one server computer, a
hosting service for said domain name;
iii) generating, by said at least one server computer, said
starter website comprising at least one application; and
iv) publishing, by said at least one server computer, said
starter website at said domain name.
Rejections
Claims 1-3, 5-12, and 15-18 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Underwood et al. (US 2006/0200751 Al; published
Sept. 7, 2006) ("Underwood"). Final Act. 6-13.
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Appeal2015-004369
Application 13/626,670
Claims 4, 13, and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Underwood and Mullane et al. (US
2007 /0094411 A 1; published Apr. 26, 2007) ("Mullane"). Final Act. 14--16.
ANALYSIS
Appellants contend the Examiner erred in rejecting claim 1 because
Underwood fails to disclose performing steps i)-iv) "responsive to
receiving said request for said starter website, and without receiving further
requests from said Internet user," as recited in claim 1. App. Br. 7-10;
Reply Br. 2-6. In particular, Appellants contend Underwood fails to
disclose "responsive to receiving said request for said starter website, and
without receiving further requests from said Internet user; i) registering, by
said at least one server computer, said domain name to said Internet user," as
recited in claim 1. Reply Br. 2--4. Appellants acknowledge that Underwood
discloses that the user may specify a preferred domain name for publishing a
template web site, but contend Underwood is silent as to when the domain
name is registered to the user. Reply Br. 2-3 (citing Underwood i-f 286;
Figs. 64A-B). We agree.
The Examiner finds
Underwood figure 64A, figure 64B, [0286] teaches
registering by the webserver, the user entered registration
information including personal information, company
information and domain name (see figure 64A, 64B, [02861).
After entering data into the plurality of fields, the data is
submitted by the user as a single request when the user clicks
button 6420 in figure 64B. Registering the domain name is
responsive to the single request received at the webserver by the
user clicking button 6420.
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Appeal2015-004369
Application 13/626,670
Ans. 5. However, Underwood discloses that the domain name specified by
the user in space 6410 of Figure 64 B is "a preferred domain name ... for
publishing the template web site." Underwood i-f 286 (emphasis added); see
also Underwood i-f 307 ("When a user has completed editing and elects to
publish a site, the publish method is employed, generates the HTML for the
web page to be published and loads it onto a web server for hosting the
published site."). Regarding registration of the domain name, Underwood
discloses merely that upon the user registering with the Web definer service,
"the customer has immediate ability to choose the following other (one-
time) billable options: Select a Domain Name from InterNIC. The customer
is given the ability to select an available Domain Name from InterNIC
(through an online whois facility)." Underwood i-fi-1446-447. Although
Underwood discloses that the domain name will then be set up dynamically,
the Examiner's findings fail to show that Underwood discloses that the
domain name will be registered "responsive to receiving said request for said
starter website, and without receiving further requests from said Internet
user," as required by claim 1. As such, we are persuaded the Examiner erred
in finding Underwood discloses "responsive to receiving said request for
said starter website, and without receiving further requests from said Internet
user; i) registering, by said at least one server computer, said domain name
to said Internet user," as recited in claim 1.
We do not reach Appellants' further allegations of error because we
find the issue discussed above to be dispositive of the rejection of claim 1;
independent claim 10, which recites similar limitations; and of claims 2, 3,
5-9, 11, 12, and 15-18, which depend from claims 1 and 10.
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Appeal2015-004369
Application 13/626,670
Regarding claims 4, 13, and 14, the Examiner does not find that
Mullane cures the deficiencies in the disclosure of Underwood noted above
with respect to claim 1. Accordingly, we do not sustain the rejection of
claims 4, 13, and 14 for the reasons discussed supra.
DECISION
We reverse the Examiner's rejections of claims 1-18.
REVERSED
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