Ex Parte Taylor et al

Patent Trial and Appeal BoardFeb 7, 2019

14062503 (P.T.A.B. Feb. 7, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/062,503 10/24/2013 71867 7590 02/11/2019 BANNER & WITCOFF, LTD ATTORNEYS FOR CLIENT NUMBER 007412 1100 13th STREET, N.W. SUITE 1200 WASHINGTON, DC 20005-4051 FIRST NAMED INVENTOR Kevin Taylor 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. 007412.02558 8265 EXAMINER SHEPARD, JUSTINE ART UNIT PAPER NUMBER 2424 NOTIFICATION DATE DELIVERY MODE 02/11/2019 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): PTO-71867@bannerwitcoff.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KEVIN TAYLOR and RICHARD WOUNDY Appeal2018-006532 Application 14/062,503 Technology Center 2400 Before TERRENCE W. McMILLIN, KARA L. SZPONDOWSKI, and SCOTT B. HOWARD, Administrative Patent Judges. SZPONDOWSKI, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C Â§ 134(a) of the Examiner's Final Rejection of claims 1-20, constituting all claims currently pending in the application. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We REVERSE. Appeal2018-006532 Application 14/062,503 STATEMENT OF THE CASE Appellants' invention is directed to "a method and system for provisioning a set-top box (STB)." Spec. ,r 2. Claim 1, reproduced below with the disputed limitations in italics, is representative of the claimed subject matter: 1. A method comprising: receiving a service request for a network device; determining an Internet Protocol (IP) address of the network device via a domain name system (DNS) lookup, wherein a device identifier of the network device is used as a DNS hostnamefor the DNS lookup; and transmitting a configuration message compnsmg information for the service request to the IP address of the network device. REJECTIONS ON APPEAL Claims 1, 15, and 18 stand rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Peters (US 6,601,093 Bl; issued July 29, 2003) and Woundy (US 7,046,659 Bl; issued May 16, 2006). Claims 2--4 stand rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Peters, Woundy, and Harvey et al. (US 7,054,924 B 1; issued May 30, 2006) ("Harvey"). Claim 5 stands rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Peters, Woundy, and Zimmer et al. (US 2005/0149729 Al; published July 7, 2005) ("Zimmer"). Claims 6-8 and 10 stand rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Peters, Woundy, and Cloutier et al. (US 2004/0015405 Al; published Jan. 22, 2004) ("Cloutier"). 2 Appeal2018-006532 Application 14/062,503 Claim 9 stands rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Peters, Woundy, Cloutier, and Pugaczewski et al. (US 7,966,388 B 1; issued June 21, 2011) ("Pugaczewski"). Claims 11 and 19 stand rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Peters, Woundy, and Thomson (US 2003/0137415 Al; published July 24, 2003). Claim 12 stands rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Peters, Woundy, and Kim (US 7,376,964 Bl; issued May 20, 2008). Claims 13 and 14 stand rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Peters, Woundy, and Willis (US 6,389,453 Bl; issued May 14, 2002). Claim 16 stands rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Peters, Woundy, Harvey, and Pugaczewski. Claim 17 stands rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Peters, Woundy, Harvey, Pugaczewski, and Cloutier. Claim 20 stands rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Peters, Woundy, Cloutier, and Pugaczewski. ANALYSIS Issue: Did the Examiner err in finding that the combination of Peters and W oundy teaches or suggests "wherein a device identifier of the network device is used as a DNS hostname for the DNS lookup," as recited in independent claim 1 ( emphasis added) and commensurately recited in independent claims 15 ("wherein a media access control (MAC) address of the network device is used as a DNS hostname for the DNS lookup") and 18 3 Appeal2018-006532 Application 14/062,503 ("using a device identifier of the network device as a DNS hostname for the DNS lookup")? The Examiner relies on Woundy's associating the MAC address to a DNS hostname to teach using a device identifier as a DNS hostname for the DNS lookup, as claimed. See Ans. 3 (citing Woundy col. 8, 11. 10-23). According to the Examiner, Woundy teaches "a gateway that is assigned an IP address by instead using the MAC address as the DNS hostname lookup." Ans. 14 (citing Woundy col. 8, 11. 10-23). Appellants contend W oundy does not teach a device identifier that is used as a DNS hostname for the DNS lookup. App. Br. 4. Specifically, Appellants contend Woundy's MAC address of the residential gateway, as the claimed device identifier of the network device, only teaches configuring a DHCP server to associate the DNS hostnames with the MAC address, but not using the MAC address as a DNS hostname for the DNS lookup. App. Br. 4; see App. Br. 5. We are persuaded by Appellants' arguments. Regarding the relationship between a MAC address and DNS hostname, Woundy teaches "self-provisioning call agent 216 may configure DHCP server 224 to associate the DNS hostnames ... with the MAC address of residential gateway 202." Woundy col. 8, 11. 16-20. In other words, Woundy teaches associating a MAC address (i.e., device identifier) and a DNS hostname. However, Woundy does not teach using the MAC address (i.e., device identifier) as a DNS hostname/or DNS lookup, as claimed. Therefore, we find the Examiner has not provided sufficient findings that the combination of Peters' s assigning an IP address using the device's known hostname (see Peters col. 1, 11. 62---64) and Woundy's associating a MAC address with a 4 Appeal2018-006532 Application 14/062,503 DNS hostname teaches the claimed "device identifier of the network device [or 'media access control (MAC) address of the network device'] is used as a DNS hostname for the DNS lookup" ( emphasis added). Accordingly, we are constrained on the record before us to reverse the Examiner'sÂ§ 103(a) rejection of independent claim 1, along with the Â§ 103(a) rejection of independent claims 15 and 18, which recite limitations commensurate in scope to the disputed limitation discussed above. Because we agree with at least one of the arguments advanced by Appellants, we need not reach the merits of Appellants' other arguments. Moreover, because the Examiner has not shown that the additional references cure the foregoing deficiency, we do not sustain the obviousness rejections of dependent claims 2-14, 16, 17, 19, and 20. DECISION We reverse the Examiner's decision to reject claims 1-20. REVERSED 5