Ex Parte Ruiz

Patent Trial and Appeal Board

Mar 21, 2016

11160445 (P.T.A.B. Mar. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/160,445 0612312005
43699 7590 03/23/2016
Go Daddy Operating Company, LLC
14455 NORTH HAYDEN ROAD
SUITE 219
SCOTTSDALE, AZ 85260
FIRST NAMED INVENTOR
Tim Ruiz
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
0037 1444
EXAMINER
NGUYEN, STEVEN C
ART UNIT PAPER NUMBER
2443
NOTIFICATION DATE DELIVERY MODE
03/23/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
inventions@godaddy.com
pat-dept@quarles.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIM RUIZ 1
Appeal2014-005703
Application 11/160,445
Technology Center 2400
Before BRUCE R. WINSOR, ADAM J. PYONIN, and AMBER L. HAGY,
Administrative Patent Judges.
HAGY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1, 4--16, 19, 20, and 23. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 Appellant identifies The Go Daddy Group, Inc., as the real party in interest.
(App. Br. 1.)
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Application 11/160,445
Introduction
According to Appellant, "[t]he present invention relates in general to
accessibility of content associated with domain names on global computer
networks and in particular to accessibility of content associated with shared
domain names on the Internet." (Spec. i-f 5.)
Exemplary Claim
Claim 1, reproduced below with the disputed limitations italicized and
formatting added, is exemplary of the claimed subject matter:
1. A system, comprising one or more Routing DNS servers
connected to a computer network,
wherein said computer network having a first server
computer, connected to said computer network and assigned a
first server's network address,
wherein said first server computer is configured to host a
first content accessible by a first requester via a URL
containing a single shared domain name,
wherein said first requester is accessing said computer
network from a first requester's device and said first requester's
device is assigned a first requester's network address,
wherein said computer network having a second server
computer, connected to said computer network and assigned a
second server's network address,
wherein said second server computer is configured to
host a second content accessible by a second requester via said
URL containing said single shared domain name,
wherein said second requester is accessing said computer
network from a second requester's device and said second
requester's device is assigned a second requester's network
address,
wherein said one or more Routing DNS servers 1s
configured to accept a DNS request, to answer said DNS
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request, to determine said first requester's network address, to
determine said second requester's network address, to serve
said first requester's device with said first server's network
address if said first requester's network address corresponds to
a first set of one or more designated network addresses, and to
serve said second requester's device with said second server's
network address if said second requester's network address
corresponds to a second set of one or more designated network
addresses.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Ansell
Uysal
Kenner
US 6,151,631 Nov. 21, 2000
US 2004/0083307 Al Apr. 29, 2004
US 2005/0063401 Al Mar. 24, 2005
REJECTIONS2
Claims 1and4--14 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. (Final Act. 2-3.)
Claims 1, 4--9, 11-16, 19, and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Uysal and Kenner. (Final Act. 3-10.)
Claims 10 and 23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Uysal, Kenner, and Ansell. (Final Act. 11.)
2 Claims 2, 3, 17, 18, 21, and 22 were canceled in an amendment dated
September 23, 2010.
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ISSUES
( 1) Whether the Examiner erred in rejecting claims 1 and 4--14
under 35 U.S.C. § 101 as directed to non-statutory subject matter.
(2) Whether the Examiner erred in finding Uysal teaches or
suggests "one or more Routing DNS server," a "single shared domain
name," and "a first content [and] a second content," as recited in
independent claim 1 and commensurately recited in independent claims 15
and 19.
(3) Whether the Examiner erred in finding Uysal teaches or
suggests "wherein said one or more Routing DNS servers comprises a Root
DNS server," as recited in claim 4.
(4) Whether the Examiner erred in finding Uysal teaches or
suggests "wherein said one or more Routing DNS servers comprises a Top
Level DNS server," as recited in claim 5.
(5) Whether the Examiner erred in finding Uysal teaches or
suggests "wherein said first content is provided by a first content provider
and said second content is provided by a second content provider," as recited
in claim 7.
ANALYSIS
A. Rejection of Claims 1and4-14 under 35 U.S.C. § 101
In rejecting claims 1 and 4--14 under 35 U.S.C. § 101 as directed to
non-statutory subject matter, the Examiner finds:
Claim 1 does not fall into one of the four statutory classes of
invention. While the claim mentions "Routing DNS servers"
and "server computers," the specification does not define what
exactly entails a server. As defined by the "Authoritative
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Dictionary of IEEE Standards Terms" a server can include an
implementation of software. Therefore, there is no hardware
element evident in the claims.
(Final Act. 3.) Although we agree disembodied software is not patentable, 3
we agree with Appellant that the Examiner erred in finding "no hardware
element evident" in claim 1. Rather, we agree with Appellant that one of
ordinary skill in the art would view the "Routing DNS servers connected to
a computer networ~' of claim 1 as a hardware element. (App. Br. 6
(emphasis added).) Further, contrary to the Examiner's finding that the
Specification does not define what entails a "server," we note the
Specification consistently refers to the servers as "means for storing data
online (e.g. content of the webpages, files available for FTP, etc.)." (E.g.,
Spec. i-f 24 (emphasis added)).
For the foregoing reasons, we are persuaded of error in the
Examiner's 35 U.S.C. § 101 rejection of claims 1 and 4--14, and we do not
sustain that rejection.
B. Rejection of Claims 1, 4-16, 19, 20, and 23 under 35 U.S.C. § 103(a)
1. Claims 1, 6, 9-16, 19, 20, and 23
We have reviewed the Examiner's rejections of claims 1, 6, 9-16, 19,
and 23 in light of the Appellant's arguments the Examiner has erred. As to
those claims, we disagree with Appellant's conclusions and we adopt as our
3 "[I]nstructions, data, or information alone, absent a tangible medium, is
not a manufacture." See Allvoice Developments US, LLC v. Microsoft
Corp., 612 Fed. App'x 1009, 1018 (Fed. Cir. 2015) (nonprecedential) (citing
Digitech Image Techs., LLC v. Elecs. For Imaging, Inc., 758 F.3d 1344,
1349-50 (Fed. Cir. 2014)).
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own: ( 1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken (Final Act. 3-11) and (2) the reasons set
forth by the Examiner in the Examiner's Answer in response to Appellant's
Appeal Brief. (Ans. 14--18.) We concur with the conclusions reached by the
Examiner, and we highlight the following for emphasis.4
Appellant argues the Examiner's reliance on Uysal is in error because
"Uysal does not disclose 'Routing DNS servers,"' but instead discloses
"conventional DNS servers, and the conditional routing is achieved not by
the DNS servers but by 'the invention 203 [ ... ] located in front of the DNS
server 204. "' (App. Br. 7-8.) The Examiner finds, however, Uysal teaches
or suggests the claimed Routing DNS servers in the combination of "the
invention 203" ofUysal with one or more of the DNS servers also disclosed
in Uysal. (Ans. 15.) Referring to the example depicted in Figure 2 ofUysal,
the Examiner finds "[t]he invention 203 requires the usage of either DNS in
London or DNS in New York in order to correctly operate." (Ans. 15.) As
Uysal discloses, "every data packet sent to the DNS server 204 goes through
[invention 203]." (Uysal i-f 29.)
To the extent Appellant argues Uysal's disclosure of "the invention
203" working together with a DNS server cannot teach or suggest a
"Routing DNS server" as claimed, we disagree. Simply integrating known
components is generally insufficient to establish patentability. In re Larson,
340 F .2d 965, 968 (CCP A 1965) ("[T]he use of a one piece construction
instead of the structure disclosed in [the prior art] would be merely a matter
4 Only those arguments made by Appellant have been considered in this
decision. Arguments Appellant did not make in the briefs have not been
considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(vii)
(2009).
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of obvious engineering choice."). In addition, the disputed limitation is
tantamount to Uysal's system (including the invention 203 and DNS
server(s)), as Appellant's Specification describes "Routing DNS servers" in
terms of their function, not their structure, and does not constrain the scope
of the claims to require only a single structure to perform the function of the
Routing DNS servers.
Appellant further argues the Examiner's reliance on Uysal is in error
because "[w]hile Applicant's invention requires 'a single shared domain
name' for all DNS queries, Uysal discloses converting some of the DNS
queries to new domain and subdomains to achieve routing .... " (App. Br. 7
(emphasis added).) We disagree. As the Examiner correctly finds, from the
standpoint of the user, a single shared domain is used:
Paragraph 25 [of Uysal] states that the original DNS query
(from either the user in London or the user in New York) is
www.some-company.com. The user is requesting the same
domain name from either of the locations. The domain of the
request does not change until the invention 203 receives the
request and redirects the user to a mirror site that would be
closest to the user's location.
(Ans. 15 (emphasis added).)
Appellant further argues the Examiner's reliance on Uysal is in error
because Uysal does not teach or suggest "first content" and "second content"
that are "different," because "Uysal is only concerned with optimizing the
Internet traffic by mirroring the sites. The website contents disclosed in
Uysal are the same for all servers." (App. Br. 8.) Appellant's argument is
not persuasive because it is not commensurate with the scope of the claims.
See In re Self, 671F.2d1344, 1348 (CCPA 1982) ("[A]ppellant's arguments
fail from the outset because ... they are not based on limitations appearing
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in the claims."). In particular, we disagree that claim 1 requires the "first
content" and "second content" be different from each other. Although we
agree that use of the different terms presumes they have different meanings,
giving the terms "first content" and "second content" different meanings
does not require that the actual content they represent be different. Under a
broad but reasonable interpretation, "first content" and "second content"
may be distinguished based on the difference in their locations-that is,
hosted on a "first server" and a "second server," respectively, as recited in
claim 1. In addition, Appellant's reliance on disclosure in the Specification
describing serving Requesters "with different Contents" (Reply Br. 7) is not
persuasive because this argument is premised on reading a limitation from
the Specification into the claims. See E-Pass Techs., Inc. v. 3Com Corp.,
343 F.3d 1364, 1369 (Fed. Cir. 2003); In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993) (noting that, although the claims are interpreted in
light of the Specification, limitations from the Specification are not read into
the claims). Appellant has not pointed to disclosure in the Specification that
constrains the construction of "first content" and "second content" to require
they be different from each other.
We are also unpersuaded by Appellant's argument that the Examiner
was obligated, but failed, to expressly "discuss the field of invention of the
references" so as to establish that the cited "prior art references are
analogous." (App. Br. 9.) Appellant does not present any substantive
argument that the cited Uysal and Kenner references are not analogous;
rather, Appellant's argument is premised on the incorrect notion the
Examiner was required to make explicit the finding that the U syal and
Kenner references are analogous. We disagree, and note the Examiner's
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finding is at least implicit in the rejection. Moreover, the Examiner clarified
in the Answer that "the prior art references used to reject claim 1 are
analogous as they both deal with look up tables that determine IP addresses
with close delivery sites utilizing mirror servers." (Ans. 15-16.)
Appellant's contentions in the Reply Brief (Reply Br. 7-8) are, again,
premised on matters of form that we find unpersuasive and do not
substantively rebut the Examiner's finding.
Finally, we are also unpersuaded by Appellant's argument the
Examiner failed to provide a valid "motivation or suggestion to combine"
the cited references. We recognize the Examiner must articulate "reasoning
with some rational underpinning to support the legal conclusion of
obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). However,
the Examiner's reasoning need not appear in, nor be suggested by, one or
more of the references on which the Examiner relies upon. Instead, a reason
to combine teachings from the prior art "may be found in explicit or implicit
teachings within the references themselves, from the ordinary knowledge of
those skilled in the art, or from the nature of the problem to be solved."
WMS Gaming, Inc. v. Int'! Game Tech., 184 F.3d 1339, 1355 (Fed. Cir.
1999) (citing In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). "Under
the correct [obviousness] analysis, any need or problem known in the field
of endeavor at the time of invention and addressed by the patent can provide
a reason for combining the elements in the manner claimed." KSR Int 'l Co.
v. Teleflex Inc., 550 U.S. 398, 420 (2007).
In the instant appeal, the Examiner has provided a rationale
supporting motivation by a person of ordinary skill in the art to achieve the
claimed subject matter. (Final Act. 5-6.) Specifically, the Examiner finds
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"[t]he combination would have yielded nothing more than predictable results
to one of ordinary skill in the art at the time of the invention, for example, to
allow the client to be able to have an option as to what delivery site to
utilize." (Id.) Appellant has not provided persuasive evidence or a line of
reasoning explaining why such rationale is erroneous or why a person of
ordinary skill in the art would not have reached the conclusions reached by
the Examiner. See DyStar Textilfarben GmbH & Co. Deutschland KG v.
C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) ("[T]he proper
question is whether the ordinary artisan possesses knowledge and skills
rendering [them] capable of combining the prior art references."). At most,
Appellant has repeated arguments that fail for the reasons discussed above.
Consequently, we are not persuaded that the Examiner failed to articulate a
sufficient rationale for combining the teachings of the cited references.
We also unpersuaded by Appellant's argument "the Examiner's
combination produced an invention, which does not resemble the
Applicant's invention at all." (App. Br. 9.) As the Examiner correctly notes,
the fact that Appellant has recognized another advantage that would flow
naturally from following the suggestion of the prior art (i.e., providing
different content on different servers reachable through the same domain
name, as opposed to providing mirrored content on the different servers to
reduce latency) cannot be the basis for patentability when the differences
would otherwise be obvious. (Ans. 16.) See Ex parte Obiaya, 227 USPQ
58, 60 (BPAI 1985).
For the foregoing reasons, we are unpersuaded of error in the
Examiner's 35 U.S.C. § 103(a) rejection of claim 1 over the combination of
Uysal and Kenner, and we, therefore, sustain that rejection.
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Appellant collectively argues the rejection of claims 6, 9-16, 19, 20,
and 23 with regard to the Examiner's obviousness rejection of claim 1 under
35 U.S.C. § 103(a).5 Separate patentability is not argued for independent
claims 15 and 19 or dependent claims 6, 9-14, 16, 20, and 23. Therefore,
for the reasons set forth regarding claim 1, we also sustain the Examiner's
35 U.S.C. § 103(a) rejection of claims 6, 9-16, 19, 20, and 23.
2. Claims 4 and 56
Claim 4 depends from claim 3, and adds the limitation "said one or
more Routing DNS servers comprises a Root DNS server." (App. Br. 10.)
Claim 5 also depends from claim 3, and adds the limitation "wherein said
one or more Routing DNS servers comprises a Top Level DNS server." (Id.)
Appellant argues error in the rejection of claims 4 and 5 on the grounds that,
although Uysal discloses a "root DNS server" and a "top level DNS server,"
it does not disclose them as part of a Routing DNS server. (App. Br. 10;
Reply Br. 10-12.) These arguments fail for the same reasons given above
5 Appellant argues the Examiner asserted a new ground of rejection for
claims 10 and 23 by adding citation to the Ansell reference. (Reply Br. 3.)
Whether the Examiner improperly entered a new ground of rejection is a
petitionable matter. See 3 7 C.F .R. § 1.181 (a) (2009); see also MPEP
§§ 1002, 1207.03 (IV) (8th ed., Rev. 7, July 2008). That said, we note the
Examiner also cited the Ansell reference against claims 10 and 23 in the
Final Rejection. (Compare Final Act. 10-11 with Ans. 13-14.)
6 As noted, claims 4 and 5 each depend from claim 3, which has been
canceled in an Amendment dated September 23, 2010, in which the subject
matter of claim 3 was substantially incorporated into claim 1. The Examiner
has objected to claims 4 and 5 on the basis that they improperly depend from
a canceled claim. (Final Act. 2.) Appellant states the grounds for the
Examiner's objection "may be eliminated by the Examiner's amendment."
(App. Br. 2.) For purposes of Examination and on appeal, the Examiner and
Appellants treat claims 4 and 5 as if they depend from claim 1, and we do as
well.
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for claim 1, in which we agree with the Examiner's finding the claimed
"Routing DNS server" is taught or suggested by Uysal's disclosure of the
combination of "the invention 203" and a DNS server. (E.g., Ans. 15; Uysal
i-f 29.) This combination, per Uysal, further includes a root DNS server and a
top level domain server. (Uysal i-f 25; Ans. 8-9, 16-17.)
Therefore, for the foregoing reasons, we also sustain the Examiner's
35 U.S.C. § 103(a) rejection of claims 4 and 5.
3. Claims 7 and 8
Claim 7 depends from claim 1, and adds the limitation "wherein said
first content is provided by a first content provider and said second content is
provided by a second content provider." (App. Br. 11.)
We concur with Appellant's argument the Examiner erred in finding
Uysal teaches or suggests the limitation recited in claim 7. In particular, the
Examiner finds:
Paragraph 35 of Uysal states that a user 201 located in New
York will connect to the closer server site in DC 205 in order to
get the requested content. Similarly, the user located in
Frankfurt 207 chooses to connect to the server in London 206
due to [its] closer location to receive the requested content.
Therefore, a first content (located on server site in DC 205) is
provided by afirst content provider (server site in DC 205) and
a second content (located on server site in London 206) is
provided by a second content provider (server site in London
206).
(Ans. 17-18 (emphases added).) Thus, the Examiner reads "content
provider" on a server site. We disagree this interpretation is within the
broadest reasonable interpretation of this term, read in light of the
Specification. Rather, the Specification consistently describes a "Content
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Provider" as a party that places "multimedia information, i.e. text, graphics,
sounds, and other forms of data, at specific locations on the Internet referred
to as websites." (E.g., Spec. i-f 6; see also i-f 23 (referring to "Content
Providers" as "multiple parties sharing control or ownership of the domain
name. Typically, each Content Provider may produce content for online
resources targeting the audience located within the geographical area of
operation served by the Content Provider.").) As argued by Appellant
(Reply Br. 13), "Uysal's server 205 and server 206 are not content
providers; they are computer[ s] that host content created by the content
providers. In fact, the Examiner argued in rejection of claim[] 1 that Uysal's
server 205 and server 206 constitute [Appellant's] 'a first server computer'
and 'a second server computer."' Thus, we disagree with the Examiner's
finding that Uysal teaches or suggests "first content is provided by a first
content provider and said second content is provided by a second content
provider." The Examiner has not found any of the other references of record
teach this feature. Accordingly, we will not sustain the Examiner's
obviousness rejection of claim 7 or claim 8, which depends from claim 7.
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DECISION
The Examiner's 35 U.S.C. § 101 rejection of claims 1 and 4--14 is
reversed.
The Examiner's 35 U.S.C. § 103(a) rejection of claims 1, 4--6, 9-16,
19, 20, and 23 is affirmed.
The Examiner's 35 U.S.C. § 103(a) rejection of claims 7 and 8 is
reversed.
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).
AFFIRMED-IN-PART
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