Ex Parte Adelman et al

Patent Trial and Appeal Board

Nov 29, 2012

10976834 (P.T.A.B. Nov. 29, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte WARREN ADELMAN and MICHAEL CHADWICK
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Appeal 2010-007623
Application 10/976,834
Technology Center 2100
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Before ERIC B. CHEN, BRYAN F. MOORE, and LARRY J. HUME,
Administrative Patent Judges.

MOORE, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-46, all the claims pending in the application. App.
Br. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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INVENTION
The invention is directed to tracking domain name related reputations,
such as reputations of domain names, reputations of domain name
registrants, and reputations of email addresses. See Spec. ¶ [0004].
Claims 1 and 19 are exemplary of the invention and reproduced
below:
1. A method, comprising the step of:
a) publishing a domain name related reputation data in a WHOIS
records via a computer network.
19. A method for publishing domain name related reputation data in
WHOIS records,
comprising the steps of:
a) collecting a domain name related information,
b) forming a domain name related reputation data, and
c) storing said data in a WHOIS records.

REFERENCES
Monroe US 2002/0026439 A1 Feb. 28, 2003
Acharya US 2005/0071741 A1 Mar. 31, 2005
Shraim US 2005/0257261 A1 Nov. 17, 2005
Rowan US 2006/0015722 A1 Jan. 19, 2006

REJECTIONS AT ISSUE
Claims 1, 2, 5, 7, 8, 11, 15-17, 19, 20, 23, 25, 26, 29, 33-35, 37, and
38 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Monroe and Acharya. Ans. 4-8.
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Claims 3, 4, 12, 14, 21, 22, 30, 32 and 40 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over the combination of Monroe,
Acharya, and Rowan. Ans. 9-10.
Claim 6, 9, 10, 13, 18, 24, 27, 28, 31, 36, 39, and 41-46 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Monroe, Acharya, and Shraim. Ans. 10-13.

ISSUES
1. Did the Examiner err in combining Monroe and Acharya and
finding that the combination teaches or suggests the following
limitations in claim 1:
a. “domain name related reputation data”; and
b. “publishing a domain name related reputation data in a
WHOIS records”?
2. Did the Examiner err in finding that Monroe and Acharya
disclose the following limitations in claim 19:
a. “collecting a domain name related information”;
b. “forming a domain name related reputation data”; and
c. “storing said [domain name related reputation] data in a
WHOIS records”?
3. Did the Examiner err in finding that Monroe and Acharya
disclose the following limitation in claim 37: “obtaining a
domain name related reputation data from a WHOIS records”?
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ANALYSIS
35 U.S.C. § 103(a) – Monroe and Acharya
Claims 1, 2, 5, 7, 8, 11, 15-17, 19, 20, 23, 25, 26, 29, 33-35, 37, and 38
Claim 1
Appellants present arguments with respect to claims 1 and 37.
Claim 1 recites “domain name related reputation data.” Appellants argue
that Monroe and Acharya do not disclose this limitation. App. Br. 5.
Specifically, Appellants argue that “[t]he data in Monroe is different from
the data in Acharya. The data in Monroe is the traditional WHOIS data.
And the data in Acharya is ‘a score . . . based . . . on information relating to a
legitimacy of a domain,’ which can be generated or altered by a search
engine.” Id. (emphases omitted). Thus, Appellants argue, the two types of
data are different and cannot be combined. Id. We are not persuaded by this
argument.
Appellants argue that domain related data is defined by the following
language in the Specification: “‘domain name related reputation data may
include one or more values, ratings, or scores per a domain name. The data
may further include links or references to the locations (typically on the
network) where such values, ratings, or scores may be found.’” App. Br. 5
(quoting Spec. ¶ [0049]). However, this is permissive language regarding
what domain name related data may be. Additionally, the importation of a
narrow embodiment into the broader independent claim 1 is improper. See
SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir.
2004) (“For example, a particular embodiment appearing in the written
description may not be read into a claim when the claim language is broader
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than the embodiment.”). Therefore, we agree with the Examiner that
domain name related reputation data relates to reputation data generally
which encompasses “information regarding the legitimacy of the domain
names used to score the documents associated with these domain names.”
Ans. 13. This construction is consistent with the citation to the Specification
cited by Appellants.
Given the above construction, the combination of Monroe and
Acharya teaches domain name reputation data. Appellants admit Monroe
teaches traditional WHOIS data. See supra. Acharya teaches that
[i]nformation regarding the legitimacy of the domains may be
used by search engine 125 when scoring the documents
associated with these domains.
. . . . Valuable (legitimate) domains are often paid for
several years in advance, while doorway (illegitimate) domains
rarely are used for more than a year.
. . . .
In summary, search engine 125 may generate (or alter) a
score associated with a document based, at least in part, on
information relating to a legitimacy of a domain associated with
the document.
Acharya ¶¶ [0098], [0099], [0102]. Thus, Acharya teaches data related to
the reputation of a domain which is directly related to domain name data.
Therefore, we agree with the Examiner that the combination of Monroe and
Acharya teaches domain name related reputation data.
Claim 1 also recites “publishing a domain name related reputation
data in a [sic] WHOIS records.” Appellants argue that the combination of
Monroe and Acharya does not disclose that limitation. App. Br. 6. We
disagree. However, as noted above, the combination teaches domain name
related reputation data. Monroe teaches publishing domain name data in a
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WHOIS data (Monroe ¶ [0009]), therefore, we agree with the Examiner that
one of ordinary skill in the art at the time of the invention would publish
Acharya’s reputation data related to domain names in a WHOIS database as
taught by Monroe. See Ans. 13-14.
Further, we note the “domain name related reputation data” recited in
claim 1 does not affect any steps or structural limitations recited in the
method of claim 1. The domain name related reputation data is a non-
functional description of the data that is published by simply storing it as a
record. Therefore, the “domain name related reputation data” does not
distinguish the claim from the prior art in terms of patentability. See In re
Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004). Cf. In re Gulack, 703 F.2d
1381, 1385 (Fed. Cir. 1983). See also Ex parte Nehls, 88 USPQ2d 1883,
1887-90 (BPAI 2008) (precedential). Appellants’ contention that Acharya
does not describe domain name related reputation data is based on the
premise that the data of Acharya would not be published in WHOIS records.
App. Br. 6. Because we do not give patentable weight to the label “domain
name related reputation data,” we find that Appellants have not provided
persuasive evidence or argument to distinguish the claimed “domain name
related reputation data” from the data taught by Acharya.
Claim 19
Claim 19 recites “collecting a domain name related information.”
Appellants argue that Monroe teaches “track modifications to a registrar
database that includes information about domain names” (Monroe ¶ [0009]),
but collecting information is not the same as tracking modifications. App.
Br. 6. We disagree. Monroe stores the tracking information which is the
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same as collecting information (Monroe ¶ [0009]), thus Monroe teaches
“collecting a domain name related information.”
Claim 19 also recites “forming a domain name related reputation
data.” Appellants argue that although Acharya provides for scoring a
document, a “document” as defined by Acharya does not include a domain
name. App. Br. 6. We find that Acharya teaches that a document includes a
web page and a URL. Acharya ¶¶ [0011], [0020], [0133]. We agree with
the Examiner that “domain name” can be read broadly to encompass a web
page or URL. Therefore, we agree with the Examiner that Acharya suggests
“forming a domain name related reputation data.”
Appellants argue that the combination of Monroe and Acharya does
not teach “storing said [domain name related reputation] data in a WHOIS
records” based on the argument discussed above regarding whether the
combination teaches domain name related reputation data. App. Br. 6.
Therefore, for the reasons discussed above, we agree with the Examiner that
combination of Monroe and Acharya does not teach “storing said [domain
name related reputation] data in a WHOIS records.” Ans. 16-17.
Additionally, as noted above, collecting and storing non-functional
descriptive material. i.e., “domain name related reputation data,” does not
distinguish the claim from the prior art in terms of patentability.
Claim 37
Appellants argue that the combination of Monroe and Acharya does
not teach “obtaining a domain name related reputation data from a WHOIS
records” based on the argument discussed above regarding whether the
combination teaches domain name related reputation data. App. Br. 7.
Therefore, for the reasons discussed above, we agree with the Examiner that
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the combination of Monroe and Acharya does not teach “obtaining a domain
name related reputation data from a WHOIS records.” Ans. 17.
Additionally, as noted above, obtaining “domain name related
reputation data” does not distinguish the claim from the prior art in terms of
patentability.
Analogous Art
Appellants argue “Monroe (database synchronization) and Acharya
(web search engine) are non-analogous art, are from different fields of
endeavor, and are geared to solve different problems.” App. Br. 9
(emphases omitted). However, we find that Monroe and Acharya are
analogous art because they are from the same field of endeavor which is of
accessing or retrieving historical data (Ans. 17-18). See Comaper Corp. v.
Antec, Inc., 596 F.3d 1343, 1351 (Fed. Cir. 2010) (quoting In re Clay, 966
F.2d 656, 658-59 (Fed. Cir. 1992)). Thus, Appellants’ non-analogous art
argument is unpersuasive.
Motivation to Combine
Appellants argue that there is no motivation to combine Monroe and
Acharya. App. Br. 9. We find there is ample support for the Examiner’s
finding that “the motivation to combine the method of Monroe with the
teaching of Acharya is improving domain name data in the WHOIS database
with legitimate information.” Ans. 18. Thus, we find that the Examiner has
met his burden in establishing a prima facie case of unpatentability by
providing a reasoned statement with a rational underpinning for combining
the references in the manner suggested.

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DECISION
The Examiner’s decision to reject claims 1-46 is affirmed.
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).

AFFIRMED

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