Go Daddy Operating Company, LLC

Patent Trials and Appeals BoardMar 2, 2021

2019004347 (P.T.A.B. Mar. 2, 2021)

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. 15/078,912 03/23/2016 Arnold Neil Blinn 0523 (134140.01024) 9947 43699 7590 03/02/2021 Go Daddy Operating Company, LLC 14455 NORTH HAYDEN ROAD SUITE 219 SCOTTSDALE, AZ 85260 EXAMINER DESROSIERS, EVANS ART UNIT PAPER NUMBER 2491 NOTIFICATION DATE DELIVERY MODE 03/02/2021 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): inventions@godaddy.com pat-dept@quarles.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ARNOLD NEIL BLINN and CHRISTOPHER AMBLER Appeal 2019-004347 Application 15/078,912 Technology Center 2400 Before MAHSHID D. SAADAT, JENNIFER L. MCKEOWN, and JOYCE CRAIG, Administrative Patent Judges. SAADAT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–20, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Go Daddy Operating Company, LLC. Appeal Br. 1. Appeal 2019-004347 Application 15/078,912 2 CLAIMED SUBJECT MATTER The claimed invention “allows a Domain Name System (DNS) provider that is not the registrar of a domain name to update a Delegation Signer (DS) record, a Nameserver record, or other data stored in a DNS parent zone or at a registry.” Spec. ¶ 2. Claim 1 illustrates the claimed subject matter and reads as follows: 1. A method, comprising the steps of: receiving by a Domain Name System (DNS) provider comprising a nameserver a request for a domain name registered to a registrant to support Domain Name System Security Extensions (DNSSEC), wherein the DNS provider is not a registrar of the domain name; signing with a private key of the DNS provider an instruction to update a Delegation Signer (DS) record in a DNS parent zone controlled by a registry to enable the domain name to support DNSSEC; and transmitting by the DNS provider over an Application Programming Interface (API) the signed instruction to the registry, wherein the registry is configured to verify with a public key of the DNS provider the signed instruction and the registry is configured upon verifying the signature to update the DS record in the DNS parent zone to enable the domain name to support DNSSEC. Appeal Br. 14 (“CLAIMS APPENDIX”). REJECTION UNDER 35 U.S.C. § 102 Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis 1–20 102(a)(1) Smith (CA 2775560 A1; pub. Oct. 29, 2012) Appeal 2019-004347 Application 15/078,912 3 OPINION We have reviewed the Examiner’s rejections in light of Appellant’s arguments that the Examiner has erred. Appellant’s contentions we discuss below are dispositive as to the rejection on appeal. Therefore, Appellant’s other contentions are not discussed in detail herein. A.1. In rejecting claim 1, the Examiner finds that the claimed receiving step is taught by the portion of Smith in page 5, lines 10–13; the claimed signing step is taught by the portions of Smith in page 5, lines 14–16 and page 6, lines 15–17; and the claimed transmitting step is taught by the portions of Smith in page 5, line 31–page 6, line 2 and page 11, lines 1–8, and page 5, line 10. Final Act. 3–5; see also Ans. 4–7. A.2. Appellant contends that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 102 because: To put Smith and the present invention in context, Smith and the present invention are directed towards very different methods of enabling DNSSEC for domain names. Specifically, Smith teaches a method for a registry to enable DNSSEC for domain names by signing and incrementally publishing DNSSEC records. In contrast, the present invention is directed towards a method of a DNS provider (that is not the registrar of the domain name and thus in the prior art would not have the ability to change records at a registry for the domain name) sending a signed instructions to the registry to enable DNSSEC for the domain name. Appeal Br. 6. Appellant also argues that “these cites in Smith are of the registry signing a zone of domain names or DNSSEC records for a domain Appeal 2019-004347 Application 15/078,912 4 name with a private key of the registry or an authoritative server.” Appeal Br. 7. With respect to the signing entity, Appellant argues: The signing entity, i.e., the one doing the signing, in the cited sections in Smith is a registry. A registry, as is known in the art, is an entity responsible for maintaining a database of all registered domain names having a particular top-level domain. In contrast, the signing entity in the claims is a DNS provider. This may be confirmed as only the DNS provider would have the private key of the DNS provider. The signing entity cannot be the registry as the claims state the instructions are signed before being transmitted to the registry. The DNS provider as defined in the claims comprises a nameserver and is known in the art to be used by domain name registrants to associate the domain name registrant's domain name with a nameserver or an IP address. In the claimed method, the DNS provider is also able to enable DNSSEC, through communications with a registry, for the domain name. Appeal Br. 8. Similarly, Appellant distinguishes the registry or the authoritative server that provides the private key in Smith from that of the claims by stating: In Smith, the key used is either the private key of the registry (not explicitly stated in the cited sections of Smith, but would be generally understood) or the private key of an authoritative server (of the registry). In any event, Smith never teaches using a private key of the DNS provider to sign anything. The registry may use a public key of the DNS provider to verify the authenticity of a transmission (not actually stated in Smith), but the registry in Smith never signs anything using the private key of the DNS provider as stated in the claims. Appeal Br. 9. Appeal 2019-004347 Application 15/078,912 5 A.3. Based on our review of Smith’s disclosure, we agree with Appellant that Smith’s disclosure of registry signing and publishing DNSSEC records does not teach the claimed DNS provider, that is not a registrar of the domain names, sending a signed instruction to the registry to update the DS records in the DNS parent zone for the reasons provided by Appellant. See Appeal Br. 6–9. We do not agree with the Examiner that Smith discloses the above argued limitations of claim 1 based on the broadest reasonable interpretation of the claim terms. See Ans. 4, 11. We observe that the Examiner has not identified which claim limitations, even under a broader interpretation, would read on the Smith’s disclosure of a registry signing the records using a private key of the registry in the cited portions. In other words, the recited “wherein the DNS provider is not a registrar of the domain name,” even interpreted broadly, requires two different entities performing different functions. In particular, the Examiner’s assertions that “the registry signs the instructions for the DNS, inherently the DNS can perform the same action as needed” (see Ans. 10) or that “[a]s part of an individual transaction including the execution of the domain command, the registry may also sign DNSSEC records for the domain using a private key” (see Ans. 11) are not supported by evidence of record. Accordingly, we conclude that the Examiner erred in finding that the disclosure of Smith anticipates the subject matter of claim 1, independent claims 8 and 15 which recite similar limitations, or the remaining claims dependent therefrom. Appeal 2019-004347 Application 15/078,912 6 CONCLUSION Appellant’s contentions are persuasive of error in the Examiner’s rejection of claims 1–20 as being anticipated by Smith. We therefore do not sustain the rejection of claims 1–20 under 35 U.S.C. § 102. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–20 102 Smith 1–20 REVERSED