Ex Parte GloeDownload PDFBoard of Patent Appeals and InterferencesNov 10, 200910279789 (B.P.A.I. Nov. 10, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte CHRISTOPHER THOMAS GLOE ____________ Appeal 2009-000137 Application 10/279,789 Technology Center 2400 ____________ Decided: November 10, 2009 ____________ Before JAMES D. THOMAS, JOHN A. JEFFERY, and THU A. DANG, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-40. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2009-000137 Application 10/279,789 2 STATEMENT OF THE CASE Appellant invented a method for maintaining Internet domain name data. Specifically, a host node connected to the Internet automatically generates (1) an Internet protocol (IP) address for itself, and (2) a request to a domain name server to update the domain name server’s database with the self-generated address.1 Claim 1 is illustrative with the key disputed limitation emphasized: 1. A method of maintaining Internet domain name data, comprising the steps of: automatically generating an IP address of a host node attached to the Internet, said step of automatically generating an IP address of a host node being performed automatically by said host node; defining an Internet domain name for said host node; automatically generating and transmitting a request to update domain name data relating to said host node, said domain name data residing in a first domain name server, said request being transmitted from said host node and addressed to said first domain name server, said request including said IP address generated by said automatically generating step; and automatically updating domain name data in said first domain name server responsive to receiving said request at said first domain name server, said automatically updating step associating said IP address generated by said automatically generating step with said Internet domain name for said host node. The Examiner relies on the following as evidence of unpatentability: Ford US 6,101,499 Aug. 8, 2000 Stanbach US 2002/0010794 A1 Jan. 24, 2002 1 See generally Abstract; Spec. 4-5. Appeal 2009-000137 Application 10/279,789 3 Farrow US 2002/0010767 A1 Jan. 24, 2002 Kabata US 2002/0046293 A1 Apr. 18, 2002 1. The Examiner rejected claims 1-3, 5, 6, 9-12, 14-19, 21, 22, 24-28, 30, and 31 under 35 U.S.C. § 103(a) as unpatentable over Kabata and Ford. Ans. 4-9. 2. The Examiner rejected claims 33-40 under 35 U.S.C. § 103(a) as unpatentable over Kabata and Stanbach. Ans. 12-15.2 3. The Examiner rejected claims 4, 7, 8, 20, and 29 under 35 U.S.C. § 103(a) as unpatentable over Kabata, Ford, and Stanbach. Ans. 10-12. 4. The Examiner rejected claims 13, 23, and 32 under 35 U.S.C. § 103(a) as unpatentable over Kabata, Ford, and Farrow. Ans. 16. Rather than repeat the arguments of Appellant or the Examiner, we refer to the Brief and the Answer3 for their respective details. In this decision, we have considered only those arguments actually made by Appellant. Arguments which Appellant could have made but did not make in the Brief have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii). 2 Although Appellant indicates in the Argument section of the Brief that claims 33-40 were rejected over Kabata, Ford, and Stanbach (Br. 13-15), Appellant nevertheless indicates in the Brief’s Grounds of Rejection section that these claims were rejected over Kabata and Stanbach (Br. 5)—a status that the Examiner confirms as correct (Ans. 3). Accord Ans. 12; Fin. Rej. 10. We therefore presume that the Examiner rejected claims 33-40 over Kabata and Stanbach. 3 Throughout this opinion, we refer to the Appeal Brief filed June 22, 2007 and the Examiner’s Answer mailed October 2, 2007. Appeal 2009-000137 Application 10/279,789 4 THE OBVIOUSNESS REJECTION OVER KABATA AND FORD The Examiner finds that Kabata discloses all recited steps of independent claim 1 except for the host node automatically generating its IP address as claimed. The Examiner, however, relies on Ford for this teaching in concluding that the claim would have been obvious. Ans. 4-6. Appellant argues that the cited prior art does not teach nor suggest that the host automatically generates and transmits a domain name request addressed to the domain name server as claimed. Br. 8-11. According to Appellant, Kabata’s client (host) does not send anything directly to the domain name server, but rather sends its preferred domain name and IP address to the web-on-demand (WOD) server which, in turn, generates and transmits a request to the domain name server for registration. Br. 11-13. As such, Appellant argues, it is the WOD server—not the client—that transmits the request to the domain name server. Id. The Examiner acknowledges that Kabata’s WOD server transmits the client’s IP address and host name to the DNS server, but nevertheless takes the position that claim 1 does not recite that the host automatically generate and transmit a domain request to the addressed domain name server. Ans. 17. As such, the Examiner reasons, Kabata teaches this disputed limitation. Id. The issue before us, then, is as follows: ISSUE Under § 103, has Appellant shown that the Examiner erred in rejecting claim 1 by finding that Kabata and Ford collectively teach or suggest automatically generating and transmitting a request to update Appeal 2009-000137 Application 10/279,789 5 domain name data related to a host node, where the request is (1) transmitted from the host node, and (2) addressed to a first domain name server, as claimed? FINDINGS OF FACT The record supports the following findings of fact (FF) by a preponderance of the evidence: Kabata 1. Kabata discloses a WOD system comprising (1) a WOD server 10 which monitors and controls the operation of each terminal and server; (2) a client terminal 40 that functions as a web server; (3) ISP 60; (4) DNS server 20; and (5) user terminal 50 which ultimately connects to the client terminal 40. Kabata, ¶¶ 0022-23; 0037; Fig. 1. 2. Client terminal 40 connects to the WOD system by first connecting to the ISP which assigns an IP address. Then, the operator inputs the URL of the WOD server 10 to the client terminal 40. The client terminal’s WOD client 42 then extracts a host name from this URL, and makes a request to DNS server 20 for conversion to an IP address. Kabata, ¶¶ 0031-32; Fig. 2. 3. In response, the DNS server returns the corresponding IP address which WOD client 42 uses to establish a connection to WOD server 10. Kabata, ¶ 0032; Fig. 2. 4. After the WOD server transmits a registration window to the client terminal 40, the client terminal transmits certain “client information” including the IP address to the WOD server. Kabata, ¶¶ 0026-27, 0032-33; Fig. 2. Appeal 2009-000137 Application 10/279,789 6 5. The client terminal’s IP address is automatically transmitted to the WOD server. Kabata, ¶ 0032. 6. The WOD server (1) receives the client information, and (2) transmits the host name and IP address in the client information to the DNS server 20 which registers this information in DNS 22. Kabata, ¶¶ 0024, 0026-27, 0033; Fig. 2. 7. User terminal 50 can then connect to the client terminal 40 using the procedure detailed in Figure 3. This connection is seen from user terminal 50 as a conventional web server connection. Kabata, ¶ 0037; Fig. 3. Ford 8. The Examiner’s findings regarding Ford’s teaching that a host node automatically generates its IP address (Ans. 5) are undisputed. See Br. 11. PRINCIPLES OF LAW 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 (Fed. Cir. 1988). If the Examiner’s burden is met, the burden then shifts to the Appellant 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 In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Appeal 2009-000137 Application 10/279,789 7 ANALYSIS Based on the record before us, we agree with Appellant that Kabata and Ford collectively fail to teach or suggest automatically generating and transmitting a request to update domain name data related to a host node, where the request is (1) transmitted from the host node, and (2) addressed to a first domain name server, as claimed. In Kabata, the client terminal (i.e., “host node”) connects to the WOD system by transmitting certain “client information” including the IP address to the WOD server. FF 4. Notably, it is the WOD server—not the client terminal—which then transmits the host name and IP address to the DNS server which registers this information in the DNS. FF 6. To be sure, the client terminal in Kabata automatically transmits its IP address to the WOD server (FF 5) and, as such, would reasonably correspond to an update request being transmitted automatically from the host node as claimed. But we still fail to see how this particular update request is also addressed to the first domain name server (i.e., the DNS server) as claimed. Rather, this request is addressed to the WOD server which, after receiving and processing this request, transmits the host name and IP address to the DNS server 20 for registration. See FF 6. The Examiner all but concedes this point. See Ans. 17 (acknowledging that the WOD server transmits the client’s IP address and host name to the DNS server for registration). Although Kabata’s WOD server essentially functions as an intermediary between the client terminal and the DNS server, the WOD server—not the DNS server—is the destination for the client server’s Appeal 2009-000137 Application 10/279,789 8 transmitted request. See FF 4-5. After receiving and processing the client terminal’s request, the WOD server effectively creates a new request that is transmitted to the DNS server. Although the client terminal’s IP address information is ultimately transmitted to the DNS server in Kabata (see FF 4-6), to assert that the client terminal’s initial request is somehow “addressed to” the DNS server when it was destined for the WOD server simply strains reasonable limits. That Kabata distinguishes this request from the client terminal’s initial WOD connection request that is, in fact, directed to the DNS server (FF 2) only bolsters this conclusion. And while the WOD server’s subsequent transmission would be addressed to the DNS server and contain IP address information derived from the client terminal’s initial request, it is nevertheless a different request than that sent from the client terminal. See id. We therefore find that Kabata fails to teach or suggest automatically generating and transmitting a request to update domain name data related to a host node, where the request is (1) transmitted from the host node, and (2) addressed to a first domain name server, as claimed. Since Ford does not cure the deficiencies of Kabata in this regard and was cited for a different reason (see FF 8), we cannot sustain the Examiner’s rejection of claim 1. Since we find that the prior art collectively does not teach or suggest the disputed limitations of claim 1, we need not address Appellant’s arguments pertaining to the alleged improper combinability of these references (Br. 16-17). Appeal 2009-000137 Application 10/279,789 9 For the foregoing reasons, Appellant has persuaded us of error in the Examiner’s rejection of independent claim 1 and independent claims 16 and 24 which recite commensurate limitations. Therefore, we will not sustain the Examiner’s rejection of those claims, and dependent claims 2, 3, 5, 6, 9-12, 14, 15, 17-19, 21, 22, 25-28, 30, and 31 for similar reasons. THE OBVIOUSNESS REJECTION OVER KABATA AND STANBACH We reach a similar conclusion regarding the Examiner’s rejection of independent claim 33 over Kabata and Stanbach (Ans. 12-13) which recites commensurate limitations. Our previous discussion applies equally here and we incorporate that discussion by reference. We add that the Examiner’s rejection is further problematic since, as we indicated previously,4 the Examiner did not rely on Ford in this rejection despite referring to Ford in the Response to Arguments section (Ans. 18). For the foregoing reasons, Appellant has persuaded us of error in the Examiner’s rejection of independent claim 33. Therefore, we will not sustain the Examiner’s rejection of that claim, and dependent claims 34-40 for similar reasons. OTHER OBVIOUSNESS REJECTIONS Regarding the obviousness rejections of claims 4, 7, 8, 20, and 29 over Kabata, Ford, and Stanbach (Ans. 10-12), and (2) claims 13, 23, and 32 over Kabata, Ford, and Farrow (Ans. 16), since we find that the cited 4 See n.2, supra, of this opinion. Appeal 2009-000137 Application 10/279,789 10 secondary references do not cure the deficiencies of Kabata noted above, we will not sustain the obviousness rejection of claims 4, 7, 8, 13, 20, 23, 29, and 32 for similar reasons. CONCLUSION Appellant has shown that the Examiner erred in rejecting claims 1-40 under § 103. ORDER The Examiner’s decision rejecting claims 1-40 is reversed. REVERSED pgc IBM CORPORATION ROCHESTER IP LAW DEPT. 917 3605 HIGHWAY 52 NORTH ROCHESTER, MN 55901-7829 Copy with citationCopy as parenthetical citation