Ex Parte Ruiz et al

Board of Patent Appeals and Interferences

May 15, 2009

10407967 (B.P.A.I. May. 15, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte TIM RUIZ and ROBERT PARSONS
____________________

Appeal 2008-4504
Application 10/407,9671
Technology Center 2100
____________________

Decided2: May 15, 2009
____________________

Before: JAMES D. THOMAS, JAY P. LUCAS, and STEPHEN C. SIU,
Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed April 4, 2003. The real party in interest is Go Daddy
Group, Inc.

2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail date (paper delivery) or Notification Date (electronic Delivery).
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STATEMENT OF THE CASE
Appellants appeal from a final rejection of claims 1 to 11 under
authority of 35 U.S.C. § 134. The Board of Patent Appeals and Interferences
(BPAI) has jurisdiction under 35 U.S.C. § 6(b).
Appellants’ invention relates to an efficient system and process for
registering a new Internet domain name through a registrar. In the words of
the Appellants:
To continue to meet the demands of Customers 20 registering
domain names with a Registry 22, new systems and processes will be
needed to overcome the limitations of current methods. Thus, there
remains a need for systems and methods which reduce or eliminate
the problems associated with the conventional methods. Specifically,
there is a need for simplifying the process for checking the availability
of a domain name and the registration process of a domain name,
particularly for Customers 20 that register multiple domain names
over a single or multiple login sessions. There is also a need for a
system and process for increasing the efficiency of transferring data
from the Registrar 24 to one or more Registries 22. There is also a
need for being able to transfer sponsorship of a domain name from a
first Registrar to a second Registrar.

(Spec. 5, ll. 8-17).
The present invention allows a Customer to register a domain
name with an accredited Registry via an accredited Registrar's web
site. Zone files from the Registries may be downloaded, optimized
and stored in an internal database. As the Customer selects desired
domain names, their availability may be determined by searching the
internal database or, if needed, the authoritative Registry. The
Customer enters the Customer's information on a registration
application displayed as a single form on a single web page. The
Customer's information may be saved in a login account for use as
default Customer information at subsequent login sessions. The
available domain name, Customer information and an associated
status flag may be saved to an internal database. Software may be
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used to monitor the internal database and register all unregistered
domain names in the internal database to a Registry's SRS database.

(Spec. 26, Abstract).
Claims 1 and 4 are exemplary:
1. A registration system for registering a domain name via a
Registrar, comprising:
A) a web site for receiving a desired domain name;
B) a Zone File Server having a compressed Zone File Hash of
previously registered domain names;
C) a Hub Service in communication with a Registry; and
D) a Check Availability Service, wherein the Check Availability
Service is in communication with the web site for receiving the
desired domain name, the Check Availability Service is in
communication with the Zone File Server to determine if the
domain name is available, and the Check Availability Service is in
communication with the Hub Service to send the domain name to
the Registry for registration.

4. A registration system for registering a stream of unregistered
domain names via a Registrar, comprising:
A) an internal database of zone file data downloaded from a plurality
of Registries;
B) a web site for receiving a stream of desired domain names from a
plurality of Customers;
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C) a first automated process for determining the availability for each
domain name in the stream of desired domain names by
determining if each domain name is in the internal database and, if
not, determining if each of the domain names is registered with one
of the Registries; and
D) a second automated process for registering each of the domain
names determined to be available in the stream of desired domain
names with an appropriate Registry.

PRIOR ART
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Fellman 2002/0065903 A1 May 30, 2002
Gardos 6,745,248 B1 Jun. 1, 2004
Hickman 6,996,609 B2 Feb. 7, 2006

REJECTIONS
The Examiner rejects the claims as follows:
R1: Claims 1, 2, 4, 5, 8, 10, and 11 stand rejected under 35 U.S.C.
§ 103(a) for being obvious over Fellman in view of Gardos.
R2: Claims 3, 6, 7, and 9 stand rejected under 35 U.S.C. § 103(a)
for being obvious over Fellman in view of Gardos further in view of
Hickman.

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Groups of Claims:
Claims will be discussed in the order of the arguments in the Appeal
Brief.
Appellants contend that the claimed subject matter is not rendered
obvious by Fellman, Gardos or Hickman for failure of the references to
teach the claimed limitations. The Examiner contends that each of the
claims is properly rejected.
Rather than repeat the arguments of Appellants or the Examiner, we
make reference to the Briefs and the Answer for their respective details.
Only those arguments actually made by Appellants have been considered in
this opinion. Arguments which Appellants could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.

We affirm the rejections.
ISSUE
The issue is whether Appellants have shown that the Examiner erred
in rejecting the claims under 35 U.S.C. § 103(a). The issue turns on whether
each of the claimed elements, especially the compressed Zone File Hash of
previously registered domain names, is taught in the cited prior art.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
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1. Appellants have invented a system for examining registries to determine
whether a potential name for an Internet domain has been previously
registered, and if not, registering it. (Spec. 5, ll. 20-25).
2. Appellants’ preferred searching method involves downloading the list of
already registered names from the official registries of domain names to a
zone file server in a form called a Zone File Hash. (Spec 10, ll. 3-15). If
a desired new name is in the Zone File Hash, it is assumed to be taken
and considered not available. (Spec. 10, l. 31 to 11, l. 1).
3. Appellants’ system includes a Hub Services module, to connect the
system to the various registries of the Internet. (Spec. 11, ll. 13-15). A
secure SSL channel is used for this connection. (Id.).
4. The Gardos patent reference teaches downloading a root zone file from
the official Internet domain name registries. (Col. 4, l. 15). The root
zone file, stored on a local server, is searched for domain names
antecedent to granting a name to a user. (Col. 4, ll. 30-35).
5. The Fellman patent teaches searching the registry database directly for a
domain name, anticipatory to registering that name, if new, in the
registry. (¶ [0007]). The contents of the registry are discussed. (Id.).

PRINCIPLES OF LAW
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
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(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).
“In reviewing the [E]xaminer’s decision on appeal, the Board must
necessarily weigh all of the evidence and argument.” In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992).
“What matters is the objective reach of the claim. If the claim extends
to what is obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 419 (2007). To be nonobvious, an improvement must be
“more than the predictable use of prior art elements according to their
established functions.” Id. at 417.
All of the disclosures in a reference must be evaluated for what they
fairly teach one of ordinary skill in the art. The use of patents as references
is not limited to what the patentees describe as their own inventions or to the
problems with which they are concerned. They are part of the literature of
the art, relevant for all they contain. In re Lemelson, 397 F.2d 1006, 1009
(CCPA 1968) (citing In re Boe, 355 F.2d 961, 965 (CCPA 1966)).

ANALYSIS
From our review of the administrative record, we find that Examiner
has presented a prima facie case for the rejections of Appellants’ claims
under 35 U.S.C. § 103. The prima facie case is presented on pages 3 to 18
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of the Examiner’s Answer. In opposition, Appellants present a number of
arguments.
Arguments with respect to the rejection
of claims 1, 2, 4, 5, 8, 10, and 11
under 35 U.S.C. § 103 [R1]
and
of claims 3, 6, 7, and 9
under 35 U.S.C. § 103 [R2]

Appellants’ first argument addresses the issue of the compressed Zone
File Hash, a limitation present in each of the independent claims 1, 8 and 10,
which Appellants state is not present in the references. (App. Br. 6, middle).
The Zone File is a listing in the registry of all the domain names that have
been previously registered. In considering a new name to be registered, the
invention searches for a previous listing of the same name. Its presence in
the list negates the ability of the candidate from getting a registration, as the
name is “taken.” (FF #2). The invention parses and downloads a
compressed version of the zone files to a local Zone File Server. The system
extracts the domain names and directly related information from the Zone
File, which leaves other non-domain name related information out of the
search process, speeding the search process. (Spec. 10, ll. 10-15).
The Examiner cites Gardos for teaching the claimed downloaded
compressed Zone File Hash of previously registered domain names.
(Answer 5, bottom). The Examiner explains that Gardos teaches
downloading the root zone file data, comprising the registered domain
names, each with a registrar and at least one domain name server. (Gardos,
col. 2, l. 65). The Appellants have described their compressing of the zone
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file as “parsing the zone file and extracting the domain names thereby
creating a compressed Zone File Hash.” (Spec. 10, ll. 12-13). As the
Examiner relates, the registry database normally contains much more
information than the domain names, including the name’s creation and
expiration date, its name servers and the name servers’ IP address. (Fellman,
¶ [0007]). Thus Gardos, in teaching that less than full information is
downloaded into his root zone file and stored on the local data server,
teaches the compressed file on the Zone File Server as claimed. Appellants
argue that this downloaded file has not been optimized for searching domain
names, as required in claim 2 (not in claim 1 as indicated in the Appeal
Brief). (App. Br. 8, bottom). However, the Examiner points out that the very
nature of the file (its reduced size, its reduced content) disclosed in Gardos
makes it optimized for searching, in the same way that Appellants disclose
optimizing their file. (Answer 23, bottom).
We are persuaded that reading the claims broadly but fairly, in light of
the Specification, the Examiner’s reasoning has not been shown to be
erroneous. Appellants have not established why the same optimization that
they use disqualifies the Gardos/Fellman teachings from meeting the claims.
We cannot say that the Examiner’s rejection is erroneous on this point.
Appellants next contend that Fellman fails to teach a Hub Service in
communication with a Registry, as claimed. (App. Br. 9, middle). In
representative claim 1, the only function listed for the Hub Service is the
sending of the domain name to the Registry for registration. For the reasons
stated by the Examiner, we do not find error in the application of Fellman to
teach the claimed Hub limitations. (Answer 24, bottom to 25, top).
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Appellants’ arguments concerning keeping open “one or more secure
connections” are not recited as limitations in representative claim 1. (App.
Br. 9, bottom). Nonetheless, Fellman teaches a secure SSL channel to the
registry, which forms a further teaching upon which to base this rejection.
We do not find Examiner’s error on this point.
Appellants next contend that the combination of Gardos and Fellman
fails to disclose a Check Availability Service in communication with the
other elements as claimed. (App. Br. 14, top). We find that the Examiner
has explained in detail how the references teach all of the connections
claimed for the Check Availability Service, and we do not find error in her
reading the references as expressed. (Answer 30-31). Appellants’
observation, “Gardos checks for search characteristics to find already-
registered domain names, not to determine if the subject domain name is
available” (App. Br. 15, bottom), is not convincing to distinguish the
reference. All cited references as well as the Appellants (see FF #2) use that
same methodology to determine the availability of the potential domain
name seeking registration. Appellants’ argument is thus not convincing.
Appellants’ arguments concerning claim 2 concerning the optimized
Zone File Hash have been discussed in detail with regard to claim 1. (App.
Br. 17, bottom). We do not find the Appellants’ arguments convincing of
error for the reasons cited above.
With regard to Appellants’ arguments concerning the rejection of
claim 3 (App. Br. 18, middle), we do not find that the Examiner has erred in
using the Hickman reference. The Hickman reference concerning the
NetPhonic Communications is strictly used as a teaching that it is old in the
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art to dedicate one web server per database. The claim calls for one hub
service dedicated to each data registry. In the context of Fellman and
Gardos teaching communications to the Top Level Domain (TLD) data
registries, the Hickman teaching of individual servers adds an important
piece of the prior art to meet the claim. We do not find error in the
Examiner’s application of that art. “Common sense teaches . . . that familiar
items may have obvious uses beyond their primary purposes, and in many
cases a person of ordinary skill will be able to fit the teachings of multiple
patents together like pieces of a puzzle.” KSR Int’l Co. v. Teleflex, Inc., 550
U.S. at 420.
With regard to claim 4, Appellants argue that “[w]hile Gardos
recognizes the existence of thirteen root servers (each of which contains the
same root zone file data), Gardos does not disclose ‘an internal database of
zone file data downloaded from a plurality of Registries.’” (App. Br. 19,
bottom) (underlining omitted). The Examiner points out that the claim does
not require that the zone file data received from each of the Registries must
be different, and thus, the Gardos teaching of retrieving data from the
thirteen root servers would render obvious the claim. (Answer 35, bottom to
36, top; Gardos, col. 1, l. 60). As the process in Gardos mentions the
thirteen authoritative files as the source of the downloads, we do not find
error in basing a rejection on obviousness over the use of a plurality of the
sources.
Also with regard to claim 4, Appellants argue that there is no teaching
of the two step process of searching the local database first (which database
has been downloaded from the authority daily), and if the “hit” is not found,
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determining if the requested domain name is on the Registry. (App. Br. 21,
middle). The Examiner points to the downloading of the Registry in Gardos,
with its inherent economies of speed and cost, and the more up-to-date
searching of the Registry itself taught by Fellman, and states that it would be
obvious to combine both teachings to get the advantages of both, to wit
search the cheaper method first, and if one does not get a “hit” then go to the
Registry. (Answer 9, middle). A closer review of Gardos shows that both
methods are actually taught by that reference alone (col. 4, ll. 27-35).
Gardos then states the speed and sophistication advantages of the download
method (col. 4, l. 38) but recognizes that the data is not up-to-date (col. 4, l.
24). Considering all these teachings, we do not consider it erroneous to find
that Gardos (and Fellman) provide sufficient teaching to render obvious the
claimed process.
Appellants’ arguments with regard to claims 5, 6, and 7 raise the same
issues discussed above (App. Br. 21-23), and are adequately treated in the
discussions of claims 2 and 3.
With regard to claim 8, Appellants raise similar issues to those of
claim 1, answered above. Appellants further contend that Fellman fails to
check the registry for those names not in a compressed Zone Hash File.
(App. Br. 24, middle). This issue is addressed just above with regard to
claim 4. The combination of Gardos’ teachings of searching the registry and
the downloaded file, and the advantages of each, were sufficient to support
the Examiner’s reasoning in the obviousness rejection. We do not find error
in the Examiner’s rejection.
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The Appellants independently argue dependent claim 11, contending
that “Gardos does not disclose ‘wherein the compressed Zone File Hash is
created by removing all non-domain name information in the plurality of
zone files.’” (App. Br. 25, bottom) (underlining omitted). We endorse and
adopt the Examiner’s explanation of the rejection of claim 11, as it is not in
error. (Answer 42, bottom to 43, bottom).
Finally, Appellants argue that the references are improperly
combined. (App. Br. 28-30). Gardos and Fellman both address the same
field of endeavor, registration of domain names on the internet, and address
the same problem, efficient remote registration. We find a practitioner in
this field would consider both pieces of art in addressing a challenge before
him or her. Hickman is cited to show that a certain connection of hubs and
databases is old in the art. We find that teaching relevant to the issue at
hand. Under the teachings of KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
we conclude that the references are properly combined.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner did not err in rejecting claims 1 to 11 (R1, R2).

DECISION
The Examiner's rejection of claims 1 to 11 is Affirmed.

AFFIRMED
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GO DADDY GROUP, INC.
14455 NORTH HAYDEN ROAD
SUITE 219
SCOTTSDALE AZ 85260