Ex Parte Schneider

Patent Trial and Appeal Board

Feb 5, 2015

10248068 (P.T.A.B. Feb. 5, 2015)

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.
10/248,068 12/13/2002 Eric Schneider 93776 5668
22242 7590 02/06/2015
FITCH EVEN TABIN & FLANNERY, LLP
120 SOUTH LASALLE STREET
SUITE 1600
CHICAGO, IL 60603-3406
EXAMINER
MIRZA, ADNAN M
ART UNIT PAPER NUMBER
2443
MAIL DATE DELIVERY MODE
02/06/2015 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 ERIC SCHNEIDER
____________

Appeal 2012-008244
Application 10/248,068
Technology Center 2400
____________

Before CARL W. WHITEHEAD JR., JEFFREY S. SMITH, and
STANLEY M. WEINBERG, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2012-008244
Application 10/248,068

2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 49–82, which are all the claims remaining in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

Representative Claim
Claim 49: A method for obtaining search results comprising:
one of receiving at least one keyword having an original form which
is not a domain name structure resolvable by a domain name server or
intercepting at least one keyword having an original form which is not a
domain name structure resolvable by a domain name server;
generating a domain name, adapted to be resolved by the domain
name server, having said original form of said at least one keyword as at
least a portion of said domain name;
accessing a network resource corresponding to said domain name by
resolving said domain name in the domain name server;
in response to accessing said network resource corresponding to said
domain name, extracting, at said network resource, said at least one keyword
from said domain name;
performing a search of content in a database based on said at least one
keyword extracted at said network resource; and,
obtaining at least one search result corresponding to said search.

Appeal 2012-008244
Application 10/248,068

3
Prior Art
Ebrahim US 6,154,777 Nov. 28, 2000
Tan US 6,314,469 B1 Nov. 6, 2001

Examiner’s Rejections
Claims 49–82 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Tan and Ebrahim.

ANALYSIS
Claim 49 recites “generating a domain name, adapted to by resolved
by the domain name server, having said original form of said at least one
keyword as at least a portion of said domain name.” The Examiner finds
that converting a domain name service request from Chinese encoding to
ASCII or another type of universal encoding as discussed in column 3 of
Tan teaches this limitation. Ans. 5. Appellant contends the Examiner
ignores the claim term “having said original form of said at least one
keyword as at least a portion of said domain name.” App. Br. 13–16. In
particular, Appellant contends Tan translates the Chinese representation of a
word to the ASCII representation without retaining any portion of the
original Chinese representation. App. Br. 14–15. On pages 14–16 of the
Answer, the Examiner explains how Tan teaches “generating a domain
name, adapted to be resolved by the domain name by resolving said domain
name in the domain name server.” However, Appellant contends the
Examiner still ignores the claim term “having said original form of said at
Appeal 2012-008244
Application 10/248,068

4
least one keyword as at least a portion of said domain name.” Reply Br. 6–
7.
We agree with Appellant. The Examiner has not explained how
converting a Chinese representation of a word into an ASCII representation
as taught by Tan teaches a domain name “generating a domain name,
adapted to be resolved by the domain name server, having said original form
of said at least one keyword as at least a portion of said domain name” as
recited in claim 49.
We do not sustain the rejection of claim 49 and corresponding
dependent claims 50–68 under 35 U.S.C. § 103. Claim 69 contains a
limitation similar to that recited in claim 49 for which the rejection fails. We
do not sustain the rejection of claim 69 and corresponding dependent claims
70–82 under 35 U.S.C. § 103.

DECISION
The rejection of claims 49–82 under 35 U.S.C. § 103(a) as
unpatentable over Tan and Ebrahim is reversed.

REVERSED
dw