Ex Parte Keohane et alDownload PDFBoard of Patent Appeals and InterferencesJan 18, 201211138828 (B.P.A.I. Jan. 18, 2012) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte SUSANN M. KEOHANE, GERALD F. MCBREARTY, SHAWN P. MULLEN, JESSICA MURILLO, and JOHNNY M. SHIEH ____________________ Appeal 2009-009209 Application 11/138,828 Technology Center 2100 ____________________ Before JOSEPH L. DIXON, JEAN R. HOMERE, and JAMES R. HUGHES, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal from the Examiner’s rejection of claims 1, 2, 4-10, and 12-20. Claims 3 and 11 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2009-009209 Application 11/138,828 2 Representative Claim 1. A method for determining multiple available domain names from a universal resource location (URL) entry comprising: responsive to detecting a URL entry from a browser comprising at least a portion of a domain name at a domain name system (DNS) resolver of a computer system, automatically selecting, by said DNS resolver, a plurality of possible domain names for at least said portion of said domain name, wherein each of said plurality of possible domain names comprises a separate one of a plurality of ending types; querying, by said DNS resolver at least one DNS server to resolve each of said plurality of possible domain names; detecting, by said DNS resolver from said at least one DNS server, a selection of said plurality of possible domain names each resolved with a separate associated network address within a network; and directing, from said DNS resolver to a browser, concurrent output of a separate selectable thumbnail representation of a separate web page accessible from each of said selection of said plurality of possible domain names within an interface of said browser, such that a user is enabled to quickly determine said selection of said plurality of possible domain names from entry of at least said portion of said domain name as said URL entry. Rejections on Appeal 1. The Examiner rejects claims 1, 2, 6-10, and 14-20 under 35 U.S.C. § 103(a) as being unpatentable over Westerdal (U.S. Pub. No.: US 2006/0031385 A1, Pub. Date: Feb. 9, 2006), Whois.Net (Whois.Net Domain-Based Research Services, available at Appeal 2009-009209 Application 11/138,828 3 http://web.archive.org/web/*/http://whois.net (last visited Jan. 18, 2008), and Brown (U.S. Patent No. : US 6,356,908 B1, filed July 30, 1999). 2. The Examiner rejects claims 4, 5, 12, and 13 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Westerdal, Whois.Net, Brown, and Broadhurst (U.S. Patent No. : US 6,560,634 B1, filed Aug. 13, 1998).1 ISSUE Does the Examiner err in concluding that the combination of Westerdal, Whois.Net, and Brown collectively would have taught or fairly suggested: directing, from said DNS resolver to a browser, concurrent output of a separate selectable thumbnail representation of a separate web page accessible from each of said selection of said plurality of possible domain names within an interface of said browser . . . from entry of at least said portion of said domain name as said URL entry. as recited in claim 1? ANALYSIS With respect to representative claim 1, we agree with Appellants that Westerdal, Whois.Net, and Brown collectively fail to teach or suggest directing output from a DNS resolver to a browser, the output comprising separate selectable thumbnail representations of a separate web pages accessible from a plurality of possible domain names provided responsive to the entry of a portion of a domain name. (App. Br. 14-22.) We do not agree 1 The Examiner improperly rejects claims 4, 5, 12, and 13 over Westerdal and Broadhurst (Ans. 12) – claims 4 and 5 depend on claim 1 and claims 12 and 13 depend on claim 9, which are rejected over Westerdal, Whois.Net, and Brown. Therefore, we consider claims 4, 5, 12, and 13 to be rejected over Westerdal, Whois.Net, Brown, and Broadhurst. Appeal 2009-009209 Application 11/138,828 4 that the Examiner has provided a sufficient explanation bridging the gaps among the disparate references. (Ans. 3-6, 14-16.) Although we agree with the Examiner’s findings – that Westerdal describes resolving multiple domain names (domain name endings) from a single host name, Whois.Net describes listing multiple domain names resulting from a partial domain name search, and Brown describes automatically generating thumbnails corresponding to web page links of a search result (of a search engine) – we do not agree that it would have been obvious to one of ordinary skill in the art to modify and combine the references as proposed by the Examiner. The differences among the references are simply too great given the Examiner’s sparse explanation. Specifically, Westerdal describes a reverse DNS system in a user computer that downloads zone files (additional domain name endings – e.g., .com, .net, .org) associated with a known host name (domain name or URL) and performs reverse DNS (resolves the domain names using the associated IP addresses) on the downloaded zones. Next, Westerdal’s system “crawls” (analyzes) identified websites to determine new hosts in different Top Level Domains (TLDs), indexes these host names, and resolves the IP address (i.e., performs forward DNS) of each host name. Finally, the system performs reverse DNS on the identified IP addresses. (See Westerdal, ¶¶ [0021]- [0025]; Fig.1.) Westerdal fails to even mention entering (inputting) a URL in a browser or outputting domain names to a browser. The Examiner relies on Whois.Net for this feature. Whois.Net, however, merely illustrates a list of domain names displayed in a browser. At most, Whois.Net teaches performing a search, at a website, of domain names based on an input of a partial domain name and displaying a resulting list of domain names in a Appeal 2009-009209 Application 11/138,828 5 browser window. (See Whois.Net, Figs. 2 & 3.) Whois.Net does not describe how the list of domains is determined (i.e., by a database search), nor does it describe determining the list of domains at a user computer and providing the list for display in a browser of the user computer – the determination is performed at the website not the user computer. The Examiner further relies on Brown to teach generating a web page thumbnail associated with a web page link. Brown, however, describes performing a search at a search engine web site and displaying results including a web page link and corresponding thumbnail. (See Brown, col. 1, l. 40 to col. 2, l. 10; Figs. 8-12.) The Examiner has not explained and it is not readily apparent how one of skill in the art would modify Westerdal to display a list of domain names, obtained during the intermediate step of reverse DNS at a user computer, in a browser window displayed by the user computer in view of Whois.Net – much less displaying a list of domain names and corresponding web page thumbnails in view of Whois.Net and Brown. Thus, we find no clear explanation, either in the references or the Examiner’s discussion of the rejection or responsive arguments, of directing the output of a DNS resolver on a user computer to a browser also on a user computer to display separate selectable thumbnail representations of a separate web pages accessible from a plurality of possible domain names provided responsive to the entry of a portion of a domain name. Consequently, we are constrained by the record before us to conclude that the combination of Westerdal, Whois.Net, and Brown would not have collectively taught or fairly suggested the disputed features as recited in Appeal 2009-009209 Application 11/138,828 6 Appellants’ claim 1. Therefore, the rejection of claim 1 fails to establish a prima facie case of obviousness. Appellants’ independent claims 9 and 17 include limitations of similar scope. Dependent claims 2 and 4-8 (dependent on claim 1), 10 and 12-16 (dependent on claim 9), and 18-20 (dependent on claim 17) stand with their respective base claims. Thus, based on the record before us and for the reasons set forth with respect to claim 1, we find that the Examiner erred in concluding the combination of Westerdal, Whois.Net, and Brown would have taught or suggested the disputed limitations recited in Appellants’ claims 2, 6-10, and 14-20. Broadhurst does not remedy the noted deficiencies of the Westerdal, Whois.Net, and Brown combination. Thus, we also find that the Examiner erred in concluding the combination of Westerdal, Whois.Net, Brown, and Broadhurst would have taught or suggested the disputed limitations recited in Appellants’ dependent claims 4, 5, 12, and 13. Accordingly, we reverse the Examiner’s obviousness rejections of claims 1, 2, 4-10, and 12-20. CONCLUSION OF LAW Appellant has shown that the Examiner erred in rejecting claims 1, 2, 4-10, and 12-20 under 35 U.S.C. § 103(a). DECISION We reverse the Examiner’s rejections of claims 1, 2, 4-10, and 12-20. REVERSED llw Copy with citationCopy as parenthetical citation