Ex Parte Beachem et al

Patent Trial and Appeal Board

Oct 28, 2016

12220893 (P.T.A.B. Oct. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/220,893 07/29/2008
1009 7590 11/01/2016
KING & SCHICKLI, PLLC
800 CORPORATE DRIVE, SUITE 200
LEXINGTON, KY 40503
FIRST NAMED INVENTOR
Brent R. Beachem
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1363-067 8705
EXAMINER
BECHTEL, KEVIN M
ART UNIT PAPER NUMBER
2491
NOTIFICATION DATE DELIVERY MODE
11/01/2016 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):
uspto@iplawl.net
laura@iplawl.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRENT R. BEACHEM, MERRILL K. SMITH,
and RICHARD B. ROLLINS
Appeal2015-007921
Application 12/220,893
Technology Center 2400
Before JOHN A. EV ANS, CARLL. SILVERMAN, and JOHN D.
HAMANN, Administrative Patent Judges.
EV ANS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of Claims 1-30, which are all the claims
pending in the application. Br. 3. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.2
1 The Appeal Brief identifies Novell, Incorporated, as the real party in
interest. Br. 3.
2 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed April 7, 2015, "Br."), the Examiner's Answer
(mailed July 8, 2015, "Ans."), the Final Office Action (mailed November
19, 2014, "Final Act."), and the Specification (filed July 29, 2008, "Spec.")
for their respective details.
Appeal2015-007921
Application 12/220,893
STATEMENT OF THE CASE
The claims relate to a method for locating an internet phone. See
Abstract.
The Invention
Claims 1, 9, 16, 17, and 20 are independent. An understanding of the
invention can be derived from a reading of exemplary Claim 1, which is
reproduced below with some formatting added:
1. In a computing system environment, a method of
counteracting a security threat infecting or attacking a computing
device of the environment, comprising:
identifying whether the computing device has been
compromised by the security threat; if so,
developing an effective active countermeasure to
counteract the security threat; and
operationally replacing the computing device having been
identified as compromised with a virtual computing device
having the active countermeasure installed thereon.
References and Rejections
The Examiner relies upon the prior art as follows:
Sobel
Wing, et al.,
US 7,565,382 Bl
US 2004/0172574 Al
Filed: Aug. 14, 2003
Priority: May 27, 2002
1. Claims 1-30 stand rejected under 35 U.S.C. § l 12(a, or pre-AIA 1st if)
as lacking enablement. Final Act. 14--15.
2. Claims 26-30 stand rejected under 35 U.S.C. § l 12(a, or pre-AIA 1st
if) as failing the written description requirement. Final Act. 15-17.
3. Claims 1-30 stand rejected under 35 U.S.C. § l 12(b, or pre-AIA 2nd
if) as indefinite. Final Act. 17-18.
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Application 12/220,893
4. Claims 1-30 stand rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter. Final Act. 18-20.
5. Claims 1-3, 5-10, 12-15, 20-24, 26, 27, and 30 stand rejected under
35 U.S.C. § 102(b) as anticipated by Wing. Final Act. 21-28.
6. Claims 4, 11, 16-19, 25, 28, and 29 stand rejected under 35 U.S.C. §
102(b) as anticipated by, or in the alternative, under 35 U.S.C. §
103(a) as obvious over Wing. Final Act. 28-33.
7. Claims 1-30 stand rejected under 35 U.S.C. § 103(a) as obvious over
Wing and Sobel. Final Act. 33-38.
ANALYSIS
We have reviewed the rejections of Claims 1-30 in light of
Appellants' arguments that the Examiner erred. We have considered in this
decision only those arguments Appellants actually raised in the Brief. Any
other arguments which Appellants could have made but chose not to make in
the Brief are deemed to be waived. See 3 7 C.F .R. § 41.3 7 ( c )( 1 )(iv). We are
not persuaded that Appellants identify error. Upon consideration of the
arguments presented in the Appeal Brief, we agree with the Examiner that
all the pending claims are unpatentable over the cited combination of
references. We adopt as our own the findings and reasons set forth in the
rejection from which this appeal is taken and in the Examiner's Answer. We
provide the following explanation to highlight and address specific
arguments and findings primarily for emphasis. We consider Appellants'
arguments seriatim, as they are presented in the Appeal Brief, pages 14--33.
CLAIMS 1-30: ENABLEMENT
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Application 12/220,893
The claims recite, inter alia, "developing an effective active
countermeasure to counteract the security threat." The Examiner finds the
only means disclosed for developing a "countermeasure" is "locating a
[security] patch." Final Act. 14. The Examiner finds the claim recitation is
an unbounded functional claim limitation that extends to all methods of
countermeasure development and is not adequately supported by the written
description, nor is commensurate in scope with the enabling disclosure. Id.
Appellants contend the Specification discloses the skilled artisan is
well aware of effective countermeasures to known threats to computing
environments, which include viruses, malware, and others. Br. 14.
The Examiner finds Appellants' Specification enables known
countermeasures, such as installing anti-virus software or a software patch
directed to a known virus. Final. Act. 3. However, the Examiner finds there
is a very significant difference in scope between "finding a patch" for "a
particular known virus" (a scope which the Examiner agrees is enabled)
versus the entirety of the scope encompassed by "developing an effective
active countermeasure to counteract the security threat," which the Examiner
finds is not enabled. Id. at 16; see Ans. 4---6.
Appellants do not file a Reply to the Examiner's Answer. We find the
Examiner's findings to be reasonable and we are not persuaded that the
Examiner has erred.
CLAIMS 26-30: WRITTEN DESCRIPTION
The Examiner finds the Claim 26 recitation "wherein the active
countermeasure is one or more of a patch, an anti-virus patch, and an anti-
virus computer program product," is not supported by the Specification.
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Appeal2015-007921
Application 12/220,893
Final Act. 16. The Examiner finds written description support for "finding a
patch for the application" when "a particular known virus is discovered that
infects applications." Id. The Examiner finds there is no disclosure that
anti-virus software effective against known threats is an "active
countermeasure" against the unknown threats that are within the scope of the
claims. Id.
Appellants refer to a disclosed "specific example of a patch for an
application to counteract a known virus (an 'anti-virus patch')" and contend
such disclosure provides a person of skill with sufficient detail to conclude
the inventors possessed the full scope of the invention. Br. 16.
The Examiner finds Appellants fail to disclose developing a
countermeasure against an unknown threat. Ans. 16.
Appellants do not file a Reply to the Examiner's Answer. We find the
Examiner's findings to be reasonable and we are not persuaded that the
Examiner has erred.
CLAIMS 1-30: INDEFINITENESS
The Examiner finds the term "active countermeasure" is not defined.
Final Act. 17. The Examiner finds Appellants disclose an "active"
countermeasure is well-known in the art and is "one or more of a patch, an
anti-virus patch, and an antivirus computer program product." Id. However,
the Examiner finds the disclosed countermeasures are "data structures" and
are not "active." Id.
Appellants contend the Specification discloses "testing of one or more
countermeasures specifically designed to counteract a detected security
threat, i.e.[,] an 'active' countermeasure." Br. 17.
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Application 12/220,893
The Examiner finds Appellants disclose a patch as an active
countermeasure, but that Appellants argue the patch disclosed by Wing is
passive. Ans. 14. The Examiner finds Appellants do not sufficiently
distinguish their claimed "active" patch from what they allege is a "passive"
patch disclosed by Wing. Id.
Appellants do not file a Reply to the Examiner's Answer. We find the
Examiner's findings to be reasonable and we are not persuaded that the
Examiner has erred.
CLAIMS 1-30: NON-STATUTORY SUBJECT MATTER
The Examiner finds the claims are directed to the abstract idea of
replacing a compromised computer with one protected against the threat.
Final Act. 18. The Examiner finds Appellants disclose no computer is
required to perform the act. Rather, the claimed "replacing" is satisfied by a
user locating and installing a software patch. Final Act. 19.
Appellants contend their claims meet the "machine-or-transformation
test," a test that remains valid post Alice. See Br. 18-19.
Appellants have not persuaded us that the claims may be met by a
human user installing a software patch and do not require acts performed by
a machine.
CLAIMS 1-3, 5-10, 12-15, 20-24, 26, 27, AND 30: ANTICIPATION BY WING
Appellants contend Wing fails to disclose replacing a failed or
compromised server with a virtual computing device including a tested and
proven countermeasure installed thereon. Br. 22. Appellants argue Wing
has no teaching of installing anything on the rollback virtual machine before
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Application 12/220,893
failover. A rollback virtual machine is a replica of the machine before it was
corrupted without any active countermeasures installed thereon. As such,
Wing's rollback machine cannot anticipate the Appellants' claimed subject
matter. Id.
The Examiner finds Wing provides two relevant disclosures. The
Examiner finds Wing discloses a "rollback" operation to the "most recent
viable rollback virtual machine." Ans. 23 ..
The Examiner further finds Wing discloses running an antivirus
product. Id. The Examiner finds Appellants disclose an "active"
countermeasure is well-known in the art and is "one or more of a patch, an
anti-virus patch, and an antivirus computer program product." Final Act. 17.
Appellants do not file a Reply to the Examiner's Answer and are not
persuasive that the Examiner has erred.
CLAIMS 4, 11, 16-19, 25, 28, AND 29: ANTICIPATION/OBVIOUS OVER WING.
Appellants advance substantially the same contentions as alleged
above in favor of Claims 1-3, 5-10, 12-15, 20-24, 26, 27, and 30. See Br.
23-24. Appellants do not file a Reply to the Examiner's Answer and, as
discussed above, we are not persuaded that the Examiner has erred.
Appellants next contend the Examiner fails to provide motivation to
modify Wing. Br. 26. Appellants do not file a Reply to the Examiner's
Answer and, as discussed above, we are not persuaded that the Examiner has
erred in finding Wing, without modifications, meets the claimed limitations.
CLAIMS 1-30: OBVIOUSNESS OVER WING AND SOBEL
As discussed above, we agree with Appellants that Wing teaches
rollback to a prior state, but does not disclose updating the virus protection
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of the rollback machine. The Examiner finds Sobel provides a clear
statement of the need to update the protection of system restoration images
(rollback machines). Appellants do not file a Reply to the Examiner's
Answer and, as discussed above, we are not persuaded that the Examiner has
erred.
DECISION
The rejection of Claims 1-30 under 35 U.S.C. § 112(a, or pre-AIA 1st
if) as lacking enablement is AFFIRMED.
The rejection of Claims 26-30 under 35 U.S.C. § 112(a, or pre-AIA
1st if) as failing the written description requirement is AFFIRMED.
The rejection of Claims 1-30 under 35 U.S.C. § 112(b, or pre-AIA 2nd
if) as indefinite is AFFIRMED.
The rejection of Claims 1-30 under 35 U.S.C. § 101 is AFFIRMED.
The rejection of Claims 1-3, 5-10, 12-15, 20-24, 26, 27, and 30
under 35 U.S.C. § 102(b) is AFFIRMED.
The rejection of Claims 4, 11, 16-19, 25, 28, and 29 under 35 U.S.C.
§ 102(b), or in the alternative, under 35 U.S.C. § 103(a) is AFFIRMED.
The rejection of Claims 1-30 under 35 U.S.C. § 103(a) is
AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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