Ex Parte Monroe

Board of Patent Appeals and Interferences

Jul 24, 2008

09894904 (B.P.A.I. Jul. 24, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEVEN C. MONROE
____________

Appeal 2008-0845
Application 09/894,904
Technology Center 2100
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Decided: July 24, 2008
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Before JAMES D. THOMAS, JEAN R. HOMERE,
and STEPHEN C. SIU, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.

DECISION ON APPEAL
This is under 35 U.S.C. § 134(a) from the Examiner’s final rejection
of claims 21 through 50. We have jurisdiction under 35 U.S.C. § 6(b).

Appeal 2008-0845
Application 09/894,904

As best representative of the disclosed and claimed invention,
independent claim 21 is reproduced below:
21. A method for maintaining a whois database, comprising:

extracting a plurality of unique identifiers from an audit file, each
unique identifier corresponding to a modified or deleted domain name
record within a registrar database; and

for each unique identifier;

determining whether a first domain name record that corresponds to
the unique identifier exists within the registrar database,

if the first domain name record exists, retrieving the first domain
name record from the registrar database,

determining whether a second domain name record that corresponds
to the unique identifier exists within the whois database,

if the second domain name record exists, retrieving the second domain
name record from the whois database,

comparing the first domain name record to the second domain name
record, and

updating the second domain name record, within the whois database,
based on the first domain name record.

The following reference is relied on by the Examiner:
Schneider US 6,760,746 B1 Jul. 6, 2004
(filing date Aug. 31, 2000)

Claims 21 through 50 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Schneider.
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Appeal 2008-0845
Application 09/894,904

Rather than repeat the positions of the Appellant and the Examiner,
we refer to the Brief and Reply Brief for the Appellant’s positions and to the
Supplemental Answer filed on July 12, 2007, for the Examiner’s positions.

OPINION
We reverse.
Since we essentially agree with the views expressed by Appellant in
the Reply Brief, we reverse the rejection of all claims on appeal under
35 U.S.C. § 102. In a nutshell, we also agree with Appellant’s views that the
Domain Name Server system described in Schneider does not update the
domain name records in the manner claimed. The various portions of
Schneider’s patent that the Examiner relies on for the updating capability
merely provides IP address information associated with a host name. It is
difficult to find a clear correlation of a first and second domain name record
and the required function at the end of each independent claim on appeal of
updating a second domain name record in a so-called whois database based
on a first domain name record. Besides not indicating to the reader that a
web browser maintains either a registrar database or a whois database, the
Schneider patent does not indicate that the web browser itself may update a
domain name in any database, let alone a whois database. Like we believe
the ordinarily skilled artisan would consider, a mere list of URLs locally
stored within a web browser does not necessarily correlate to the claimed
whois database and the entry of a URL by a user is not a domain name
record stored in a registrar database.
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Appeal 2008-0845
Application 09/894,904

From our perspective, the correlations made by the Examiner in the
statement of the rejection portion of the Answer as well as the responsive
arguments portion are weak such as to be fairly characterized as stretching
the teachings of the reference beyond reasonableness in the art and even a
broadest reasonable interpretation of the claims mapped to Schneider.
Although the Examiner has pointed to portions of Schneider that relate to
identifiers, the updating capability that is ultimately the aim at the end of
each independent claim is based upon the use of an audit file with its
corresponding identifiers. The unique identifiers of the audit file are derived
from the registrar database as claimed and therefore provide a base for
retrieving corresponding information relating to first domain name records
in the same database as well as in the so-called whois database. Although
some comparisons may be performed within Schneider, they are not of the
type that are required by the independent claims on appeal, thus not yielding
the updating function at the end of these claims of updating a second domain
name record in a whois database based upon a first domain name record
implicitly within the registrar database.
Thus, we reverse the rejection of each independent claim 21, 31, and
41 and their respective dependent claims as being anticipated by Schneider.

NEW REJECTION UNDER 37 C.F.R. § 41.50(b)
Within the provisions of 37 C.F.R. § 41.50(b) we reject claims 21
through 40 as being directed to non-statutory subject matter within 35
U.S.C. § 101.
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Appeal 2008-0845
Application 09/894,904

As to independent method claim 21, besides being directed to
operations upon pure data structures per se as abstract concepts, the method
is not recited to be done in or by a machine or otherwise recite a machine or
computer implemented method, thus presenting a situation where a human
being may perform the method steps recited. If it may be fairly stated that
the method may produce a concrete, useful, and tangible result, the result is
still operations upon data constructs or data structures themselves. There is
no transformation of any underlying tangible subject matter to a different
state or thing. Note the reasoning in In re Comiskey 499 F.3d 1365, 1377-
79 (Fed. Cir. 2007). These considerations flow through to dependent claims
22 through 30.
In a corresponding manner, we reject the computer-readable medium
independent claim 31, which in essence recites the same methodology in
independent claim 21. The computer-readable medium is not positively
recited to be used or executed by the noted processor to perform a
methodology but merely that it is potentially “to be executed” by a
processor. Based on the discussion at Specification pages 20 and 21 in
paragraph [076], the claimed medium is disclosed to include transmission
media in the form of acoustic or light wave energies. The claim does not
positively recite an article of manufacture on which the method is to be
embodied. Note the reasoning in In re Nuijten, 500 F.3d 1346, 1359 ( Fed.
Cir. 2007). This reasoning is followed through with dependent claims 32
through 40.

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Appeal 2008-0845
Application 09/894,904

In summary, we have reversed the Examiner’s rejection of claims 21
through 50 under 35 U.S.C. § 102. Further, we have within 37 C.F.R.
§ 41.50(b) entered a new ground of rejection against claims 21 through 40 as
being directed to non-statutory subject matter.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (2007). 37 C.F.R. § 41.50(b) provides "[a] new ground
of rejection pursuant to this paragraph shall not be considered final for
judicial review." 37 C.F.R § 41.50(b) also provides that the Appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must
exercise one of the following two options with respect to the new ground of
rejection to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

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).

REVERSED
37 C.F.R. § 41.50(b)

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Appeal 2008-0845
Application 09/894,904

pgc

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