Ex Parte Gloe

Board of Patent Appeals and Interferences

Nov 10, 2009

10279789 (B.P.A.I. Nov. 10, 2009)

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
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Decided: November 10, 2009
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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.

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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.
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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.
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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
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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.
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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).

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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

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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).

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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.
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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

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