Ex Parte Adelman et al

Patent Trial and Appeal Board

Jun 16, 2014

11330772 (P.T.A.B. Jun. 16, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte WARREN ADELMAN and WAYNE THAYER
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Appeal 2012-002212
Application 11/330,772
Technology Center 2400
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Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-25. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM and enter a NEW GROUND OF REJECTION pursuant
to our authority under 37 C.F.R. § 41.50(b).1

1 Our decision will refer to Appellants’ Appeal Brief (“App. Br.,” filed
June 7, 2011) and Reply Brief (“Reply Br.,” filed October 4, 2011), and the
Examiner’s Answer (“Ans.,” mailed August 11, 2011).
Appeal 2012-002212
Application 11/330,772

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THE CLAIMED INVENTION
Appellants’ claimed invention “relates to methods for providing a
secure certificate, such as a Secure Socket Layer (SSL) certificate, which
cover two or more domain names having different top level domains”
(Spec., ¶ 3).
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. A method, comprising the steps of:
a Facilitator’s Computer Network registering a plurality
of domain names for a Subscriber;
the Facilitator’s Computer Network receiving a request
from the Subscriber for a secure certificate covering at least two
of the plurality of domain names, wherein at least two of the at
least two of the plurality of domain names have different top
level domains; and
the Facilitator’s Computer Network creating, signing,
and issuing the secure certificate, wherein the at least two of the
plurality of domain names are listed on the secure certificate.

THE REJECTION
The following rejection is before us for review:2
Claims 1-25 are rejected under 35 USC § 103(a) as unpatentable over
Trilli (US 2003/0028762 A1, pub. Feb. 6, 2003), Fellman (US 7,305,394 B2,
iss. Dec. 4, 2007), and Christensen (US 2002/0169842 A1, pub. Nov. 14,
2002).

2 The Examiner has withdrawn the rejection of claims 1-25 under 35 U.S.C.
§ 103(a) as being unpatentable over Trilli and Fellman (Ans. 4).
Appeal 2012-002212
Application 11/330,772

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ANALYSIS
Appellants argue independent claims 1, 5, 10, 15, and 21 as a group
(App. Br. 5-15 and Reply Br. 2-5). We select claim 1 as representative.
Claims 5, 10, 15, and 21 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(iv) (2011).
Appellants argue that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because the combination of Trilli, Fellman, and
Christensen fails to disclose or suggest a secure certificate covering multiple
domain names having different top level domains where the multiple domain
names are explicitly listed on the secure certificate, i.e., “a secure certificate
covering at least two . . . domain names, wherein at least two . . . domain
names have different top level domains; and . . . wherein the at least
two . . . domain names are listed on the secure certificate,” as recited in
claim 1 (App. Br. 5-15 and Reply Br. 2-5).
Appellants’ argument is not persuasive because the limitation of
claim 1 that Appellants argue is not disclosed in the prior art does not affect
the manner in which the claimed method is performed. The registration
process itself, including the steps of creating, signing, and issuing the secure
certificate, is performed in the same way regardless of whether the secure
certificate is being issued for domain names A and B or some other domain
names, e.g., B and C. The argued limitation, i.e., “wherein the at least two
of the plurality of domain names are listed on the secure certificate,” also
merely describes the informational content of the secure certificate, and is
not positively recited as altering or otherwise affecting the method steps. As
such, it constitutes non-functional descriptive material that may not be relied
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Application 11/330,772

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on to distinguish over the prior art for purposes of patentability.3 See In re
Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); cf. In re Gulack, 703 F.2d 1381,
1385 (Fed. Cir. 1983) (when descriptive material is not functionally related
to the substrate, the descriptive material will not distinguish the invention
from the prior art in terms of patentability).
Therefore, we sustain the Examiner’s rejection of claim 1 under 35
U.S.C. § 103(a). We also sustain the Examiner’s rejection of claims 5, 10,
15, and 21, which stand or fall with claim 1.
Claims 2-4, 6-9, 11-14, 16-20, and 22-25 depend from independent
claims 1, 5, 10, 15, and 21, respectively. Appellants do not present any
arguments for the separate patentability of these dependent claims except to
assert that the claims are allowable based on their dependence on
independent claims 1, 5, 10, 15, and 21 (App. Br. 16).

3 We agree with the Examiner that the remaining limitations of claim 1 are
disclosed by the combination of Trilli and Fellman, as set forth at pages 5-7
of the Answer.
Trilli discloses a shared hosting computer network in which a server
computer hosts a plurality of entity websites; a trusted third party issues a
SSL certificate to the owner/operator of the server computer, e.g., an Internet
service provider (“ISP”), and the certificate is shared with the multiple entity
websites through the use of tokens. Trilli describes that the ISP purchases a
number of tokens from the trusted third party based on the number of entity
websites that the ISP believes will want to purchase individualized
authenticity certifications. After passing certain authenticity checks, an
entity purchasing one or more tokens from the ISP has its website(s)
associated with, i.e., covered by, the SSL certificate. See, e.g., Trilli, ¶¶ 4,
22, 35, 37, 39, 40, 43, and 44.

Trilli does not explicitly disclose that the domain names have different top
level domains but Fellman discloses this feature. See, e.g., Fellman,
Abstract.
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Application 11/330,772

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We are not persuaded, for the reasons outlined above, that the
Examiner erred in rejecting the independent claims under 35 U.S.C.
§ 103(a). Therefore, we sustain the Examiner’s rejection of dependent
claims 2-4, 6-9, 11-14, 16-20, and 22-25 under 35 U.S.C. § 103(a).
Because our rationale differs from that set forth by the Examiner, we
denominate this a NEW GROUND OF REJECTION under 35 U.S.C.
§ 103(a). See 37 C.F.R. § 41.50(b).

DECISION
The Examiner’s rejection of claims 1-25 under 35 U.S.C. § 103(a) is
affirmed. Insofar as our rationale differs from that set forth by the
Examiner, we denominate this a NEW GROUND OF REJECTION.
37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection . . .
shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also
provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE
OF THE DECISION, must exercise one of the following two options with
respect to the new ground of rejection to avoid termination of the appeal as
to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the Examiner.
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record.
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).
Appeal 2012-002212
Application 11/330,772

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AFFIRMED; 37 C.F.R. § 41.50(b)

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