DETAILED ACTION
This Office action is in response to Amendment filed on 03/16/2026. Claim 1 is previously canceled. Claims 2-21 remain pending in the application.
Notice of Pre-AIA or AIA Status
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/16/2026 has been entered.
Response to Arguments
Applicant’s arguments (pg. 8-9), filed on 03/16/2026, with respect to the Double Patenting rejections of claims 2-21 have been considered but are moot. The patent numbers have been corrected accordingly. Examiner appreciates Applicant’s indications and understanding.
Applicant’s arguments (pg. 9-13), filed on 03/16/2026, with respect to the Double Patenting rejections of claims 2-21 have been fully considered but are not persuasive. Without further context or clarifications, the “capability of a recursive resolver” may be merely a capability to process DNS query under broadest reasonable interpretation. Examiner suggests Applicant to further specify the capability and clarify exactly how the determined capability impacts the claimed process with patentable significance, in order to clearly overcome the rejections.
Response to Amendment
The Amendment filed on 03/16/2026 has been entered.
Examiner’s Note
Based on the prosecution history of the allowed parent cases, Examiner notes that a connection between overriding and becoming the primary domain name resolver, e.g. “overriding the first DNS setting and causing the second DNS setting to be implemented as primary domain name resolver to resolve a DNS query”, would be needed for allowance.
Claim Rejections - Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1)-706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,791,085 (US 10791085 B2, hereinafter “Patent 1”), claims 1-19 of U.S. Patent No. 11,316,819 (US 11316819 B1, hereinafter “Patent 2”), and claims 1-69 of U.S. Patent No. 11,985,105 (US 11985105 B2, hereinafter “Patent 3”). Although the conflicting claims are not identical, they are not patentably distinct from each other because claims 2-21 of the instant application are broader in every aspect than the corresponding claims of Patent 1 (US 10791085 B2), Patent 2 (US 11316819 B1), and Patent 3 (US 11985105 B2) and are therefore anticipated by claims 1-20 of Patent 1 (US 9219633 B2), claims 1-19 of Patent 2 (US 11316819 B1), and claims 1-69 of Patent 3 (US 11985105 B2).
Conclusion
In the case of amendments, applicant is respectfully requested to indicate the portion(s) of the specification which dictate(s) the structure relied on for proper interpretation and support, for ascertaining the metes and bounds of the claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GIL H. LEE whose telephone number is 571-272-3408. The examiner can normally be reached on Mon-Fri: 9am-6pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian J. Gillis can be reached on 571-272-7952. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/GIL H. LEE/
Primary Patent Examiner, Art Unit 2446
Prosecution Insights