Ex Parte Ratica et al

Patent Trial and Appeal Board

Aug 8, 2017

13298811 (P.T.A.B. Aug. 8, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/298,811 11/17/2011 Adam Ratica PRAZ 200037US 01 1053
27885 7590
FAY SHARPE LLP
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115
EXAMINER
TRAN, TONGOC
ART UNIT PAPER NUMBER
2434
MAIL DATE DELIVERY MODE
08/08/2017 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ADAM RATICA, MATTHEW YUCHA, MARCUS
L. WEIDNER, ANDREW T. HEISS,
CHRISTOPHER A. BAIRD, and JOHN M. SCHICK IV
Appeal 2017-002124
Application 13/298,8111
Technology Center 2400
Before DENISE M. POTHIER, LARRY J. HUME, and
JOHN D. HAMANN, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Non-
Final Rejection of claims 1, 2, 4—15, and 17—20, which are all the claims
pending in the application. Appellants have canceled claims 3 and 16. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Cardinal Commerce
Corp. Br. 1.
Appeal 2017-002124
Application 13/298,811
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed embodiments and claimed invention "relate[]
generally to a system architecture for securing a data environment. It finds
particular application in conjunction with a cardholder data environment and
will be described with particular reference thereto . . . [but] the present
invention is also amenable to other types of data environments." Spec. 12.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphasis and labeling added to contested limitations):
1. A system of a first network, which is intermediate
a second network and a third network, for connecting a host of
the second network to a host of the third network, said system
comprising:
at least one processor programmed to:
[LI] receive a domain name system (DNS) request for a
hostname corresponding to the host of the third network from
the host of the second network,
allocate an internet protocol (IP) address of the first
network;
[L2] determine an IP address of the host of the third
network from the hostname by performing a DNS lookup of the
hostname with a DNS server of the third network,
2 Our decision relies upon Appellants' Appeal Brief ("Br.," filed
Feb. 1, 2016); Examiner's Answer ("Ans.," mailed Sept. 21, 2016); Non-
Final Office Action ("Non-Final Act.," mailed Dec. 30, 2014); and the
original Specification ("Spec.," filed Nov. 17, 2011). We note Appellants
did not file a Reply Brief in response to the factual findings and legal
conclusions in the Examiner's Answer.
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Application 13/298,811
map the allocated IP address to the determined IP
address;
and, return the allocated IP address to the host of the
second network in response to the DNS request.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Perry US 2003/0154306 A1 Aug. 14, 2003
Nguyen US 2003/0172145 A1 Sept. 11, 2003
Rejection on Appeal
Claims 1, 2, 4—15, and 17—20 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Nguyen and Perry. Ans. 2;
see also Non-Final Act. 5.
CLAIM GROUPING
Based on Appellants' arguments (Br. 5—7), we decide the appeal of the
obviousness rejection of claims 1, 2, 4—15, and 17—20 on the basis of
representative claim l.3
3 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 41.37(c)(l)(iv).
In addition, when Appellants do not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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Application 13/298,811
ISSUE
Appellants argue (Br. 5—6) the Examiner's rejection of claim 1 under
35 U.S.C. § 103(a) as being obvious over the combination of Nguyen and
Perry is in error. These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a system that includes "at least one processor programmed to,"
inter alia, "[LI] receive a domain name system (DNS) request for a
hostname corresponding to the host of the third network from the host of the
second network" and "[L2] determine an IP address of the host of the third
network from the hostname by performing a DNS lookup of the hostname
with a DNS server of the third network," as recited in claim 1?
ANALYSIS
In reaching our decision, we consider all evidence presented and all
arguments made by Appellants. We do not consider arguments that
Appellants could have made but chose not to make in the Brief, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
We disagree with Appellants' arguments with respect to claims 1, 2,
4—15, and 17—20 and, unless otherwise noted, we incorporate herein by
reference and adopt as our own: (1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken, and (2) the reasons
and rebuttals set forth in the Examiner's Answer in response to Appellants'
arguments. However, we highlight and address specific findings and
arguments regarding claim 1 for emphasis.
Appellants contend "neither Nguyen nor Perry discloses at least the
aforementioned feature[s in limitations LI and L2] of independent claim 1."
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Application 13/298,811
Br. 5. Appellants further allege Nguyen does not teach or suggest a first
network intermediate to second and third networks that receives a "request
for a hostname corresponding to the host of the third network from the host
of the second network," as recited in claim 1, and "Nguyen fails to teach that
the DNS server on the Internet sends a request for a hostname of a host on
either the services network or the internal networks." Br. 5—6. Appellants
also argue "Perry fails to cure this deficiency." Br. 6.
Moreover, Perry fails to disclose determining "an IP
address of the host of the third network from the hostname by
performing a DNS lookup of the hostname with a DNS server
of the third network." This is because, as discussed above, in
Perry, no request with a hostname is sent from a computer on
the Internet to be connected to a computer on the private
network (e.g. there is no "inbound" request). Therefore, because
Perry does not receive a request for a hostname of a host of the
third network, Perry does not teach using the hostname of a
host of the third network in "a DNS lookup of the hostname
with a DNS server of the third network."
Id.
The Examiner responds to Appellants' contention "that there is no
intermediate host acting between the second host and the third host" by
finding both Nguyen and Perry teach or suggest an intermediate host
between clients and services. Ans. 8—9. In particular, the Examiner finds
paragraph 902 of
Nguyen discloses "[domain name service (DNS) maps domain
names to host addresses for business and residential customers
as well as for clients on the Internet. In order for a client to
access any Internet service, an address for its server typically is
obtained through a DNS server. One function of DNS in an ISP
network is to provide a limited view of the ISP network so that
client are only allowed to access a small set of servers. Some
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ISPs may have a client DNS that reveals only a small number
of addresses, while an internal DNS provides mappings that
make all of the ISP's systems accessible to their staff."
Ans. 9.
In response to Appellants' argument that Perry does not teach or
suggest limitation L2 (Br. 6), the Examiner points out "Perry is introduced
for the purpose of supporting the claimed feature of Network Address
Translation method that protects] private IP during communication over the
Internet." Ans. 11.
Appellants' argument is not persuasive of Examiner error because it is
not responsive to the rejection as articulated by the Examiner which relied
upon the teachings and suggestions of Nguyen for both contested limitations
LI and L2. Non-obviousness cannot be established by attacking references
individually where, as here, the ground of unpatentability is based upon the
teachings of a combination of references. In re Keller, 642 F.2d 413, 426
(CCPA 1981). Here, the Examiner relies on Nguyen for teaching contested
limitations LI and L2, and cites Perry for a limitation not argued in the
Brief. Ans. 3; see also Non-Final Act. 5—6 (both citing Nguyen || 530, 581,
583, 902; Figs. 16 and 21).
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the combined teachings and
suggestions of the cited prior art combination to teach or suggest the
disputed limitation of claim 1, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of independent claim 1, and grouped
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Application 13/298,811
claims 2, 4—15, and 17—20, which fall therewith. See Claim Grouping
section, supra.
CONCLUSION
The Examiner did not err with respect to the obviousness rejection of
claims 1, 2, 4—15, and 17—20 under 35 U.S.C. § 103(a) over the cited prior
art combination of record, and we sustain the rejection.
DECISION
We affirm the Examiner's decision rejecting claims 1, 2, 4—15,
and 17—20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED
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