Ex Parte Do et al

Patent Trial and Appeal Board

Feb 25, 2013

11457378 (P.T.A.B. Feb. 25, 2013)

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.
11/457,378 07/13/2006 Phuc Ky Do RPS920060075US1 (053) 7093
50594 7590 02/26/2013
CAREY, RODRIGUEZ, GREENBERG & O''''KEEFE, LLP
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33487
EXAMINER
ESKANDARNIA, ARVIN
ART UNIT PAPER NUMBER
2453
MAIL DATE DELIVERY MODE
02/26/2013 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 PATENT TRIAL AND APPEAL BOARD
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Ex parte PHUC KY DO and JUSTIN M. PIERCE
____________________

Appeal 2010-0094691
Application 11/457,378
Technology Center 2400
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Before JEAN R. HOMERE, ERIC B. CHEN, and MICHAEL J. STRAUSS,
Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 The Real Party in Interest is International Business Machines, Corp.
(App. Br. 1.)

Appeal 2010-009469
Application 11/457,378

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-20. (App. Br. 2.) We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
Appellants’ Invention
Appellants invented a method and system for regulating a user’s
access to a file system. In particular, upon intercepting the user’s request to
access a file, a file system firewall (230) disposed between the file system
(220) and the operating system (250) utilizes a rule key formed from an
application based attribute (e.g., application ID, user ID, request type)
according to an access rule in a set of access rules (240) to permit or deny
the request. (Figs. 1 & 2, Spec. [0006], [0007].)
Illustrative Claim
Independent claim 1 further illustrates the invention as follows:

1. A data processmg system configured for file
system access, the data processing system comprising:
a file system;
an operating system;
a set of access rules, each of the access rules having an
associated rule key; and,
a file system firewall disposed between the file system
and the operating system, the file system firewall comprising
program code enabled to permit or deny a file system request
according to an access rule in the set of access rules associated
with a rule key formed from an application based attribute in
the file system request.

Appeal 2010-009469
Application 11/457,378

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Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Nagampalli US 2006/0161966 A1 Jul. 20, 2006

Rejection on Appeal
The Examiner rejects claims 1-20 under 35 U.S.C. § 102(e) as being
anticipated by Nagampalli.
ANALYSIS
We consider Appellants’ arguments seriatim as they are presented in
the Appeal Brief, pages 5-19 and the Reply Brief, pages 2-12.
Dispositive Issue: Have Appellants shown the Examiner erred in
finding that Nagampalli describes a file system firewall programmed to
permit or deny a file system request according to an access rule, in a set of
access rules, associated with a rule key formed from an application based
attribute in the request, as recited claim 1?
Appellants argue that Nagampalli does not describe the disputed
limitations emphasized above. In particular, Appellants argue that while
Nagampalli discloses a file system firewall that allows or denies access to a
requested file according to an access control criteria, Nagampalli does not
describe that the control criteria is associated with a rule key formed from an
application based attribute, such as application ID. (App. Br. 11-12.)
According to Appellants, Nagampalli’s disclosure of applying the criteria to
the requested file is not tantamount to a rule key being formed from an
application based attribute. (Id. at 12-13.) Similarly, Appellants argue that a
Appeal 2010-009469
Application 11/457,378

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file extension is not an application attribute that describes the nature of the
application that created the file. (Reply Br. 4-5.)
In response, the Examiner finds that Nagampalli’s disclosure of a
firewall system that utilizes an access control criteria to determine whether
to grant or deny access request to a file identified by its extension describes
the disputed limitations. (Ans. 11-12.)
On the record before us, we agree with the Examiner’s finding of
anticipation. Nagampalli discloses a firewall system that, upon intercepting
a remote file access request from a client computer, determines whether to
grant or deny the requested access based on an access control criteria, which
may be used to implement a security policy that is expressed in security
rules. (Nagampalli, [0007].) For example, the access control criteria may
indicate that a request to open certain files (e.g. executable files, MP3 files)
should not be allowed. (Nagampalli [0013]). Further, Nagampalli discloses
that upon intercepting the file access request, the firewall identifies rules
related to the filename, file extension type, and associated IP address.
(Nagampalli, [0017].) The rules may also specify which users can access
which types of files. The access control criteria can be based on a filename/
file extension, username, file attributes, access type. ( Nagampalli, [0020]).
We find that because the access control criteria can be based on file
attributes including filename, file extension, file type, as well as a username
indicated in a file request to thereby specify which users should be granted
access to which types of files, Nagampalli’s access control criteria describes
an access rule associated with a rule key formed from an application
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Application 11/457,378

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attribute in the file request. Therefore, we are not persuaded by Appellants’
arguments that Nagampalli does not describe the disputed limitations.
Further, even if the Nagampalli only taught an access control criteria
that regulates a requested access to a file, wherein the access control criteria
is not formed from an application based attribute, Appellants cannot rely
solely upon such distinction to patentably distinguish the claims over the
prior art of record. In particular, we find that because Appellants seek to
distinguish the rule key on the basis of its content (i.e. whether it includes
application attribute) as opposed to its function (to determine whether to
grant or deny the requested access,) the argued distinction is directed to non-
functional descriptive material, which is not entitled to patentable weight. In
a precedential Opinion, an expanded Board panel held that nonfunctional
descriptive material (sequence data) did not distinguish the claimed
computer-based system from a prior art system that was the same except for
its sequence data. See Ex parte Nehls, 88 USPQ2d 1883, 1887-88 (BPAI
2008) (precedential).2
We are therefore satisfied that the record before us supports by a
preponderance of the evidence that Appellants have not shown error in the
Examiner’s rejection of claim 1 as being anticipated by Nagampalli.

2 See also Ex parte Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005)
(informative) (aff’d 191 Fed. Appx. 959 (Fed. Cir. 2006) (stating if a
claimed phrase cannot alter how the process steps are to be performed to
achieve the utility of the invention or merely states an intended use or
purpose for the data, it is not entitled to patentable weight.)
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Application 11/457,378

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Regarding claims 2-6, Appellants argue that Nagampalli does not
describe that the rule key is formed from an application ID, a user ID,
request type. (App. Br. 13-16, Reply Br. 5-8.) These arguments are not
persuasive. As discussed above, Nagampalli discloses that the access
control criteria can be based on a filename, a file extension, user name, file
type, etc. It follows that Appellants have not shown error in the Examiner’s
rejection of claims 2-6.
Regarding the rejection of claims 7-20, Appellants reiterate
substantially the same arguments submitted for patentablity of claims 1-6
above. (App. Br. 13-19, Reply Br. 8-12.) As discussed above, these
arguments are not persuasive. See 37 C.F.R. § 1.37(c)(1)(vii).
Consequently, for the same reasons, Appellants have failed to show error in
the Examiner’s rejections of claims 7-20.
DECISION
We affirm the Examiner’s rejections of claims 1-20 as set forth above.
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

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