DETAILED ACTION
Terminal Disclaimer
The terminal disclaimer filed on 1/7/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No. 12,003,606 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Response to Amendment
Applicant’s submission filed on 1/7/2026 has been entered. Claims 2-21 remain pending in this application. Applicant's Terminal Disclaimer and amendments to the claims have overcome each and every rejection under 35 U.S.C. §§ 101 and 112 previously set forth in the Non-Final Office Action mailed 7/8/2025.
Response to Arguments
Applicant's arguments filed 1/7/2026 regarding the rejections under 35 U.S.C. § 103 have been fully considered but they are not persuasive.
Applicant argues that Examiner’s mapping of the claim limitation “determining whether the authorization information is valid based on an electronically stored authorization information associated with the domain name” to Gardos Col 6 Ln 28-39 is incorrect because Gardo’s disclosure of “the domain manager sends e-mail to the administrative contact for the domain name and waits for confirmation from the administrative contact that authorization is proper. Upon authorization, the domain manager recognizes the operator as the authoritative zone and technical contact for that domain name” does not appear to use “an electronically stored authorization information associated with the domain name”.
Examiner disagrees, because Applicant has only quoted Gardos Col 6 Ln 28-33, where Gardos Col 6 Ln 34-39 states “note here that the domain manager has accessed information about the administrative contact for the domain name. This is but one piece of information about a domain that might be accessed in any given management session. Some of the domain information might be stored within a database associated with or accessible from the domain manager”; this “information stored within a database” reads on “an electronically stored authorization information associated with the domain name” as claimed.
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 .
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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 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 2-7, 9-14, 16-21 are rejected under 35 U.S.C. 103 as being unpatentable over King et al. (US 2004/0172463, hereinafter King) in view of Gardos et al. (US 9,106,712, hereinafter Gardos; see IDS dated 8/23/2024).
Regarding claim 2, King teaches a computer-implemented method (a method for… - King Claim 1), comprising:
receiving, at a registry, a request (the backorder request entered during timeframe E is communicated to the registry – King ¶0043) for access to a domain management function (the new registry commands 324c handle the management of backorder requests stored by the registry 320 in the data source 326. These include registry commands to add a backorder record, delete a backorder record, or ripen a backorder into a successive registration – King ¶0048), wherein the registry includes information for a registrar for the domain name (registry commands 324a implemented by the registry allow registrars to modify the records for domain names they have registered in the standard manner – King ¶0047), wherein the request includes an entry can be made at the backordering system and in the data source maintained at the registry – King ¶0050);
allowing the service provider access to the domain management function (to fulfill or complete the backorder process, the backordering system can run real time or frequent batch processes to register the domain names that have been blocked by the registry – King ¶0050) Internet domain name registry systems – King ¶0003; the data accessible through the name server is often referred to as a “zone file” – King ¶0006; said domain name registry systems inherently publish zone information as claimed).
King does not teach wherein the request includes authorization information to allow a service provider to provide a specified service for a domain name; determining whether the authorization information is valid based on an electronically stored authorization information associated with the domain name; and allowing the service provider access to the domain management function based on a determination that the authorization information is valid. King teaches integration with domain name registry systems to ensure successful registrations of domain names (King ¶0025), but is silent with regards to authorization information and checking said authorization information before allowing said registrations.
Gardos, however, in the same field of endeavor, teaches a domain manager (Gardos Col 5 Ln 33) where a start screen requests identification and authentication information from an operator to ensure that an agent is authorized (Gardos Col 5 Ln 54-56), then said information is checked against domain information stored within a database before permission is granted (Gardos Col 6 Ln 28-39) for the maintenance and modification of domain names (Gardos Col 4 Ln 51-53).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the teachings of King to comprise the authorization information validity limitations as claimed, in order to provide secure and authenticated access (Gardos Col 2 Ln 65) while improving convenience for a registrant (Gardos Col 4 Ln 45).
Regarding claim 3, King and Gardos teach wherein the request for access to the domain management function comprises a request for access to a shared registration system (SRS) of the domain name registry (the domain manager preferably directly contacts the shared registry system (SRS) to retrieve information about a domain being managed – Gardos Col 6, Ln 41-43).
The reason to combine King and Gardos remains the same as for claim 2 above.
Regarding claim 4, King and Gardos teach wherein access to the domain management function is through an Extensible Provisioning Protocol (EPP) (various protocols can be used, one example being the Verisign EPP (Extensible Provisioning Protocol) – King ¶0016).
Regarding claim 5, King and Gardos teach wherein the request originates from the service provider (the backorder request is added locally 514 to the backorder system database 508 and… the backorder request can be mirrored 518 to the registry 520 – King ¶0052; a start screen for the domain manager is illustrated… the operator accessing the domain manager is acting as an agent for a domain name registrant to modify some information about the domain name or perform another domain management function – Gardos Col 5, Ln 49-54; preferred embodiments of the present invention… allow an entity, such as… an unaccredited registrar like an Internet service provider (ISP), to act as agent for a domain name registrant – Gardos Col 4, Ln 48-51).
The reason to combine King and Gardos remains the same as for claim 2 above.
Regarding claim 6, King and Gardos teach wherein the request originates from a registrant of the domain name (wherein the backorder system receives the backorder request from a current registrant of the domain name – King Claim 16).
Regarding claim 7, King and Gardos teach wherein the information for the registrar for the domain name is based on a domain name registration process (registry commands 324a implemented by the registry allow registrars to modify the records for domain names they have registered in the standard manner – King ¶0047).
Regarding claim 9, the computer server system comprises the same limitations as the computer-implemented method disclosed in claim 2, so the same rejection rationale is applicable. Furthermore, Gardos teaches a system comprising a processing system of a device comprising one or more processors, and a memory system comprising one or more computer-readable media (a domain name management system… said system comprising: a processor and a memory – Gardos Claim 1).
The reason to combine King and Gardos remains the same as for claim 2 above.
Regarding claim 10, the system comprises the same limitations as the method disclosed in claim 3, so the same rejection rationale is applicable.
Regarding claim 11, the system comprises the same limitations as the method disclosed in claim 4, so the same rejection rationale is applicable.
Regarding claim 12, the system comprises the same limitations as the method disclosed in claim 5, so the same rejection rationale is applicable.
Regarding claim 13, the system comprises the same limitations as the method disclosed in claim 6, so the same rejection rationale is applicable.
Regarding claim 14, the system comprises the same limitations as the method disclosed in claim 7, so the same rejection rationale is applicable.
Regarding claim 16, the non-transitory computer readable storage medium comprises the same limitations as the method disclosed in claim 2, so the same rejection rationale is applicable. Furthermore, Gardos teaches a non-transitory computer readable storage medium (a domain name management system… said system comprising: a processor and a memory – Gardos Claim 1).
The reason to combine King and Gardos remains the same as for claim 2 above.
Regarding claim 17, the medium comprises the same limitations as the method disclosed in claim 3, so the same rejection rationale is applicable.
Regarding claim 18, the medium comprises the same limitations as the method disclosed in claim 4, so the same rejection rationale is applicable.
Regarding claim 19, the medium comprises the same limitations as the method disclosed in claim 5, so the same rejection rationale is applicable.
Regarding claim 20, the medium comprises the same limitations as the method disclosed in claim 6, so the same rejection rationale is applicable.
Regarding claim 21, the medium comprises the same limitations as the method disclosed in claim 7, so the same rejection rationale is applicable.
Claims 8, 15 are rejected under 35 U.S.C. 103 as being unpatentable over King and Gardos as applied to Claim 2 above, and further in view of ICANN (“Unsponsored TLD Agreement; Appendix C (.pro)”, published 30 September 2004; see IDS dated 8/23/2024).
Regarding claim 8, King and Gardos teach wherein the specified service
King and Gardos do not explicitly teach wherein the specified service includes publishing Domain Name System (DNS) records. Gardos mentions “all the functionality of the domain manager”, and that different users may have “less than all” of the functionality, but does not specifically recite “publishing DNS records” as part of the functionality.
ICANN, however, in the same field of endeavor, teaches that the Registry Operator will generate and propagate DNS zone file updates to the DNS server array; updates will be initiated from the SRS, and queued and propagated to the DNS server array; the Registry Operator will store several resource records in the zone file, including NS Records (ICANN Page 8, C.4 Zone File Generation, Distribution, and Publication).
It would have been further obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, that the invention taught by King and Gardos inherently comprises the publishing limitation as claimed, because publishing DNS zone files are inherent to the functionality of a domain manager that uses SRS as taught by King and Gardos, so “practice of less than all of the functionality of the domain manager” includes the case where the only functionality that is enabled is that of publishing DNS records as claimed.
Regarding claim 15, the system comprises the same limitations as the method disclosed in claim 8, so the same rejection rationale is applicable.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LEON Y TSENG whose telephone number is (571)270-3682. The examiner can normally be reached on Monday to Friday 8:30 AM to 5:00 PM MST, with every other Friday off.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, WING CHAN can be reached on 571-272-7493. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LEON Y TSENG/
Examiner, Art Unit 2441
/JOHN A FOLLANSBEE/Supervisory Patent Examiner, Art Unit 2444
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