Ex Parte Austin et al

Board of Patent Appeals and Interferences

Jul 28, 2008

10027714 (B.P.A.I. Jul. 28, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DAVID M. AUSTIN and WESLEY L. AUSTIN

Appeal 2007-0577
Application 10/027,7141
Technology Center 2100
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Decided: July 28, 2008
____________________

Before JAMES D. THOMAS, JEAN R. HOMERE, and
CAROLYN D. THOMAS, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s final
rejection of claims 1 through 21. Claims 22 through 34 have been
withdrawn. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 Filed on Dec. 21, 2001. The real party in interest is Trapware Corp.
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Appellants invented a method and system for scanning a computer to
detect therein the presence of observer programs that monitor and record a
user’s activities on the computer. (Spec. 4.) As depicted in Figure 2, an
observer program (34) gathers data from various activities (36, 38, 42)
occurring on a computer (20) and stores the collected data in a log file (44).
(Spec. 12.) As shown in Figure 3, an observer detector (50) is installed on
the computer to detect the presence of such observer programs by comparing
before and after image contents of the computer memory (24) at a
predetermined time. (Spec. 13-15.)
Independent claim 1 further illustrates the invention. It reads as
follows:
1. A computer program embodied in a computer-readable medium for
scanning a computer for observer programs, the computer program
comprising:

observer data comprising a plurality of observer program
characteristics descriptive of a plurality of observer programs where the
observer programs are programmed to observe activities on a computer
system and to create log data;

reading instructions that read memory of the computer to obtain
memory data;

comparing instructions that compare the plurality of observer program
characteristics with memory data characteristics to determine whether an
observer program is present on the computer;

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generating instructions that generate results from the comparing,
wherein the results generated indicate whether the observer program is
present on the computer; and

outputting instructions that provide the results through a graphical
user interface.

The Examiner relies on the following prior art:

Drake US 6,006,328 B1 Dec. 21, 1999
Togawa US 6,240,530 B1 May 29, 2001

The Examiner rejects the claims on appeal as follows:
Claims 1 through 21 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Togawa and Drake.

FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.

Togawa
1. Togawa discloses a method and system for detecting and
exterminating viruses on a computer. Particularly, Togawa discloses a virus
extermination program installed on the computer memory to detect, identify
and destroy certain types of viruses on the computer. (Col. 4, ll. 1-22.)
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2. After detecting characteristics in memory indicating the presence
of a virus, the extermination program identifies the name and type of the
virus to subsequently destroy it. (Col. 5, ll. 9-18; col. 8, ll. 22-30.)

Drake
3. Drake discloses a method and system that uses an anti-spy
computer code to detect rogue software programs that eavesdrop, attack or
steal ID-data on the computer. The anti-spy code continuously scans the
computer memory by comparing its memory image data with known
characteristics data to detect hot patching. (Col. 3, ll. 38-44; col. 6, ll. 10-
20.)

PRINCIPLES OF LAW
OBVIOUSNESS
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).
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
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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., 127 S. Ct. 1727, 1734 (2007).

The question of obviousness is resolved on the basis of underlying factual
determinations including (1) the scope and content of the prior art, (2) any
differences between the claimed subject matter and the prior art, (3) the level
of skill in the art, and (4) wherein evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 127 S. Ct. at 1734 (“While the sequence of these questions might
be reordered in any particular case, the [Graham] factors continue to define
the inquiry that controls.”)
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
Leapfrog Enter., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir.
2007) (quoting KSR Int’l v. Teleflex, Inc., 127 S. Ct. 1727, 1739-40 (2007)).
“One of the ways in which a patent's subject matter can be proved obvious is
by noting that there existed at the time of invention a known problem for
which there was an obvious solution encompassed by the patent's claims.”
KSR, 127 S. Ct. at 1742.
The reasoning given as support for the conclusion of obviousness can
be based on interrelated teachings of multiple patents, the effects of demands
known to the design community or present in the marketplace, and the
background knowledge possessed by a person having ordinary skill in the
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art. KSR, 127 S. Ct. at 1740-41. See also Dystar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2007).

ANALYSIS
Independent claim 1 recites in relevant part detecting the presence of
observer programs that observe activities on a computer system to create a
log of data by comparing observer program characteristics with memory
data characteristics. (Claims Appendix.) Appellants argue that the
combination of Togawa and Drake does not teach these limitations. (App.
Br. 6-9.) Particularly, Appellants argue that the combination of Togawa and
Drake teaches detecting the presence of virus programs on the computer, and
not observer programs. (Id.)
In response, the Examiner avers that Togawa’s disclosure of
detecting and identifying the characteristics of virus programs on a
computer, taken in combination with Drake’s disclosure of using anti-spy
techniques to detect unauthorized spying software programs on the
computer, teaches the cited limitations. (Ans. 8-11.)
Therefore, the pivotal issue before us is whether one of ordinary skill
in the art would have found that Togawa’s virus detection mechanism
combined with Drake’s use of anti-spy techniques to detect the presence of a
rogue software on a computer teaches the limitations in question, as recited
in independent claim 1. We answer this inquiry in the affirmative.
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As set forth in the Findings of Fact section, Togawa teaches running a
virus check on a computer to detect the presence of virus characteristics
thereon, and to identify the types of viruses corresponding thereto. (FF 1-2.)
Further, Drake teaches scanning a computer memory by running therein an
anti-spy software, which compares before memory scan images with after
memory scan images to detect the presence of a rogue software thereon.
(FF. 3.) One of ordinary skill in the art would readily recognize that the
detection of viruses in a computer memory, as taught by Togawa, routinely
involves comparing known virus characteristics with data in the computer
memory to identify similar data patterns. Further, the ordinarily skilled
artisan would recognize that Drake’s use of anti-spy software explicitly
involves a comparison between known characteristics data with memory
data to identify similar data patterns indicating the presence of rogue
software in the computer. The ordinarily skilled artisan would therefore
conclude that the proffered combination would predictably result in running
anti-spyware program on a computer to scan the memory for certain spy
characteristics in order to detect the presence of rogue software programs
thereon.
Additionally, we note that Appellants’ arguments regarding the
informational content of the compared characteristics data are not
persuasive. Nowhere in the cited claim is there an indication that the nature
of the compared data and the content thereof are being used to functionally
achieve something other than merely detecting the presence of a
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corresponding software. We are satisfied that both the claimed invention
and the Togawa-Drake combination are directed to comparing known
characteristics data with data in the computer memory for the same purpose
of detecting the presence of a corresponding software. Thus, whether the
characteristics data indicate to an observer program or a virus/rogue
program, the nature of the data being compared here is of little importance.
In either case, the computer memory is scanned by comparing characteristics
data to detect the presence of a corresponding software. Consequently, the
informational content of program characteristics is nonfunctional descriptive
material, which is entitled to no patentable weight. See Manual of Patent
Examining Procedure (MPEP) § 2106.01 (8th ed., Rev. 5, Aug. 2006).
When “non-functional descriptive material” is recorded or stored in a
memory or other medium (i.e., substrate), it is treated as analogous to
printed matter cases where what is printed on a substrate bears no functional
relationship to the substrate and is given no patentable weight. See In re
Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (“Where the printed matter is
not functionally related to the substrate, the printed matter will not
distinguish the invention from the prior art in terms of patentability.
Although the printed matter must be considered, in that situation it may not
be entitled to patentable weight.”). See also Ex parte Curry, 84 USPQ2d
1272 (BPAI 2005) (nonprecedential) (Federal Circuit Appeal No. 2006-
1003; affirmed without written opinion Jun. 12, 2006). The Examiner need
not give patentable weight to descriptive material absent a new and
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unobvious functional relationship between the descriptive material and the
substrate. See In re Lowry, 32 F.3d 1579, 1582-83 (Fed. Cir. 1994); In re
Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004). See also Ex parte Mathias,
84 USPQ2d 1276 (BPAI 2005) (nonprecedential) (Federal Circuit Appeal
No. 2006-1103; affirmed without written opinion Aug. 17, 2006).
It follows that Appellants have not shown that the Examiner erred in
concluding that the combination of Togawa and Drake renders independent
claim 1 unpatentable.
Appellants do not provide separate arguments with respect to the
rejection of dependent claims 2 through 21. Consequently, these claims fall
together with independent claims 2 through 21. 37 C.F.R. § 41.37(c)(1)(vii).

CONCLUSION OF LAW
Appellants have not shown that the Examiner erred in concluding that
claims 1 through 21 are unpatentable over the combination of Togawa and
Drake under 35 U.S.C. § 103.

DECISION
We affirm the Examiner’s decision rejecting claims 1 through 21.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

rwk

Wesley L. Austin, Esq.
1244 E. 1650 S.
Bountiful UT 84010