Bromium, Inc.

Patent Trials and Appeals Board

Jan 6, 2021

2019005682 (P.T.A.B. Jan. 6, 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.
15/448,254 03/02/2017 Rahul C. Kashyap 85826683 7409
22879 7590 01/06/2021
HP Inc.
3390 E. Harmony Road
Mail Stop 35
Fort Collins, CO 80528-9544
EXAMINER
BECHTEL, KEVIN M
ART UNIT PAPER NUMBER
2491
NOTIFICATION DATE DELIVERY MODE
01/06/2021 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):
ipa.mail@hp.com
jessica.pazdan@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte RAHUL C. KASHYAP, RAFAL WOJTCZUK, and IAN PRATT
____________________

Appeal 2019-005682
Application 15/448,254
Technology Center 2400
____________________

Before ERIC S. FRAHM, JOHNNY A. KUMAR, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the
Examiner’s final rejection of claims 1, 2, 4–9, 11–16, and 18–24.
Claims 3, 10, and 17 have been canceled (see Amendment filed
December 11, 2018 (pp. 3, 6, 8, and 11)). We have jurisdiction under
35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. “The word ‘applicant’ when used in this title refers to the
inventor or all of the joint inventors, or to the person applying for a patent as
provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a) (2017). According
to Appellant, Bromium, Inc. is the real party in interest (Appeal Br. 3).
However, this application was reassigned to Hewlett-Packard Development
Company, L.P. after the briefs were filed. See Statement Under 37 C.F.R. §
3.73(c) filed Jan. 7, 2020, Jan. 24, 2020, and Feb. 10, 2020.
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2
We REVERSE.
INVENTION
Appellant’s invention deals with virtual machines (VMs) in a client
system that are created by a hypervisor, where different VMs are used to run
applications from different sources or of different types (see Spec. ¶ 16), and
with the prevention of subversion by malware (see Spec. ¶ 18). More
specifically, Appellant’s disclosed invention relates to clipboards in isolated
execution environments, and in particular, “ensuring virtualized
environments share resources responsibly” (Spec. ¶ 3) by providing security
in the operating system (see Spec. ¶¶ 3–18; Abstract). In other words, the
purpose of the invention is to provide security when sharing screens and
environments online. The claims are commensurate with this security
purpose and claim a software module “to prevent said user from introducing
a potentially hazardous type of object into said second clipboard” (when
copying one clipboard to another), and if a potentially hazardous object is
found, converting the data to a simpler format “which removes or renders
in[]ert any malicious code contained” therein (claim 1).
Independent claim 1 is illustrative of the invention and is reproduced
below.
1. One or more non-transitory machine-readable storage
mediums storing one or more sequences of instructions, which
when executed by one or more processors, cause:
upon a software module, executing in a first isolated
execution environment, determining that the first isolated
execution environment has caused data to the written to a first
clipboard maintained by the first isolated execution
environment, the software module consulting policy data to
determine whether the data should additionally be written to a
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second clipboard maintained by a second isolated execution
environment,
wherein the policy data does not allow one or more types
of clipboard objects to be written to the second clipboard even
if a particular object of said one or more types of clipboard
objects was written to the first clipboard at the initiation of or
approval by a user [A] to prevent said user from introducing a
potentially hazardous type of object into said second clipboard;
upon the software module being instructed by said policy
data that a portion of said data is said potentially hazardous type
of object, the software module [B] converting said portion to a
simpler format of object which removes or renders insert2 any
malicious code contained in said portion; and
upon the software module determining that the policy
data allows the data to be written to the second clipboard, the
software module causing the data to be written to the second
clipboard, wherein the data written to the second clipboard
includes said portion converted to said simpler format of object.

Appeal Br. 23, Claims Appendix (emphases, bracketed lettering, and
formatting added).

EXAMINER’S REJECTION
The Examiner rejected claims 1, 2, 4–9, 11–16, and 18–24 under
35 U.S.C. § 103 as being unpatentable over Ohata et al. (US 2011/0131179
A1; published June 2, 2011) (hereinafter, “Ohata”) and Narayanan et al. (US
2009/0276723 A1; published Nov. 5, 2009) (hereinafter, “Narayanan”).
Final Act. 3–10; Ans. 4–18.

2 Although claims 1, 8, and 15 of record use the word “insert,” it is expected
Appellant meant to use the term “inert.” Should there be further prosecution
of this application, it is suggested that Appellant and the Examiner correct
this harmless error.
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4
ANALYSIS
We have reviewed Appellant’s arguments in the Appeal Brief (Appeal
Br. 12–22) and the Reply Brief (Reply Br. 2–28), the Examiner’s rejections
(Final Act. 3–10), and the Examiner’s response to Appellant’s arguments
(Ans. 4–18). Appellant’s arguments have persuaded us of error in the
Examiner’s rejections of all of the disputed claims under 35 U.S.C. § 103.
During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using “the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
The claim defines the boundaries of the exclusive rights granted under
35 U.S.C. § 154, providing notice of the claim scope to the public. “[C]laim
construction must begin with the words of the claims themselves.” Amgen
Inc. v. Hoechst Marion Roussel, Inc., 457 F.3d 1293, 1301 (Fed. Cir. 2006)
(citation omitted). In other words, “the name of the game is the claim.” In
re Hiniker, 150 F.3d 1362, 1369 (Fed. Cir. 1998).
In addition, “[a]n [] intended use or purpose usually will not limit the
scope of the claim because such statements usually do no more than define a
context in which the invention operates.” Boehringer Ingelheim Vetmedica,
Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003).
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The determination of whether preamble recitations are
structural limitations or mere statements of purpose or use “can
be resolved only on review of the entirety of the patent to gain
an understanding of what the inventors actually invented and
intended to encompass by the claim.” Corning Glass Works,
868 F.2d [1251] at 1257 [(Fed. Cir. 1989)]. The inquiry
involves examination of the entire patent record to determine
what invention the patentee intended to define and protect.

Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997). Although “[s]uch
statements often . . . appear in the claim’s preamble,” In re Stencel, 828 F.2d
751, 754 (Fed. Cir. 1987), a statement of intended use or purpose can appear
elsewhere in a claim.3 Id.
In the instant case, Appellant’s claim 1 recites a software module
operating on clipboards in isolated execution environments “to prevent said
user from introducing a potentially hazardous type of object into said second
clipboard” (claim 1, limitation A), and “converting said portion to a simpler
format of object which removes or renders insert any malicious code
contained in said portion” (claim 1, limitation B).” Limitations A and B set
forth in claim 1 (and as commensurately recited in claims 8 and 15), provide
perspective to the purpose of the inventions recited in the claims, namely
using a software module to provide security from potentially hazardous
objects and malicious code in a computer environment (see Spec. ¶¶ 3–18;
Abstract (claims 1, 8, and 15).

3 In the instant case on appeal, the intended use language read out of the
claim by the Examiner includes limitations A and B set forth in claim 1,
which are directed to the purpose of the invention, to protect from malicious
code (see Spec. ¶¶ 3–18; Abstract).
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That is, under this interpretation, the recitations of “to prevent said
user from introducing a potentially hazardous type of object into said second
clipboard” (claim 1, limitation A), and “converting said portion to a simpler
format of object which removes or renders insert any malicious code
contained in said portion” (claim 1, limitation B), are not merely descriptive
of the intended purpose of the invention: they are essential functions of the
software module of the invention recited in claim 1, and similarly recited in
claims 8 and 15. See Catalina Marketing Int’l Inc. v. Coolsavings.com, Inc.,
289 F.3d 801, 808 (Fed. Cir. 2002) (internal quotation and citation omitted);
see also Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997) (noting that when
the claim recites structural limitations of the claimed invention, the USPTO
must give effect to that usage).
Although Ohata and Narayanan both deal with clipboards in execution
environments, neither Ohata nor Narayanan are concerned in any way at all
with security and protecting the system from “potentially hazardous types of
objects” or protecting the user from “malicious code” as required by claims
1, 8, and 15. Appellant’s arguments in this regard are persuasive. The
Examiner admits the references have this defect (see Ans. 4–5), and reads
this limitation out (see Ans. 6–10), on the basis of claim interpretation and
determining that the limitations containing the terms “potentially hazardous”
and “malicious code” are merely an intended use. In this light, Appellant’s
contention that “Appellant and the Examiner both agree that no cited
reference used in the rejection of any claim makes an explicit disclosure of
‘malicious code’ or malware or anything of a malicious nature” (Reply Br.
2), is persuasive.
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Our reviewing court, the Court of Appeals for the Federal Circuit, has
recently discussed a similar issue in Keynetik, Inc. v. Samsung Electronics
Co., Ltd., Appeal No. 2020-1270, p. 11 (Fed. Cir. 2020):
As we recently reiterated, “[a] patent’s statement of
the described invention’s purpose informs the proper
construction of claim terms, including when the task is
to identify the broadest reasonable interpretation.”
Kaken Pharm. Co. v. Iancu, 952 F.3d 1346, 1352 (Fed.
Cir. 2020); see also In re Power Integrations, Inc., 884
F.3d 1370, 1376–77 (Fed. Cir. 2018) (because the
patent at issue “strives to eliminate unnecessary
components and create a more compact circuit,” the
Board’s construction that would include a “bulky”
component was “unduly broad” and “inconsistent” with
the patent’s “focus”).
“[T]he ‘broadest reasonable interpretation’ must ‘take into account the
context of the entire patent.’” Keynetik, Inc. v. Samsung Electronics Co.,
Ltd., Appeal No. 2020-1270, p. 8, n. 2 (Fed. Cir. 2020) (quoting
Personalized Media Commc’n, LLC v. Apple Inc., 952 F.3d 1336, 1340
(Fed. Cir. 2020) (quoting Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1374
(Fed. Cir. 2019))). The Federal Circuit in Keynetik determined that to read
out limitations from a claim that are drawn to the purpose of the invention
would eviscerate the stated purpose of the claimed invention. Cf. Blackbird
Tech LLC v. Elb Electronics, Inc. (Fed. Cir. 2018) (A limitation in the
specification should not be imported into a claim when there is no evidence
that the limitation is important, essential or critical); Regents of Univ. of
Minn. v. AGA Med. Corp., 717 F.3d 929, 936 (Fed. Cir. 2013) (finding
disclosures in the Summary of the Invention limiting where directed to
“[t]he present invention”).
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In the instant case before us, the Examiner has eviscerated the main
purpose of Appellant’s invention, namely preventing the introduction of
potentially hazardous objects and rendering inert any malicious code that is
detected, by improperly interpreting the claims. As seen from paragraphs 3
through 18 (describing the field and background of the invention) and the
Abstract of Appellant’s Specification, Appellant’s primary purpose is to
provide security in clipboard environments by converting the data to a
simpler format, rendering any malicious code inert. Thus, the Examiner
uses an improper claim interpretation to eviscerate the stated purpose of
Appellant’s invention (security and protection from hazardous or malicious
code). Further, although Ohata has clipboard swapping (see Ohata ¶¶ 11,
35), and Narayanan has conversion to a simpler format (see Narayanan ¶
18), neither reference deals with protection from malicious code.
Furthermore, Ohata only analyzes “compatibility” and “both the security
level and an attribute” when swapping clipboards into different
environments (see Ohata ¶ 39). Although Ohata determines what a security
level is, Ohata is silent as to taking any action based on that security level
(removing malicious code, for example). Determining a security level falls
far short of what is recited in claims 1, 8, and 15 and intended, namely
protecting a user who is switching clipboards to different environments from
potentially hazardous types of objects by removing or rendering inert
malicious code by simplifying the format.
In this light, the Examiner has not adequately shown how/why the
combination of Ohata and Narayanan meets the requirements of claims 1, 8,
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and 15 of removing or rendering in[]ert4 any malicious code. Based on the
foregoing, the Examiner has not made a sufficient prima facie case of
obviousness with respect to limitations A and B recited in independent claim
1, and similarly recited in claims 8 and 15. As such, based on the record
before us, we find that the Examiner improperly failed to give patentable
weight to limitations A and B, the purpose of the invention. This conclusion
is supported by the Examiner’s statement that “the Examiner agrees that
neither Ohata nor Narayanan make any explicit disclosure of ‘malicious
code’ or malware or anything of a malicious nature” (Ans. 5). Therefore, we
are constrained by the record before us to find that the Examiner erred in
determining that limitations A and B, relating to (i) the prevention of the
introduction of potentially hazardous object types into a clipboard; and (ii)
the removal or rendering inert of malicious code, and as commensurately
recited in claims 8 and 15, are intended use not to be given patentable weight
(see generally Ans. 4–16).
Appellant’s arguments have persuaded us of error in the Examiner’s
rejection of independent claims 1, 8, and 15, and the claims which depend
thereupon. Accordingly, we do not sustain the Examiner’s rejection of
independent clams 1, 8, and 15, or dependent claims 2, 4–7, 9, 11–14, 16,
and 18–24, which depend respectively therefrom.

4 See infra fn. 2.
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CONCLUSION5
We reverse the Examiner’s rejections of claims 1, 2, 4–9, 11–16, 18–
24 under 35 U.S.C. § 103.
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4–9, 11–
16, 18–24
103 Ohata, Narayanan 1, 2, 4–9,
11–16, 18–
24

REVERSED

5 Although not before us on Appeal, we leave it to the Examiner to evaluate
whether the independent claims are obvious under 35 U.S.C. § 103 over the
combination of Ohata and Narayanan in combination with another reference
(e.g., that teaches or suggests computer security concerns including
prevention of introduction of potentially hazardous objects, or removal of
malicious code). Although the Board is authorized to reject claims under 37
C.F.R. § 41.50(b), no inference should be drawn when the Board elects not
to do so. See Manual of Patent Examining Procedure (MPEP) § 1213.02.