Ex Parte Shuster

Patent Trials and Appeals Board

May 24, 2019

12814197 - (D) (P.T.A.B. May. 24, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/814,197 06/11/2010 Gary Stephen Shuster
35690 7590 05/29/2019
MEYERTONS, HOOD, KIVLIN, KOWERT & GOETZEL, P.C.
P.O. BOX 398
AUSTIN, TX 78767-0398
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.
6657-17003 8685
EXAMINER
TRAN, ELLEN C
ART UNIT PAPER NUMBER
2433
NOTIFICATION DATE DELIVERY MODE
05/29/2019 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):
patent_docketing@intprop.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GARY STEPHEN SHUSTER
Appeal2018-002353
Application 12/814, 197 1
Technology Center 2400
Before JASON V. MORGAN, NABEEL U. KHAN, and
KAMRAN JIVANI, Administrative Patent Judges.
KHAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-5, 7-9, 11-13, 15, and 17-20. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
1 Appellant identifies Intellectual Ventures I LLC as the real-party-in-
interest. App. Br. 2.
Appeal2018-002353
Application 12/814,197
BACKGROUND
THE INVENTION
Appellant describes the invention as follows:
A system and method is provided for using a DNS server
operating on a wide area network to enable an authorized
reception device to receive ( or be provided with) restricted
content data associated with a particular wide area network
address and redefine the domain name associated with a
particular wide area network address. In a preferred embodiment
of the present invention, an authorization application is adapted
to provide the reception device with user-verification data,
receive from the reception device verification data, and provide
the filtering application with authorization data. The filtering
application, which operates similarly to prior art DNS server
systems, is further adapted to receive filtered data (i.e.,
password-required data and/or pseudo-domain-name data) and
authorization data in order to provide an IP address of the content
server to the reception device via a wide area network, such as
the Internet.
Abstract.
Exemplary independent claim 1 is reproduced below.
1. A method, comprising:
storing, at a server computing system, a user-defined
translation that identifies 1) a domain name defined by a user and
2) a corresponding internet protocol (IP) address to which the
domain name is to be translated;
receiving, at the server computing system, a domain name
system (DNS) request from a remote computing system, wherein
the DNS request specifies a domain name for translation,
wherein the specified domain name is defined by a user of the
remote computing system;
determining, by the server computing system, that the
specified domain name is one that requires authorization before
translation of the specified domain name is performed; and
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Appeal2018-002353
Application 12/814,197
translating, at the server computing system, the specified
domain name to the corresponding IP address in accordance with
the stored user-defined translation.
REFERENCES AND REJECTIONS
1. Claims 1, 2, 4, 7, 9, 11-13, 17, and 20 stand rejected under 35
U.S.C. § I03(a) over Strentzsch (US 6,256,671 Bl, iss. July 3, 2001) and
Rangan (US 2002/0032782 Al, publ. Mar. 14, 2002). Final Act. 4--8.
2. Claims 3, 5, 8, 15, 18, and 19 stand rejected under 35 U.S.C.
§ I03(a) over Strentzsch, Rangan, and Sampson (US 6,339,423 Bl, iss. Jan.
15, 2002). Final Act. 8-9.
DISCUSSION
Appellant argues "[n] either Rangan nor the proposed combination
teaches or suggests 'a user-defined translation that identifies 1) a domain
name defined by a user and 2) a corresponding internet protocol (IP)
address to which the domain name is to be translated,' as recited in claim l"
App. Br. 9. Specifically Appellant argues "Rangan does not even include
the term 'IP address' or make reference to any IP address." App. Br. 10; see
also Reply Br. 4 ("the proposed combination cannot be said to teach or
suggest 'a user-defined translation that identifies ... 2) a corresponding
internet protocol (IP) address to which the domain name is to be
translated.'") Moreover, Appellant argues "modifying Rangan' s hyperlink
... to identify an IP address would forgo the need to use DNS at all." App.
Br. 10.
We are unpersuaded by Appellant's arguments. The Examiner finds
Strentzsch teaches mapping an IP address to a domain name. Final Act. 3, 4
(citing Strentzsch Abstract, 4:36-65, 7:10-33). Strentzsch teaches that when
a user requests access to a host system, Strentzsch's access management
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Application 12/814,197
logic checks its database to identify the host name referred to by the user's
request and maps that request to an IP address. Strentzsch 7:10-33. The
access management database includes a table that stores domain names and
their corresponding IP addresses. See Strentzsch 7:3---6; 33--49, Fig. 4. The
Examiner further finds Rangan allows for user defined URLs that are
translated to a corresponding IP address. Ans. 9. Thus, the combination of
Strentzsch and Rangan teach storing as user defined domain name and a
corresponding IP address. Appellant's argument unpersuasively attacks
Rangan separately and does not account for the Examiner's findings as a
whole.
Appellant also argues "[t] he proposed combination of Strentzsch and
Rangan would not 'stor[e] [Rangan 's hyperlink/webpage] at a server
computing system' and 'translat[e], at the [same] server computing system,
... to the corresponding IP address, 'as recited in claim l ." App. Br. 11.
Specifically, Appellant argues that the proposed combination of Strentzsch
and Rangan would involve two different servers performing the "storing"
and "translating" steps respectively. App. Br. 11. A web server would store
and serve Rangan's customizable page and a DNS server would handle any
translation. App. Br. 11. The claim, however, requires "the same 'server
computing system"' perform both steps.
We are unpersuaded by Appellant's argument. Appellant's argument
that the combination would necessarily result in having two servers
respectively perform the storing and translating steps interprets the
Examiner's findings too narrowly by requiring bodily incorporation of
Strentzsch into Rangan. "The test for obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
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Application 12/814,197
structure of the primary reference .... Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art." In re Keller, 642 F.2d 413,425 (CCPA 1981). The Examiner
finds that Rangan' s server can be used for other purposes, such as those
provided by Strentzsch's DNS server. Ans. 11 (citing Rangan ,r 9). Thus,
the Examiner correctly concludes that it would have been obvious that the
functionalities provided by Strentzsch-i.e., that of storing domain names
and their corresponding IP addresses----could have been incorporated into
Rangan's server (which provides user defined URLs), thus resulting in a
single server that provides both storing user defined URLs and translating
them into their corresponding IP addresses. 2
Accordingly, we sustain the Examiner's rejection of claim 1.
Appellant relies on the same arguments for all other pending claims, thus,
we sustain the Examiner's rejections of these claims as well. See App. Br. 9
and 12.
DECISION
The Examiner's rejections of claims 1-5, 7-9, 11-13, 15, and 17-20
are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended. See 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
2 The converse, incorporating Rangan's teaching of providing user defined
URL' s into Strentzsch' s DNS server so that a single server stores user
defined URLs and translates them into their corresponding IP addresses,
would have also been obvious to an artisan of ordinary skill.
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