Ex Parte Hamilton et al

Patent Trial and Appeal Board

Jun 16, 2014

11208106 (P.T.A.B. Jun. 16, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte MICHAEL HAMILTON, WALTER E. BOLAND,
and GLENN RICART
________________

Appeal 2012-004206
Application 11/208,106
Technology Center 2400
________________

Before: MICHAEL L. HOELTER, JILL D. HILL, and
THOMAS F. SMEGAL, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a
rejection of claims 89–114. App. Br. 1. Claims 1–88 have been cancelled.
App. Br. 10, Claims App’x. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

THE CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to the capabilities of systems and
methods which route messages in the form of email, live voice connections,
voice recordings, video, and faxes, and the invention relates more
particularly to the use of existing telephone or fax numbers as email
Appeal 2012-004206
Application 11/208,106
2

addresses.” Spec. 2:9–12. Independent claim 89 is illustrative of the claims
on appeal and is reproduced below:
89. A method for routing a message, comprising the steps
of:
creating an email message which includes at least a
destination address and message content, wherein the
destination address includes a telecommunications number in
place of at least a conventional domain name, and a domain
name is used for routing the message, and the domain name is
derived from the telecommunications number, and the domain
name is free of periods; and
attempting to send the email message to a destination
identified using the destination address telecommunications
number and the derived domain name.

REFERENCES RELIED ON BY THE EXAMINER

Arnold US 5,787,172 Jul. 28, 1998
Yu US 5,930,804 Jul. 27, 1999
Agraharam US 5,987,508 Nov. 16, 1999
Levy US 5,995,961 Nov. 30, 1999
Budge US 6,014,689 Jan. 11, 2000
Low US 6,131,095 Oct. 10, 2000
Nicholls US 6,363,414 B1 Mar. 26, 2002
Kelly US 6,594,254 B1 Jul. 15, 2003

THE REJECTIONS ON APPEAL
Claims 89–97 are rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite for failing to particularly point out and distinctly claim
the subject matter which applicant regards as the invention. Ans. 4, 5.
Claims 89 and 98 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Agraharam and Low. Ans. 5.
Claims 90, 92–96, 99, 108, and 111–114 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Agraharam, Low, and Nicholls. Ans. 8.
Appeal 2012-004206
Application 11/208,106
3

Claims 100, 101, 109, and 110 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Agraharam, Low, Nicholls, and Arnold. Ans. 14.
Claim 102 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Agraharam, Low, and Kelly. Ans. 16.
Claims 104, 105, and 106 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Agraharam, Low, Nicholls, and Arnold. Ans. 17.
Claim 97 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Agraharam, Low, and Arnold. Ans. 18.
Claim 107 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Agraharam, Low, Nicholls, Arnold, and Yu. Ans. 18.
Claim 103 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Agraharam, Low, and Levy. Ans. 19.
Claim 91 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Agraharam, Low, and Budge. Ans. 20.

ANALYSIS
Appellants separate all the claims on appeal into three categories
based upon three different issues that are argued. App. Br. 5–8. We address
each category/issue separately.
The rejection of claims 89–97 under Section 112
The Examiner finds independent claim 89, and hence dependent
claims 90–97, to be indefinite because “it is unclear whether the domain
name defined in line 5 is a part of the destination address or not and it is
unclear whether the domain name is referring to the conventional domain
name previously defined or not. Furthermore, it is unclear how the domain
Appeal 2012-004206
Application 11/208,106
4

name used for routing can be free of periods.” Ans. 5. “Clarification is
requested.” Ans. 5.
Appellants accurately paraphrase the issues raised by the Examiner as
being
(i) whether the domain name defined in line 5 is part of the
destination address, (ii) whether the domain name is referring to
the conventional domain name previously defined, and (iii) how
the domain name used for routing can be free of periods
because “In the specification, the telephone number is
converted into a conventional email address which would
include periods.”
App. Br. 5.
Appellants address these issues and state
In short, the answers to the three questions posed are: (i)
yes, the domain name defined in line 5 is part of the destination
address, (ii) no, the destination domain name in line 5 is not the
conventional domain name — it is “in place of” that
conventional domain name, and (iii) the domain name used for
routing can be free of periods because even though periods are
often used they are nonetheless optional in domain names.
Also, the domain name is only part of the email address, and
periods are also optional in email addresses.
App. Br. 6.
In view of these answers provided by Appellants, the Examiner offers
suggested claim language amendments as “[a]n example of language that
would properly include the domain name as part of the destination address”
in an effort to resolve the Examiner’s indefiniteness concerns. Ans. 21.
Appellants, on the other hand, “appreciate the Examiner's proposal of an
amendment, even at this advanced stage of the examination. However,
Applicants maintain that the claim language is unambiguous to one of skill
in the art.” Reply Br. 3. In short, Appellants do not amend the claim
Appeal 2012-004206
Application 11/208,106
5

language in an attempt to resolve the matter and instead believe the language
is acceptable as is.
However, the Examiner, in offering the exemplary language, finds
that “even when the above-mentioned ambiguity is addressed, there will
then exist another 112 issue.” Ans. 22. Here, the Examiner specifically
addresses both the limitation regarding using a telecommunications number
in place of a conventional domain name and also the additional limitation
that “the domain name is derived from the telecommunications number.”
Ans. 22. The Examiner finds that as a result of these different limitations,
“[t]wo representations of the domain name would be present in the
destination address” and that “[a]t the very least there would be a lack of
support in the specification for this claim once the above-mentioned
ambiguity is addressed.” Ans. 22.
Appellants address the Examiner’s finding of a “lack of support in the
specification” by asserting that “[t]his is not a correct understanding of the
claim” and repeats one of the limitations raised by the Examiner. Reply Br.
3. However, Appellants fail to address the other limitation identified by the
Examiner and also where support for this limitation, as written, can be found
in Appellants’ Specification. Instead, Appellants point to “examples given
earlier” to indicate that a “single” domain name representation is apparent.
Other than asserting that “[t]his is not a correct understanding of the claim”
(Reply Br. 3), the question still remains as to why the Examiner’s finding
regarding two domain name representations (i.e., one being the number used
in lieu of the domain name and the other being a domain name derived from
the number) is an incorrect reading of this claim or, furthermore, where
“support in the specification” can be found for same. Appellants’ response
does not persuasively resolve the former nor address the latter.
Appeal 2012-004206
Application 11/208,106
6

We are instructed that “[w]here a claim lists elements separately, ‘the
clear implication of the claim language’ is that those elements are ‘distinct
component[s]’ of the patented invention.” Becton, Dickinson and Co. v.
Tyco Healthcare Gr., LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010). See also
CAE Screenplates, Inc. v. Heinrich Fiedler GmbH & Co., 224 F.3d 1308,
1317 (Fed. Cir. 2000) (“In the absence of any evidence to the contrary, we
must presume that the use of . . . different terms in the claims connotes
different meanings.”). Here, Appellants do not persuasively indicate how
the two limitations addressed by the Examiner supra are not separate
limitations referring to separate domain name representations but instead,
are directed to the same “single” representation.
Perhaps, however, even more telling regarding the matter as to
whether the claims are indefinite or not is the U.S. Supreme Court’s recent
ruling on this topic. See Nautilus, Inc. v. Biosig Insts., Inc. 134 S. Ct. 2120
(2014). Here, it was stated that “[i]n place of the ‘insolubly ambiguous’”
standard, we hold that a patent is invalid for indefiniteness if its claims, read
in light of the specification delineating the patent, and the prosecution
history, fail to inform, with reasonable certainty, those skilled in the art
about the scope of the invention” (Id. at 2124) and further that “[t]he
definiteness requirement, so understood, mandates clarity, while recognizing
that absolute precision is unattainable.” Id. at 2129. In the present matter,
we are not persuaded that one skilled in the art at the time of the invention,
and aware of the prosecution history, would understand, “with reasonable
certainty,” the scope of this claim.
In view of the above, we sustain the Examiner’s finding that claim 89
is, at a minimum, indefinite for failing to particularly point out and distinctly
claim the subject matter which Appellants regard as the invention. Ans. 5.
Appeal 2012-004206
Application 11/208,106
7

We sustain the Examiner’s rejection of claims 89–97 under 35 U.S.C. § 112,
second paragraph.

The rejection of claims 89–97 and 108–114 under 35 U.S.C. § 103:
Low Teaches Away
Appellants contend that all the rejections of these claims “rely on
some combination in which Low is said to teach a domain name that is free
of periods.” App. Br. 6. Here, the Examiner initially questioned “how the
domain name used for routing can be free of periods” (Ans. 5) but the
Examiner seems to have answered this question by subsequently finding that
Low teaches “that the terminal period in the namespace is optional.” Ans.
23 referencing Low 5:48–50. Furthermore, Appellants explain to the
Examiner that “to the best of the undersigned’s knowledge[,] periods are not
required for domain names to be converted to IP addresses.” App. Br. 5–6.
For support, Appellants reference “Internet Engineering Task Force
standards RFC-1123 and RFC-952” indicating that according to these
standards “a host domain name can include periods but is not required to
include periods.” App. Br. 6. The Examiner acknowledges same and
“take[s] this as an admission by Appellant[s] that domain names free of
periods, as claimed and described in the specification by Appellant[s], were
within the prior art at the time of invention.” Ans. 23–24. In short, the
Examiner finds that Low discloses that periods are optional and the
Examiner buttresses this finding by referencing the above identified
standards (and Appellants’ reliance thereon) which support this finding.
Ans. 23. Appellants “admit that RFC 1123 and RFC 952 allow the
possibility of domain names without periods. But this is not an admission
that the possibility was recognized as having any significance at the time of
Appeal 2012-004206
Application 11/208,106
8

invention, much less a broad admission that the claimed use of domain
names without periods was known.” Reply Br. 5. Appellants’ contention is
not persuasive as Appellants do not dispute that the indicated standards teach
that the use of domain names without periods was known and, as regarding
the claimed use and/or the recognition of same, the Examiner relies on Low
for this. Ans. 22–23. In short, Appellants’ contentions are not persuasive of
Examiner error in rejecting claims 89–97 and 108–114 based on the
Examiner’s finding that Low discloses that a domain name can be free of
periods.

The rejection of claims 98–107 under 35 U.S.C. § 103:
The cited combination fails to teach “Wholly Replacing”
Appellants contend that all the rejections of these claims “rely on
some combination in which Agraharam is said to teach a “destination
address including a telecommunications number wholly replacing a domain
name.” App. Br. 7. The Examiner also relies on Low for disclosing this
limitation. Ans. 24. In addition to disputing Agraharam’s teaching on this
point, Appellants contend that Low also fails to disclose this because Low
“only partially replaces a domain name.” App. Br. 8. Here, the Examiner
specifically identifies where Low “discloses a telecommunications number
wholly replacing a domain name.” Ans. 24 referencing Low 18:25.
Appellants contend that “Low Col. 18[,] line 25 could be understood to
disclose a telecommunications number wholly replacing a domain name only
if one considered periods to be part of a telecommunications number.”
Reply Br. 6. The issue here is not whether there are periods or not (see
discussion supra regarding the optional nature of periods in a domain name),
but whether Low discloses a “telecommunications number wholly replacing
Appeal 2012-004206
Application 11/208,106
9

a domain name.” App. Br. 7. The portion of Low referenced (i.e., Low
18:25) addresses forming “a domain name of 456987.1447.44.” It is noted
that Low presents this domain name as a UK telephone number where the
country code is “44,” the area code is “1447,” and the six digit local number
is “456987.” Low 18:22–24. Hence, we are not persuaded by Appellants’
contention that Low fails to teach the limitation of a destination address
“including a telecommunications number wholly replacing a domain name”
as recited in independent claim 98. In view of the record presented, we
sustain the Examiner’s rejection of claim 98 and dependent claims 99–107.

DECISION
The Examiner’s rejections of claims 89–114 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

hh