Ex Parte Dool et alDownload PDFPatent Trial and Appeal BoardNov 30, 201714309299 (P.T.A.B. Nov. 30, 2017) 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. 14/309,299 06/19/2014 James Dool P52505C (920-0176USC) 8160 13205 7590 12/04/2017 Rlank Rome. T T P - MoAfee EXAMINER 717 Texas Avenue GETACHEW, ABIY Suite 1400 Houston, TX 77002 ART UNIT PAPER NUMBER 2434 NOTIFICATION DATE DELIVERY MODE 12/04/2017 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): hou stonpatents @ blankrome .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAMES DOOL, DAVID JUCHE, and VISHNU VARADARAJ1 Appeal 2017-006655 Application 14/309,299 Technology Center 2400 Before MARC S. HOFF, JOHNNY A. KUMAR, and TERRENCE W. McMILLIN, Administrative Patent Judges. KUMAR, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Introduction Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection of claims 1—24. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 According to Appellants the Real Party in Interest is McAfee, Inc. Appeal 2017-006655 Application 14/309,299 Exemplary Claim Exemplary claim 1 under appeal reads as follows: 1. A non-transitory machine-readable medium, on which are stored instructions, comprising instructions that when executed cause a programmable device to: launch an installer for an anti-malware software on the programmable device; perform a risk assessment of the programmable device to determine whether malware on the programmable device may affect installation of the anti-malware software; perform a pre-install scan and clean operation on the programmable device by a pre-install scanner responsive to the risk assessment indicating that malware on the programmable device may affect installation of the anti-malware software; and install a main portion of the anti-malware software responsive to the pre-install scan and clean operation. Rejections 1. Claims 1-7, 10, 16-18, 20-22 and 24 are rejected under 35 U.S.C. 102(b) as being anticipated by over Kramer et al. (2006/0130141 Al, pub. June 15, 2006) hereinafter refer as to Kramer. 2. Claims 8-9, 11-15, 19 and 23 are rejected under 35 U.S.C. 103(a) as being unpatentable over Kramer in view of Tarbotton et al. (US 2009/0100519 Al, pub. April 16, 2006) hereinafter refer as to Tarbotton. Appellants ’ Contentions 1. Appellants contend that the Examiner erred in rejecting claim 1 because “Kramer Makes No Risk Assessment Prior 2 Appeal 2017-006655 Application 14/309,299 To Installing the Cleaner Tool.” Reply Br. 5. In particular, Appellants contend: Examiner’s only argument is to cite the ordinary operation of the cleaner tool of Kramer that is manifestly executed after the cleaner tool is installed. The Examiner continues to fail to recognize the difference between the operations of the cleaner tool after it is installed and the claimed actions taken before the anti malware software is installed, to prevent problems already on the computer from corrupting the installation. Nor does the Examiner make any effort to explain how something performed by the cleaner tool after it is installed can possibly be a risk assessment made prior to installing the anti-malware software (the “cleaner tool” in Kramer). Id. (hereinafter “the before/after” feature, emphasis added). 2. Appellants contend that the Examiner also erred in rejecting claim 1 because (a) “Kramer Fails to Determine Whether Malware on the Programmable Device May Affect Installation of the Anti-Malware Software” (Reply Br. 6); (b) “Checking for an Updated Version of a Tool Is Also Not a Pre-Install Risk Assessment” (Id at 7); and (c) “Installing an Anti-Malware Software and Running It Is Not the Same Thing as Performing a Pre-Install Scan and Clean Operation” (Id at 7-8). In particular, Appellants contend: Nothing in the passage cited by Kramer even remotely suggests that the scanning method 600 performed prior to installation of the anti-malware software or that 3 Appeal 2017-006655 Application 14/309,299 it is intended to scan for malware that “may affect installation of the anti-malware software” as claimed. Instead, the anti-malware software of Kramer is already installed, and running an ordinary scan of the computer system, followed by obtaining and executing code to remove the specific malware found. Id. (hereinafter “pre-install risk assessment” feature, emphasis added). Issues on Appeal 1. Did the Examiner err in rejecting claims 1-7, 10, 16-18, 20-22, and 24 as being anticipated over Kramer? 2. Did the Examiner err in rejecting claims 8-9, 11-15, 19, and 23 as being obvious over Kramer and Tarbotton? ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments that the Examiner has erred. We disagree with Appellants’ above contentions 1 and 2. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief. We concur with the conclusions reached by the Examiner. We highlight and address specific findings and arguments for emphasis as follows. Initially, we agree with the Examiner’s findings in the Answer 21—26 because Appellants have not cited to an explicit definition of a “risk assessment” in the Specification that would preclude the Examiner's broader reading. 4 Appeal 2017-006655 Application 14/309,299 “In the patentability context, claims are to be given their broadest reasonable interpretations . . . limitations are not to be read into the claims from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citations omitted). Any special meaning assigned to a term “must be sufficiently clear in the specification that any departure from common usage would be so understood by a person of experience in the field of the invention.” Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008) (“A patentee may act as its own lexicographer and assign to a term a unique definition that is different from its ordinary and customary meaning; however, a patentee must clearly express that intent in the written description.”). Absent an express “intent to impart a novel meaning to a claim term[s], the words are presumed to take on the ordinary and customary meanings attributed to them by those of ordinary skill in the art.” Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003) (citation omitted). As to contention 1, relating to the “before/after” feature, Appellants’ arguments are not commensurate with the scope of the claim. Claim 1 does not recite performing a risk assessment before installing the cleaner tool. As to contention 2, relating to the “pre-install risk assessment” feature, Appellants’ arguments are not commensurate with the scope of the claim. Claim 1 does not recite “pre-install risk assessment.” As to Appellants’ contentions regarding claims 8, 9, 11-14, (App. Br. 17—22), we adopt the Examiner’s findings and underlying reasoning (Final Office Action 18-24), which are incorporated herein by reference. 5 Appeal 2017-006655 Application 14/309,299 DECISION We affirm the Examiner’s § 102(b) rejections of claims 1-7, 10, 16-18, 20-22, and 24 and the Examiner’s § 103(a) rejections of claims 8-9, 11-15, 19, and 23. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 6 Copy with citationCopy as parenthetical citation