Ex Parte 5623600 et al

Board of Patent Appeals and Interferences

Jul 17, 2012

90011022 (B.P.A.I. Jul. 17, 2012)

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.
90/011,022 07/21/2010 5623600 032468.0004-US01 3498
26853 7590 07/17/2012
COVINGTON & BURLING, LLP
ATTN: PATENT DOCKETING
1201 PENNSYLVANIA AVENUE, N.W.
WASHINGTON, DC 20004-2401
EXAMINER
NGUYEN, MINH DIEU T
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
07/17/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TREND MICRO INC.,
Appellant and Patent Owner
____________

Appeal 2012-005205
Reexamination Control 90/011,022
Patent 5,623,600
Technology Center 3900
____________

Before JAMESON LEE, STEPHEN C. SIU, and JUSTIN T. ARBES,
Administrative Patent Judges.

SIU, Administrative Patent Judge

DECISION ON APPEAL
Patent owner appeals under 35 U.S.C. §§ 134(b) and 306 from a final
rejection of claims 4, 7, 8, 11, 12, 14-17, 23, 27, and 37. Claims 1-3, 5, 6, 9,
18-22, 24-26, and 28-34 were cancelled. Claims 10, 13, 35, and 36 are
confirmed. We have jurisdiction under 35 U.S.C. §§ 134(b) and 306.
We heard oral arguments on June 20, 2012.

Appeal 2012-005205
Reexamination Control 90/011,022
Patent 5,623,600

2
STATEMENT OF THE CASE
This proceeding arose from a request for ex parte reexamination filed
on June 1, 2010 by Fortinet, Inc. of United States Patent 5,623,600 (the
‘600 Patent) issued to Shuang Ji and Eva Chen on April 22, 1997. Presently,
claims 4, 7, 8, 11, 12, 14-17, 23, 27, and 37 stand rejected.
Patentee’s invention relates to a system and method for removing
computer viruses (Spec. at col. 1, ll. 9-12). Claim 4 reads as follows:
4. A computer implemented method for detecting
viruses in data transfers between a first computer and a second
computer, the method comprising the steps of:
receiving at a server a data transfer request including a
destination address;
electronically receiving data at the server;
determining whether the data contains a virus at the
server;
performing a preset action on the data using the server if
the data contains a virus;
sending the data to the destination address if the data
does not contain a virus;
determining whether the data is of a type that is likely to
contain a virus; and
transmitting the data from the server to the destination
without performing the steps of determining whether the at
contains a virus and performing a present action if the data is
not of a type that is likely to contain a virus.

(App. Br. 43, Claims Appendix).

The Examiner cites the following references:

Appeal 2012-005205
Reexamination Control 90/011,022
Patent 5,623,600

3
Gary Warner, “VIRUS-L Digest,” May 1990 (“Warner”).

David J. Stang, “ICSA’s Computer Virus Handbook,” 2
nd
edition,
April 16, 1992 (“Stang”).

William R. Cheswick and Steven M. Bellovin, “Firewalls and Internet
Security, Repelling the Wily Hacker,” AT&T Bell Laboratories, 1994
(“Cheswick”).

Trusted Information Systems, Inc., “TIS Firewall Toolkit,” 1994 (“TIS
Firewall”).

Architecture Technology Corporation, The LocalNetter Newsletter, “Special
Report: Secure Computing Corporation and Network Security,” excerpted
from “Network Security and Sidewinder,” Vol. 14, No. 12, December 1994
(“Sidewinder”).

Integralis Ltd., “MIMEsweeper Administrator Guide,” 1995
(“MIMEsweeper”).

Norman Data Defense Systems, Inc., “An Introduction to the Norman
Firewall,” June 1995 (“Norman”).

The Examiner rejects claims 4 and 7 under 35 U.S.C. § 103(a) as
unpatentable over Cheswick and Sidewinder; claims 8, 11, 12, 14, 16, and
17 under 35 U.S.C. § 103(a) as unpatentable over Cheswick, Sidewinder,
and MIMEsweeper; claim 15 under 35 U.S.C. § 103(a) as unpatentable over
Cheswick, Sidewinder, MIMEsweeper, and TIS Firewall; claims 4, 7, and 8
under 35 U.S.C. § 103(a) as unpatentable over Norman and Stang; and
claims 11, 12, 14-17, 23, 27, and 37 under 35 U.S.C. § 103(a) as
Appeal 2012-005205
Reexamination Control 90/011,022
Patent 5,623,600

4
unpatentable over Norman and Warner.

ISSUE
Did the Examiner err in rejecting claims 4, 7, 8, 11, 12, 14-17, 23, 27,
and 37?

PRINCIPLE OF LAW
“The determination of whether a reference is a ‘printed publication’ . .
. involves a case-by-case inquiry into the fact and circumstances surrounding
the reference’s disclosure to members of the public.” In re Klopfenstein,
380 F.3d 1345, 1350 (Fed. Cir. 2004). “The key inquiry is whether or not a
reference has been made ‘publicly accessible’” Id. at 1348.
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007).

ANALYSIS
I. Rejections Based on Norman
Appellant argues that “there is no evidence in the record establishing
that [the Norman reference] was sufficiently publicly accessible in order to
Appeal 2012-005205
Reexamination Control 90/011,022
Patent 5,623,600

5
qualify as prior art” (App. Br. 18).
The Examiner states that the Norman reference “is clearly written for
an outside audience” and that “the underlying product was publicly unveiled
prior to the date on the Norman Reference” (Ans. 25). However, even
assuming that the content of the reference was written with the intent to be
read by “an outside audience” (Ans. 25) as the Examiner states, the
Examiner has not adequately demonstrated that the reference itself was
publicly accessible. For example, the Examiner has not demonstrated that
the Norman reference was catalogued and shelved in a meaningful way (In
re Bayer, 568 F.2d 1357, 1361 (Fed. Cir. 1978); In re Cronyn, 890 F.2d
1158, 1161 (Fed. Cir. 1989)), was actually disseminated without restriction
(Massachusetts Institute of Technology v. AB Fortia, 774 F.2d 1104, 1109
(Fed. Cir. 1985)), or was such that “anyone could have had access to the
[Norman reference] by the exercise of reasonable diligence” (Northern
Telecom, Inc. v. Datapoint Corporation, 908 F.2d 931, 937 (Fed. Cir. 1990);
In re Wyer, 655 F.2d 221, 226 (CCPA 1981)).
Since the Examiner has not sufficiently demonstrated that the Norman
reference constitutes a prior art reference applicable under 35 U.S.C. § 102,
the Examiner erred in rejecting claims 4, 7, and 8 over Norman and Stang
and claims 11, 12, 14-17, 23, 27, and 37 over Norman and Warner.

Appeal 2012-005205
Reexamination Control 90/011,022
Patent 5,623,600

6
II. Rejections Based on Cheswick
A. Claims 4, 11, 12, 14, and 15
Claim 4 recites determining whether data contains a virus and
performing a preset action on the data if the data contains a virus. Appellant
argues that Cheswick fails to disclose or suggest “what, if any, preset action
might be performed on the data using the server if the data contains a virus”
(App. Br. 20 and 31).
Appellant does not indicate an explicit definition of “preset action” in
the Specification. Claim 4 recites performing a “preset action” on data if the
data contains a virus. Without guidance from the Specification, one of
ordinary skill in the art would have understood the term “preset action” to
include any activity (or “action”) that is arranged to be performed on data
(i.e., “preset”) if the data is determined to contain a virus (as recited in
claim 4). See also Tr. 11:5-18 (arguing that an action is a “preset action” if
it is “configured, it’s known what it is, in contrast to a system administrator
which may not know in any particular situation what it’s going to do,” and is
performed “if [the data or mail message] actually did contain a virus”).
As the Examiner indicates, Cheswick discloses filtering data in a
system and “threats” to a system including a “penetration attempt from the
outside” in which “fragments [of data] can be passed without further ado”
(p. 56, Section 3.3.1) or “fragments [are] discarded” (p. 57, l. 3). Since
passing data fragments or discarding data fragments of Cheswick (in a
process of data filtering), for example, are previously determined “activities”
Appeal 2012-005205
Reexamination Control 90/011,022
Patent 5,623,600

7
or “actions” that are performed, we agree with the Examiner that Cheswick
performs a “preset action” as construed broadly, but reasonably. See Ans.
26-27; claim 7.
Cheswick also discloses that the type of filtering may vary based on
“local needs and customs” and that one type of filtering may include
“scan[ning] incoming files for viruses” (p. 76, ll. 15-16). Hence, Cheswick
discloses that with certain types of filtering, users may scan for viruses
(i.e., determining whether data contains a virus, as claim 4 recites) and that
filtering is performed to detect “threats” to the system and includes
performing preset actions such as passing data “without further ado” or
discarding data (i.e., performing a preset action).
Given the level of skill in the art, we agree with the Examiner that it
would have been obvious to one of ordinary skill in the art to have
determined whether data contained a virus in a data filtering process
designed to detect threats to a system as disclosed by Cheswick and to
further perform a preset action such as passing or dropping data (also
disclosed by Cheswick) if the data contained a virus. This is particularly
true because 1) one of ordinary skill in the art would have known that action
would be taken after detecting a virus since there would have been no
reason to scan for a virus in the first place if a preset action would not be
performed (a preset action including doing nothing) and, more importantly,
2) Cheswick explicitly discloses that one of ordinary skill in the art would
have known that scanning for viruses is performed in certain types of
Appeal 2012-005205
Reexamination Control 90/011,022
Patent 5,623,600

8
filtering processes and that filtering processes include performing a preset
action.
Claim 11 recites similar features as claim 4. Appellant does not
provide additional arguments in support of claims 12, 14, and 15.
The Examiner did not err in rejecting claims 4, 11, 12, 14, and 15.

B. Claims 7, 16, and 17
Claim 7 recites performing one step from the group of transmitting
data unchanged, not transmitting data, and storing the data in a file.
Appellant argues that Cheswick fails to disclose or suggest “‘storing the data
in a file with a new name and notifying a recipient of the data transfer
request of the new file name’” (App. Br. 33). In other words, Appellant
does not dispute that Cheswick discloses at least one of the recited steps
within the group of steps but argues that “the cited documents [fail to]
disclose all of the steps recited in claim 7” (App. Br. 33).
Similarly, claims 16 and 17 each recite performing one step from a
group of four (4) recited steps. Appellant does not dispute that the cited
references disclose at least one of the recited steps in each of claims 16
and 17 but argues that the combination of Cheswick, Sidewinder, and
MIMEsweeper fails to disclose one of the (other) recited steps from each of
claim 16 and claim 17 (App. Br. 39).
Each of claims 7, 16, and 17 recites performing one step from a list of
steps. The Examiner finds, and Appellant does not dispute, that the cited
Appeal 2012-005205
Reexamination Control 90/011,022
Patent 5,623,600

9
references disclose at least one step from each of the lists of steps recited in
each of claims 7, 16, and 17. We therefore agree with the Examiner that the
cited references disclose the features recited in claims 7, 16, and 17.
Appellants argue that “the Office did not issue a restriction
requirement,” that “restriction is not proper in reexamination,” that for a
restriction requirement, there is no “reason why a search and examination
could not be made without serious burden,” and that even if the claims recite
Markush groups, “the examiner ‘must examine all the members of a
Markush group in the claim . . .’” (App. Br. 21). However, none of
Appellant’s arguments are pertinent to the present case because the
Examiner does not apply a restriction requirement to any of claims 7, 16, or
17. Rather, the Examiner’s rejection is based on the undisputed finding that
the prior art references disclose at least one of the recited steps in each of
claims 7, 16, and 17.
Appellant also cites Ex Parte Peterson, No. 2009-003936, 2010 WL
1133819, at *3-*4 (B.P.A.I Mar. 23, 2010) for the proposition that all recited
elements in a Markush group must be disclosed by a prior art reference in a
proper claim rejection (see, e.g., App. Br. 22). According to Appellant, in
Ex Parte Peterson, a claim rejection was reversed “because the prior art did
not disclose . . . both the ‘BIOS’ and ‘MBR’ control elements” of the
claimed Markush group (App. Br. 22) (where the claim recited a control
element selected from the group of a BIOS of a computer and a master boot
record (MBR) of a hard drive).
Appeal 2012-005205
Reexamination Control 90/011,022
Patent 5,623,600

10
Ex Parte Peterson is a non-precedential case and is not controlling
case law. Even assuming Appellant’s implication to be correct that Ex Parte
Peterson is controlling case law, we note that the Examiner’s claim rejection
in Ex Parte Peterson was reversed because the prior art reference was “silent
as to any ‘input or decision’ . . . required in issuing or not issuing the
command” and failed to teach the final step of the claim of “configuring the
control element not to issue the command” in certain circumstances (see,
e.g., 2010 WL 1133819, at *3), rather than failing to disclose every element
of the Markush group in the preceding configuring step. We are therefore
not persuaded by Appellant’s argument.
The Examiner did not err in rejecting claims 7, 16, and 17.

C. Claim 8
Claim 8 recites comparing an extension type of a file name for data to
a group of known extension types. Appellant argues that MIMEsweeper
fails to disclose or suggest this feature (App. Br. 34-36). We agree with
Appellant.
The Examiner states that MIMEsweeper discloses scanning incoming
e-mail attachments for viruses (see, e.g., Ans. 30) and that “‘the way a file is
scanned depends on the type of file to be scanned and the validator
employed’” (Ans. 31) (citation omitted). Hence, the Examiner finds that
MIMEsweeper discloses scanning data, such as e-mail attachments, in
different ways depending on what type of data is being scanned. However,
Appeal 2012-005205
Reexamination Control 90/011,022
Patent 5,623,600

11
even assuming that the Examiner’s assumption that “[e]mail attachments can
be files with .txt, .exe, .zip extension type[s]” (Ans. 30-31) is correct, the
Examiner does not demonstrate that MIMEsweeper (alone or in combination
with Cheswick and/or Sidewinder) also discloses comparing an extension
type of a file name to a group of known extension types. At best,
MIMEsweeper appears to disclose only scanning e-mail attachments for
viruses and that the type of scanning may vary based on the type of data
being scanned.
The Examiner erred in rejecting claim 8.

CONCLUSION
We conclude that the Examiner did not err in rejecting claims 4, 7, 11,
12, and 14-17, but erred in rejecting claims 8, 23, 27, and 37.

DECISION
The decision of the Examiner to reject claims 4, 7, 11, 12, and 14-17
is affirmed. The decision of the Examiner to reject claims 8, 23, 27, and 37
is reversed.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED-IN-PART

Appeal 2012-005205
Reexamination Control 90/011,022
Patent 5,623,600

12

ak

Covington & Burling, LLP
Attn: Patent Docketing
1201 Pennsylvania Avenue, NW
Washington, DC 20004-2401

Third Party Requester:

Michael A. Desanctis
Hamilton Desanctis & Cha, LLP
225 Union Blvd.
Suite 150
Lakewood, CO 80228