Ex Parte Keohane et al

Board of Patent Appeals and Interferences

Jan 18, 2012

11138828 (B.P.A.I. Jan. 18, 2012)

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.

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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
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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.
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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
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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
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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

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