DETAILED ACTION
Claims 1-20 are pending in this application. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/10/2025 has been entered.
Response to Amendment
Applicant's amendment dated December 10, 2025 has been entered. Claims 1 and 10-20 have been amended.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Regarding claims 1-20, under Step 1, the claims recite a process, machine, manufacture, or composition of matter. Under Step 2A claims 1-20 recite a judicial exception (abstract idea) that is not integrated into a practical application and does not provide significantly more.
Under Step 2A (prong 1), and taking claim 1 as representative, claim 1 recites: A registrar system have at least one processor and at least one non-transitory computer storage medium, and communicatively connected by a network to a registration controller and a client device, the registrar system configured to: receive, from the client device, a first domain request, wherein the first domain request includes a request to register a domain name on behalf of at least one entity; send, electronically and via the network, to the registration controller, information associated with the first domain request, wherein the registration controller establishes one or more registration requirements for the first domain request based on one or more assessments associated with a domain name, wherein the one or more registration requirements is or are based at least in part on a parameter for one or more constituent strings of the domain name on the network; receive, electronically and via the network, from the registration controller, an offer to register the domain name, wherein the offer includes the one or more registration requirements; receive user input via the client device to accept or satisfy the one or more registration requirements for the first domain request for the at least one entity; and send, electronically and via the network, to the registration controller, positive feedback to the one or more registration requirements for the first domain request, wherein, after receipt of the positive feedback to the one or more registration requirements for the first domain request, the registration controller registers the domain name.
The above limitations that set forth a procedure for organizing human activity, such as by performing commercial interactions including marketing activity and business relations. This is because the claim recites the steps performed in order to establish and adjust registration requirements (Specification ¶0002). Accordingly, under step 2A (prong 1) the claim recites an abstract idea because the claim recites limitations that fall within the “Certain methods of organizing human activity” grouping of abstract ideas.
Under Step 2A (prong 2), the abstract idea is not integrated into a practical application. Claim 1 recites additional elements, including at least one processor, at least one non-transitory computer storage medium, a client device, a network, and a registration controller.
These additional elements are not sufficient to integrate the abstract idea into a practical application. This is because the additional elements of claim 1 are recited at a high level of generality (i.e. as generic computing hardware) such that they amount to nothing more than the mere instructions to implement or apply the abstract idea on generic computing hardware (or merely uses a computer as a tool to perform an abstract idea). Further, the additional elements do no more than generally link the use of a judicial exception to a particular technological environment or field of use (such as computers or computing networks).
Secondly, the additional elements are insufficient to integrate the abstract idea into a practical application because the claim fails to (i) reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field, (ii) implement the judicial exception with, or use the judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, (iii) effect a transformation or reduction of a particular article to a different state or thing, or (iv) apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment.
In view of the above, under Step 2A (prong 2), claim 1 does not integrate the recited exception into a practical application.
Under Step 2B, examiners should evaluate additional elements individually and in combination to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself). In this case, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Taken individually or as a whole the additional elements of claim 1 do not provide an inventive concept (i.e. they do not amount to “significantly more” than the exception itself). As discussed above with respect to the integration of the abstract idea into a practical application, the additional elements used to perform the claimed process amount to no more than the mere instructions to apply the exception using a generic computer and/or no more than a general link to a technological environment.
In view of the above, representative claim 1 does not provide an inventive concept (“significantly more”) under Step 2B, and is therefore ineligible for patenting.
Dependent claims 2-9 recite limitations which are similarly directed to and elaborate on the judicial exception (abstract idea) of claim 1. Thus, each of claims 2-9 are held to recite a judicial exception under Step 2A (prong 1) for at least similar reasons as discussed above.
Furthermore, claims 2-9 do not set forth further additional elements. Considered both individually and as a whole, claims 2-9 do not integrate the recited exception into a practical application for at least similar reasons as discussed above.
Lastly, under step 2B, dependent claims 2-9 do not provide an inventive concept (i.e. they do not amount to “significantly more” than the exception itself). This is again because the claims merely apply the exception on generic computing hardware, generally link the exception to a technological environment, and specified at a high level of generality.
Claims 10-20 are parallel, i.e. recite similar concepts and elements, to claims 1-9, analyzed above, and the same rationale is applied.
In view of the above, claims 1-20 do not provide an inventive concept (“significantly more”) under Step 2B, and are therefore ineligible for patenting.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Levac et al., US PG Pub 2015/0100507 A1 (hereafter “Levac”), previously cited, in view of Main et al., US PG Pub 2016/0301680 A1 (hereafter “Main”), previously cited, in further view of Nicks et al., US Patent 8,909,558 B1 (hereafter “Nicks”).
Regarding claim 1, Levac teaches a registrar system having at least one processor and at least one non-transitory computer storage medium, and communicatively connected by a network to a registration controller and a client device (¶¶0012-0014, 0027, and 0035), the registrar system configured to:
receive, from the client device, a first domain request, wherein the first domain request includes a request to register a domain name on behalf of at least one entity (¶¶0030-0035);
send, electronically and via the network, to the registration controller, information associated with the first domain request, wherein the registration controller establishes one or more registration requirements for the first domain request based on one or more assessments associated with a domain name (¶¶0026-0027 and 0051-0056);
receive, electronically and via the network, from the registration controller, an offer to register the domain name, wherein the offer includes the one or more registration requirements (¶¶0024 and 0042);
receive user input via the client device to accept or satisfy the one or more registration requirements for the first domain request for the at least one entity (¶¶0032-0036, 0042, 0047, and 0072).
Levac teaches registering the domain name (¶¶0023-0028) but does not teach to send, electronically and via the network, to the registration controller, positive feedback to the one or more registration requirements for the first domain request, wherein, after receipt of the positive feedback to the one or more registration requirements for the first domain request. Main teaches managed domains and configuration control including the known techniques to send, electronically and via the network, to the registration controller, positive feedback to the one or more registration requirements for the first domain request, wherein, after receipt of the positive feedback to the one or more registration requirements for the first domain request (¶¶0068-0080). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Levac, to include feedback as taught by Main, in order to “capture the interest of consumers,” as suggested by Main (¶0003).
Further, the claimed invention is merely a combination of old elements in a similar field of endeavor, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that, given the existing technical ability to combine the elements as evidenced by Main, the results of the combination were predictable.
Main does not teach wherein the one or more registration requirements is or are based at least in part on a parameter for one or more constituent strings of the domain name on the network. Nicks teaches appraising a domain name using keyword data including the known technique wherein the one or more registration requirements is or are based at least in part on a parameter for one or more constituent strings of the domain name on the network (col. 9 ln 32 col. 10 ln 25, col. 38 ln 14 – col. 40 ln 2, and col. 42 ln 19 – col. 45 ln 11). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Main, to include basing the registration requirements on string parameters as taught by Nicks, in order to “then identify a keyword within the domain name and determine if one or more matching data records wherein said text string matches said keyword exist within the database,” as suggested by Nicks (col. 1 lns 54-57).
Further, the claimed invention is merely a combination of old elements in a similar field of endeavor, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that, given the existing technical ability to combine the elements as evidenced by Nicks, the results of the combination were predictable.
Regarding claim 2, Levac in view of Main and Nicks teaches the system of claim 1, wherein a registry for the domain name comprises the registration controller, wherein the one or more registration requirements are variable registration requirements (Levac ¶¶0027-0030).
Regarding claim 3, Levac in view of Main and Nicks teaches the system of claim 1, wherein the positive feedback comprises: an acceptance of the offer for the first domain request (Levac ¶0032).
Regarding claim 4, Levac in view of Main and Nicks teaches the system of claim 3, wherein the offer comprises an offer price for the domain name (Levac ¶¶0042-0049).
Regarding claim 5, Levac in view of Main and Nicks teaches the system of claim 1, wherein the positive feedback comprises: a satisfaction of the one or more registration requirements for the first domain request (Levac ¶¶0026-0027).
Regarding claim 6, Levac in view of Main and Nicks teaches the system of claim 5, wherein the satisfaction of the one or more registration requirements for the first domain request included with the offer comprise: a required accreditation, or a signed statement attesting to the required accreditation (Levac ¶¶0026 and 0055).
Regarding claim 7, Levac in view of Main and Nicks teaches the system of claim 1, wherein the positive feedback comprises: a completion of a registration request for the domain name (Levac ¶¶0031-0034).
Regarding claim 8, Levac in view of Main and Nicks teaches the system of claim 1, wherein the one or more registration requirements for the first domain request include: an offer period of time for which the offer is valid, a whitelist of entities eligible for the offer price, a blacklist of entities ineligible for the offer price, and/or an entity eligibility requirement (Levac ¶¶0026-0030).
Regarding claim 9, Levac in view of Main and Nicks teaches the system of claim 1, wherein the one or more assessments by the registration controller comprise: tokenizing a domain name into one or more constituent strings (Levac ¶¶0024-0025), analyzing the domain name and the constituent strings to obtain the one or more assessments associated with the constituent strings (Levac ¶¶0027-0035), establishing the one or more registration requirements based on the one or more assessments associated (Levac ¶¶0030-0035 and 0054), tracking a feedback responsive to the one or more registration requirements, and calibrating the one or more registration requirements based on the feedback (Main ¶¶0078-0084).
Regarding claims 10-20, all of the limitations in claims 10-20 are closely parallel to the limitations of system claims 1-9, analyzed above, and are rejected on the same bases.
Response to Arguments
Applicant's arguments filed 12/10/2025 have been fully considered but they are not persuasive. In response to applicant’s arguments regarding the §101 rejection (Remarks pp. 10-13), the examiner disagrees. Applicant argues that the claims provide a technical solution to the problem of “bad actors initiat[ing] Internet scams” by registration requirements being based at least in part on a parameter for one or more constituent strings of the domain name on the network. This problem is abstract and not technical. The alleged solution is similarly abstract. The requirements, parameters, and constituent strings are merely words and characters and can be performed mentally and by hand. The claims are not integrated into a practical application for the reasons stated above.
In response to applicant’s argument regarding the prior art, the examiner notes that the argument is moot in light of the newly cited reference which teaches the limitation. Therefore, as discussed in the interview on 2/4/2025, the examiner still recommends reciting more detail as to the particular way in which the invention might receive positive feedback.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Raciborski et al., US PG Pub 2010/0100629 A1, teaches a domain name service resolver.
Kaliski et al., US PG Pub 2014/0123301 A1, teaches privacy preserving registry browsing.
Non-patent literature Halvorson, Tristan teaches registration intent in the domain name market.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER B SEIBERT whose telephone number is (571)272-5549. The examiner can normally be reached Monday - Thursday.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeff Smith can be reached at 571-272-6763. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER B SEIBERT/Primary Examiner, Art Unit 3688