Ex Parte Fisher et al

Board of Patent Appeals and Interferences

Apr 11, 2011

10386530 (B.P.A.I. Apr. 11, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte LEE ADAM FISHER, JACK ROBERT ARRON CLARK,
and NICHOLAS EDWARD BAINES
____________________

Appeal 2009-005913
Application No. 10/386,530
1

Technology Center 2400

____________________

Before JOSEPH F. RUGGIERO, ROBERT E NAPPI, and MARC S. HOFF,
Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

1
The real party in interest is McAfee, Inc.
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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Non-Final
Rejection of claims 1-36. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
Appellants‟ invention concerns controlling computers to control at
least one security mechanism of a data processing apparatus. A secure
communication link is established between the data processing apparatus
and a remote alert message generating computer. The remote computer
generates an alert message and transfers said alert message to the data
processing apparatus via the secure communications link. Triggering code
automatically triggers at least one security action by at least one security
mechanism of the data processing apparatus in response to the alert message,
as configured by user programmable response configuration parameters of
the data processing apparatus (Spec. 3-4).
Claim 1 is exemplary of the claims on appeal:
1. A computer program product embodied on a tangible computer
readable medium for controlling computers to control at least one security
mechanism of a data processing apparatus, said computer program product
comprising:
link establishing code operable to establish an authenticated secure
network communication link between said data processing apparatus and a
remote alert message generating computer;
alert message generating code operable to generate an alert message
with said remote alert message generating computer;
alert message transferring code operable to transfer said alert message
from said remote alert message generating computer to said data processing
apparatus via said authenticated secure network communication link; and
triggering code operable to automatically trigger at least one security
action by said at least one security mechanism of said data processing
apparatus in response to said alert message as configured by user
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programmable response configuration parameters of said data processing
apparatus.

The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Porras US 6,704,874 B1 Mar. 9, 2004
Pearson US 6,990,591 B1 Jan. 24, 2006
Norris US 7,028,338 B1 Apr. 11, 2006
Claim 25-36 stand rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
Claims 8, 20, and 32 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellants regard as their
invention.
Claims 1-9, 11-21, 23-33, 35, and 36 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Porras in view of Pearson.
Claims 10, 22, and 34 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Porras in view of Pearson and Norris.
Throughout this decision, we make reference to the Appeal Brief
(“App. Br.,” filed December 17, 2007), the Reply Brief (“Reply Br.,” filed
April 28, 2008) and the Examiner‟s Answer (“Ans.,” mailed March 17,
2008) for their respective details.

ISSUES
With respect to the § 101 rejection of claims 25-36, Appellants argue
that the claimed logic to establish a secure communication link, generate an
alert message, transfer said alert message, and automatically trigger at least
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one security action clearly, amounts to the transformation of an article to a
different state or thing (Reply Br. 21-22).
Appellants argue that the phrase “risk level indicator values” has
antecedent basis (App. Br. 13).
With respect to the § 103 rejection of claims 1-36, Appellants argue
that Pearson does not teach automatically triggering a security action by the
(remote) data processing apparatus, in response to the alert message,
according to user programmable response configuration parameters (App.
Br. 14). Appellants further contend that neither Porras nor Pearson teaches
that the alert message specifies at least one security action to be triggered
(App. Br. 17). Appellants assert that Pearson does not teach that the alert
message includes configuration data permitting a temporary countermeasure
to be established, or that the security action includes automatically
implementing said temporary countermeasure (App. Br. 19). Last,
Appellants assert that Norris does not teach performing a plurality of alert
message transfers to a plurality of destination data processing apparatuses
(App. Br. 19-20).
Appellants‟ contentions present us with the following issues:
1. Do claims 25-36 recite subject matter that is ineligible for patent
protection under § 101?
2. Does the phrase “risk level indicator values” lack proper antecedent
basis in the claims?
3. Does the combination of Porras and Pearson teach or fairly suggest
triggering code operable to automatically trigger at least one security action
by said at least one security mechanism of said data processing apparatus in
response to said alert message as configured by user programmable response
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configuration parameters of said data processing apparatus, as recited in
claims 1, 13, and 25?
4. Does the combination of Porras and Pearson teach or fairly suggest
generating an alert message which itself specifies at least one security action
by said at least one security mechanism of said remote data processing
apparatus, as recited in claims 11, 23, and 35?
5. Does the combination of Porras and Pearson teach or fairly suggest
automatically implementing a temporary countermeasure, as recited in
claims 7, 19, and 31?
6. Does Norris teach alert message transferring code operable to
perform a plurality of alert message transfers to a plurality of destination
data processing apparatuses, as recited in claims 10, 22, and 34?

FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Pearson
1. Pearson teaches a user interface displaying user-selectable
configuration options for selecting a security policy for the communication
device (col. 10, ll. 44-46).
2. Pearson teaches a Remote Monitoring Center (RMC) operative in
response to the selection of one of the selectable security levels to
automatically configure the communication device to monitor for certain
predetermined threats and to provide certain predetermined responses
thereto (col. 11, ll. 8-12).
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Norris
3. Norris teaches agents that, in response to an alert, broadcast
network-wide (i.e. to “all routers, firewalls and other edge devices”) the
detection of a threat (col. 4, ll. 45-55).

PRINCIPLES OF LAW
The machine-or-transformation test is a useful and important clue, an
investigative tool, for determining whether some claimed inventions are
processes under § 101. See Bilski v. Kappos, 130 S.Ct. 3218, 3227 (2010).
The U.S. Court of Appeals for the Federal Circuit stated the “machine-or-
transformation test” for process claims as follows:
The machine-or-transformation test is a two-branched inquiry;
an applicant may show that a process claim satisfies § 101
either by showing that his claim is tied to a particular machine,
or by showing that his claim transforms an article. See
[Gottschalk v.] Benson, 409 U.S. [63], 70 [(CCPA 1972)].
Certain considerations are applicable to analysis under either
branch. First, as illustrated by Benson and discussed below, the
use of a specific machine or transformation of an article must
impose meaningful limits on the claim‟s scope to impart patent
eligibility. See Benson, 409 U.S. at 71-72. Second, the
involvement of the machine or transformation in the claimed
process must not merely be insignificant extra-solution activity.
See [Parker v.] Flook, 437 U.S. [584,] 590 [(1978)].

In re Bilski, 545 F.3d 943, 961-62 (Fed. Cir. 2008) (en banc), aff’d sub nom.
Bilski v. Kappos, 130 S. Ct. 3218 (2010).
However, the machine-or-transformation test is not the sole test for
deciding whether an invention is a patent-eligible process. Bilski, 130 S.Ct
at 3227. “In searching for a limiting principle, [the Supreme] Court‟s
precedents on the unpatentability of abstract ideas provide useful tools.” Id.
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at 3229. The Supreme Court outlined one such precedent: In Benson, the
Court considered whether a patent application for an algorithm to convert
binary-coded decimal numerals into pure binary code was a “process” under
§ 101. 409 U.S., at 64-67. The Court first explained that “„[a] principle, in
the abstract, is a fundamental truth; an original cause; a motive; these cannot
be patented, as no one can claim in either of them an exclusive right.‟” Id. at
67 (quoting Le Roy [v. Tatham, 55 U.S. 156], at 175 [(1852)]). The Court
then held the application at issue was not a “process,” but an unpatentable
abstract idea. “It is conceded that one may not patent an idea. But in
practical effect that would be the result if the formula for converting…
numerals to pure binary numerals were patented in this case.” 409 U. S. [63],
at 71. A contrary holding “would wholly preempt the mathematical formula
and in practical effect would be a patent on the algorithm itself.” Id. at 72.
Bilski at 3230.
“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 US 398, 406 (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) where in evidence, so-called secondary considerations.
Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also KSR, 550 US
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at 407 (“While the sequence of these questions might be reordered in any
particular case, the [Graham] factors continue to define the inquiry that
controls.”)

ANALYSIS
§ 101 REJECTION OF CLAIMS 25-36
We disagree with the Examiner‟s conclusion that claims 25-36 are
directed to nonstatutory subject matter. Whether the limitations of these
claims imply the use of any tangible hardware, or merely recite “software
per se” (Ans. 3), is not the relevant inquiry. Rather, we find that the
limitations of independent claims 25, 35, and 36
2
(i.e., logic to establish a
secure communication link between two computers, logic to generate an
alert message, and logic to transfer an alert message from a generating
computer to a remote computer via the secure communication link) tie the
claimed subject matter to particular machines (i.e., the alert generating
computer and the remote computer). See Bilski v. Kappos, 130 S.Ct. 3218,
3227 (2010). Accordingly, we conclude that claims 25-36 are directed to
patent-eligible subject matter, and we will not sustain the Examiner‟s 35
U.S.C. § 101 rejection.
§ 112 REJECTION OF CLAIMS 8, 20, AND 32
We disagree with the Examiner‟s conclusion that “indicator values”
lacks antecedent basis, predicated on the Examiner‟s finding that “a risk
level indicator does not necessarily have to be a value” (Ans. 8). An

2
We observe that claim 36 is initially cast as an “apparatus,” and read the
second line of claim 36 assuming that Appellants intended to claim “said
apparatus,” rather than “said computer program product.”
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“indicator” of a condition inevitably takes on one of at least two values. At a
minimum, the condition is either present or not present; thus, the indicator
will be either “on” or “off.” (An indicator may of course have many more
than two possible values.) We therefore find that the claimed “risk level
indicator” inherently possesses a “risk level indicator value,” and conclude
that the term does not lack antecedent basis. As a result, we will not sustain
the § 112 rejection of claims 8, 20, and 32.
CLAIMS 1-6, 8-9, 12-18, 20, 21, 24-30, 32, 33, AND 36
We select claim 1 as representative of this group of claims, pursuant
to our authority under 37 C.F.R. § 41.37(c)(1)(vii).
Appellants‟ argument that Pearson does not teach “triggering code
operable to automatically trigger at least one security action … in response
to said alert message,” as configured by response configuration parameters
of the data processing apparatus (App. Br. 14), is not persuasive to establish
Examiner error. Appellants‟ argument against Pearson individually is
unavailing here, in view of the fact that the Examiner relies on Porras to
teach generation of an alert message by a remote alert message generating
computer (Ans. 4). The Examiner finds, and we agree, that Pearson discloses
automatically triggering a response to an alert message as configured by a
user through programmable response configuration parameters (FF 1, 2;
Ans. 5, 10). We also do not agree with Appellants‟ further argument that
Pearson teaches away from the claimed invention (App. Br. 15). Pearson
teaches [a remote monitoring center] receiving an alert message and,
responsive to selection of a selectable security level, providing a
predetermined response (FF 2).
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We therefore find that the Examiner did not err in rejecting claims 1-
6, 8-9, 12-18, 20, 21, 24-30, 32, 33, and 36 as unpatentable under § 103 over
Porras in view of Pearson. We sustain the Examiner‟s rejection.
CLAIMS 11, 23, AND 35
We agree with Appellants‟ argument (App. Br. 17) that neither Porras
nor Pearson teaches “alert message generating code [or logic] operable to
generate an alert message . . . said alert message specifying at least one
security action by said at least one security mechanism of said remote data
processing apparatus to be automatically triggered in response to said alert
message,” as these claims require. Accordingly, we will not sustain the
§ 103 rejection of claims 11, 23, and 35.
CLAIMS 7, 19, AND 31
Appellants‟ argument is persuasive to show that the Examiner erred in
rejecting these claims. We do not agree with the Examiner‟s finding (Ans. 7)
that Porras teaches automatically implementing a temporary
countermeasure. We have reviewed Porras and Pearson, and we find that
neither reference teaches the claim limitations. Accordingly, we find that the
Examiner erred in rejecting claims 7, 19, and 31 under § 103, and we will
not sustain the rejection.
CLAIMS 10, 22, AND 34
We do not agree with Appellants that Norris fails to suggest alert
message transferring code operable to perform a plurality of alert message
transfers to a plurality of destination data processing apparatuses specified in
a destination list held by said remote alert message generating computer, as
the claims require (App. Br. 20). Norris does not teach merely that
peripheral devices advertise their availability, as Appellants contend (Id.).
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The Examiner finds, and we agree, that Norris teaches agents that, in
response to an alert, broadcast network-wide (i.e. to “all routers, firewalls
and other edge devices”) the detection of a threat (Ans. 17; FF 3).
We therefore agree with the Examiner that the combination of Porras,
Pearson, and Norris teaches or suggests all the limitations of claims 10, 22,
and 34. Accordingly, we will sustain the Examiner‟s § 103 rejection.

CONCLUSIONS
1. Claims 25-36 recite subject matter that is eligible for patent
protection under § 101.
2. The phrase “risk level indicator values” does not lack proper
antecedent basis in the claims.
3. The combination of Porras and Pearson fairly suggests triggering
code operable to automatically trigger at least one security action by said at
least one security mechanism of said data processing apparatus in response
to said alert message as configured by user programmable response
configuration parameters of said data processing apparatus, as recited in
claims 1, 13, and 25.
4. The combination of Porras and Pearson does not teach or fairly
suggest generating an alert message which itself specifies at least one
security action by said at least one security mechanism of said remote data
processing apparatus, as recited in claims 11, 23, and 35.
5. The combination of Porras and Pearson does not teach or fairly
suggest automatically implementing a temporary countermeasure, as recited
in claims 7, 19, and 31.
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6. Norris teaches alert message transferring code operable to perform
a plurality of alert message transfers to a plurality of destination data
processing apparatuses, as recited in claims 10, 22, and 34.

ORDER
The Examiner‟s rejection of claims 1-6, 8-10, 12-18, 20-22, 24-30,
32-34, and 36 is affirmed.
The Examiner‟s rejection of claims 7, 11, 19, 23, 31, and 35 is
reversed.
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-IN-PART

ELD