Ex Parte Hiller

Board of Patent Appeals and Interferences

Oct 30, 2007

09457420 (B.P.A.I. Oct. 30, 2007)

The opinion in support of the decision being entered today is not binding
precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DEAN HILLER
____________

Appeal 2007-3224
Application 09/457,420
Technology Center 2100
____________

Decided: October 30, 2007
____________

Before KENNETH W. HAIRSTON, LEE E. BARRETT,
and ROBERT E. NAPPI, Administrative Patent Judges.
HAIRSTON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1 to 17. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

Appeal 2007-3224
Application 09/457,420

STATEMENT OF THE CASE
Appellant has invented a method and apparatus for processing an
Internet site name. In the processing of the Internet site name, a regular
expression stored at a Domain Name Server is retrieved, and a comparison
between a first Internet site name and the regular expression is performed at
the Domain Name Server to identify an Internet Protocol address for
multiple similar site names (Figure 2; Specification 6 and 7).
Claim 1 is representative of the claims on appeal, and it reads as
follows:
1. A method of processing an Internet site name comprising:
retrieving a regular expression stored at a Domain Name Server; and
performing a comparison between a first Internet site name and the
regular expression at the Domain Name Server to identify an Internet
Protocol address for multiple similar site names.
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Farber US 6,185,598 B1 Feb. 6, 2001
(filed Feb. 10, 1998)
Schneider US 6,338,082 B1 Jan. 8, 2002
(filed Mar. 22, 1999)
Jerger US 6,345,361 B1 Feb. 5, 2002
(filed Jul. 15, 1998)
The Examiner rejected claims 1 to 3 and 9 to 12 under 35 U.S.C.
§ 103(a) based upon the teachings of Farber and Jerger. The Examiner
rejected claims 4 to 8 and 13 to 17 under 35 U.S.C. § 103(a) based upon the
teachings of Farber, Jerger, and Schneider.

2
Appeal 2007-3224
Application 09/457,420

Appellant contends that the applied references, whether considered
separately or in combination, do not teach or suggest any of the features of
the claimed invention (Br. 7 and 8).

ISSUE
Does the applied prior art teach or would it have suggested to the
skilled artisan the features of the claimed invention?

FINDINGS OF FACT
As indicated supra, Appellant processes an Internet site name via the
steps of retrieving a regular expression stored at a Domain Name Server, and
then performing a comparison between a first Internet site name and the
regular expression at the Domain Name Server to identify an Internet
Protocol address for multiple similar site names.
Farber describes a method of selecting an alternate repeater/server to
process a client request for a resource (Figure 1; col. 2, ll. 54 to 60). The
network in Farber comprises a client 106, servers/repeaters 104a to 104c,
master repeater 104m, and a data server 112. A reflector 108 and an origin
server 102 that originates resources are included in the data server 112 (col.
4, ll. 14 to 41). A repeater/server acts as a dedicated proxy server that
maintains a partial or sparse mirror of the resources found in the origin
server 102 (col. 4, ll. 29 to 32). The reflector 108 functions to intercept
resource requests sent by client 106 to the origin server 102, and to select
one of the repeater/servers 104a to 104c to respond to the request for
resources (col. 5, ll. 3 to 17). As an example, the cache 110 in
repeater/server 104a is used to avoid unnecessary transactions with the
3
Appeal 2007-3224
Application 09/457,420

origin server 102 (col. 5, ll. 23 to 25). In an alternative embodiment that
does not use a reflector, the client 106 in Farber enters the URL for the
origin server 102, and the client’s browser uses a domain name server to
look up the network IP address of the origin server (col. 7, ll. 1 to 10). The
client’s browser then uses the origin server’s IP address to establish a
connection to the origin server 102 (col. 7, ll. 11 to 13). The client’s request
can then be responded to by the origin server (col. 7, ll. 14 to 21). In an
embodiment that uses the reflector 108, the resource identifier (URL) for a
request is looked up in a rule base table that contains a list of regular
expressions, and the URL is sequentially matched with each regular
expression to determine whether to service the request at the origin server
102 or send it to one of the repeater/servers 104a to 104c for service (col. 7,
l. 52 to col. 8, l. 22).
According to the Examiner, “Jerger discloses wildcard characters may
be used to specify multiple domain names, for instance the regular
expression ‘*.microsoft.com’ specifies all servers at the ‘Microsoft.com’
second level domain (col. 17, lines 50-67)” (Answer 4).
Schneider was relied on by the Examiner because he “discloses DNS
is implemented in a hierarchy of DNS servers (Unix machines running
Berkeley Internet Name Domain (BIND) software) and an application-layer
protocol that allows hosts and DNS servers to communicate in order to
provide the translation service (col. 3, lines 4-38 and col. 9, lines 45-56)”
(Answer 5).

4
Appeal 2007-3224
Application 09/457,420

PRINCIPLES OF LAW
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). The Examiner’s articulated reasoning in the rejection must
possess a rational underpinning to support the legal conclusion of
obviousness. In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed.
Cir. 2006).
“One cannot use hindsight reconstruction to pick and choose among
isolated disclosures in the prior art to deprecate the claimed invention.” In
re Fine, 837 F.2d 1071, 1075, 5 USPQ2d 1596, 1600 (Fed. Cir. 1988).
In an obviousness rejection, it is impermissible “to pick and choose
from any one reference only so much of it as will support a given position,
to the exclusion of other parts necessary to the full appreciation of what such
reference fairly suggests to one of ordinary skill in the art.” In re Wesslau,
353 F.2d 238, 241, 147 USPQ 391, 393 (CCPA 1965).

ANALYSIS
The Examiner contentions to the contrary notwithstanding (Answer
3), Farber retrieves a regular expression from a rule base table at the
reflector 108 in the Data Server 112, and not from a Domain Name Server as
set forth in the claims on appeal. Thereafter, Farber performs a sequential
comparison between the resource identifier (URL) for the request and each
of the regular expressions noted supra at the reflector 108 in the Data Server
112. Farber does not perform a comparison between a first Internet site
name and the regular expression at a Domain Name Server as required by
the claims on appeal. Jerger’s teaching of searching site names does not
5
Appeal 2007-3224
Application 09/457,420

cure the noted shortcomings in the teachings of Farber. The same holds true
for the teaching in Schneider of using BIND integrated into UNIX network
programs for use in storing and retrieving host names and addresses.

CONCLUSION OF LAW
In the obviousness rejection, the Examiner used impermissible
hindsight reconstruction to pick and choose among disclosures in the applied
prior art references. Obviousness has not been established by the Examiner
because the applied references neither teach nor would have suggested to the
skilled artisan the limitations set forth in the claims on appeal.

ORDER
The obviousness rejection of claims 1 to 17 is reversed.

REVERSED

KIS

KENYON & KENYON
333 W SAN CARLOS STREET
SUITE 600
SAN JOSE, CA 95110
6