Bromium, Inc.Download PDFPatent Trials and Appeals BoardJan 6, 20212019005682 (P.T.A.B. Jan. 6, 2021) Copy Citation 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. Appeal 2019-005682 Application 15/448,254 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 Appeal 2019-005682 Application 15/448,254 3 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. Appeal 2019-005682 Application 15/448,254 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). Appeal 2019-005682 Application 15/448,254 5 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). Appeal 2019-005682 Application 15/448,254 6 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. Appeal 2019-005682 Application 15/448,254 7 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”). Appeal 2019-005682 Application 15/448,254 8 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, Appeal 2019-005682 Application 15/448,254 9 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. Appeal 2019-005682 Application 15/448,254 10 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. Copy with citationCopy as parenthetical citation