Ex Parte Devarajan et al

Board of Patent Appeals and Interferences

Apr 21, 2006

09526735 (B.P.A.I. Apr. 21, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte: MANIVANNAN DEVARAJAN,
GREG KORZENIEWSKI and VINCENT M. LEE
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Appeal No. 2006-0719
Application No. 09/526,735

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ON BRIEF

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Before HAIRSTON, BARRY and MACDONALD, Administrative Patent Judges.

HAIRSTON, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 15 through 35.
The disclosed invention relates to a method and system for booking domain
names. If a domain name is available, then the method and system present an option to
reserve the domain name and an option to register the domain name.

Appeal No. 2006-0719
Application No. 09/526,735

Claim 15 is illustrative of the claimed invention, and it reads as follows:
15. A method for booking domain names, comprising:
in response to receiving at least one domain name from a customer, determining
whether the domain name is available;

if the domain name is available, presenting an option to book the domain name to
the customer, the option to book to book the domain name including an option to reserve
the domain name and an option to register the domain name;

in response to receiving a domain name reservation request from the customer,
prompting the customer for a username and a password;

in response to receiving the username and the password from the customer,
presenting a domain name reservation form to the customer;

in response to receiving a completed domain name reservation form from the
customer, presenting a cost summary, a request for payment and a legal agreement to the
customer;

in response to receiving payment information and an acceptance of the legal
agreement from the customer, reserving the domain name.

The references relied on by the examiner are:
Farris et al. 5,881,131 Mar. 9, 1999

Broadhurst 6,560,634 May 6, 2003
(filed Aug. 15, 1997)

Claims 15 through 35 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Broadhurst in view of Farris.
Reference is made to the briefs and the answer for the respective positions of the
appellants and the examiner.

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Appeal No. 2006-0719
Application No. 09/526,735

OPINION
We have carefully considered the entire record before us, and we will reverse the
obviousness rejection of claims 15 through 35.
Broadhurst discloses a method of searching various databases to determine the
availability of a domain name. If a domain name is available, then a request may be
made to register that domain name by selecting displayed item 610 (Figure 6A). In a
displayed order request form, the domain name requestor would supply credit card and
other information prior to submitting the order form to the appropriate registering service
via email or hypertext transport protocol (column 6, lines 49 through 62).
The examiner acknowledges (answer, page 4) “Broadhurst does not explicitly
teach [a] reservation system separate from the registration system or the use of a
password.” According to the examiner (answer, page 4), “Farris teaches a domain name
booking system that includes both reservation and registration components (col. 31, lines
10-37) and the use of a password (col. 28, lines 7-27).” Based upon the teachings of
Farris, the examiner concludes (answer, page 4) “[i]t would have been obvious to one of
ordinary skill in the Computer Networking art at the time of the invention to combine the
teachings of Broadhurst regarding the registration of domain names with the teachings of
Farris regarding a domain booking system with both reservation and registration
components because certain commercial entities may have rights to domain names that
bear their trademarks (Farris, col. 31, lines 10-37).”
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Appeal No. 2006-0719
Application No. 09/526,735

In response to appellants’ argument (brief, page 8) that the referenced portions of
Farris do not disclose a domain name booking system that includes both reservation and
registration components, the examiner states (answer, page 7) that “the cited portion of
Ferris [sic, Farris] is relied upon to show that a domain name can be implicitly reserved
without necessarily being registered.”
We find that Farris teaches the use of a password to gain access to the Internet
(column 28, lines 7 through 27). On the other hand, Farris is completely silent as to any
form of domain name reservation system. We agree with the appellants’ argument (reply
brief, page 2) that:
The InterNic Policy is not a disclosure that a
domain name is “implicitly reserved” for the trademark
owner as asserted by the Examiner. In fact, the policy does
not even indicate that the domain name will be set aside for
the trademark owner, but instead that the domain name will
be withdrawn from the domain name owner upon receipt of
a court order. Further, the InterNic Policy does not disclose
“presenting an option to book a domain name to a
customer, the option to book the domain name including an
option to reserve the domain name and an option to register
the domain name” as required by the claims on appeal.

Even if we assume for the sake of argument that a domain name is somehow implicitly
reserved for the trademark owner described in Farris, we still find that the applied
references neither teach nor would have suggested to one of ordinary skill in the art the
specifically claimed steps for reserving the domain name. Accordingly, the obviousness
rejection of claims 15 through 35 is reversed.

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Appeal No. 2006-0719
Application No. 09/526,735

DECISION
The decision of the examiner rejecting claims 15 through 35 under 35 U.S.C.
§ 103(a) is reversed.
REVERSED

KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LANCE LEONARD BARRY ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
ALLEN R. MACDONALD )
Administrative Patent Judge )

KWH/dpv

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Appeal No. 2006-0719
Application No. 09/526,735

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