Ex Parte Garay et al

Patent Trial and Appeal Board

Feb 11, 2014

10976353 (P.T.A.B. Feb. 11, 2014)

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.
10/976,353 10/27/2004 Juan A. Garay Garay 12-4 7711
46303 7590 02/12/2014
RYAN, MASON & LEWIS, LLP
1175 Post Road East
2nd Floor
Westport, CT 06880
EXAMINER
TRAN, TONGOC
ART UNIT PAPER NUMBER
2434
MAIL DATE DELIVERY MODE
02/12/2014 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
____________________

Ex parte JUAN A. GARAY and
LORENZ FRANCIS HUELSBERGEN
____________________

Appeal 2011-007350
Application 10/976,353
Technology Center 2400
____________________

Before JOSEPH F. RUGGIERO, JOHNNY A. KUMAR, and
DANIEL N. FISHMAN, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-007350
Application 10/976,353

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a non-final rejection
of claims 1, 3, 5-14, 16-19, 21-24, and 26-31. Claims 2, 4, 15, 20, and 25
have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
According to Appellants, the invention relates to a method and
apparatus for evaluating the security of a client. See Abstract.
Claims 1 and 21 are illustrative:
1. A method for evaluating the security of at least one client,
comprising:
providing at least one executable program to be executed by said
client, wherein said at least one executable program is one of a plurality of
possible programs and wherein said at least one executable program
provides an unpredictable result;
receiving a result from said at least one executable program; and
determining whether said client has been corrupted based on an
evaluation of said result, wherein said at least one executable program is
randomly generated and wherein said evaluation of said result includes
evaluating an elapsed time between when said at least one executable
program is provided to said client and when said result is received.
21. A method for generating a target program, comprising:
obtaining a first program; and
combining said first program with a randomly generated program to
generate said target program, wherein said target program inherits one or
more properties of said first program and wherein said target program
provides an unpredictable result.
Appeal 2011-007350
Application 10/976,353

3
Rejections
Claim 21 stands rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter. Ans. 4. 1
Claims 21 and 28 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Johnson (US 2004/0139340 A1; July 15, 2004). Ans. 4.
Claims 1, 3, 5-14, 16-19, 21-24, and 26-31 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Yodaiken (US 2004/0123137
A1; June 24, 2004) in view of Johnson. Ans. 5.
Claims 12 and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yodaiken in view of Johnson and further in view of Chow
(US 2005/0021966 A1; Jan. 27, 2005 (filed June 10, 2002)). Ans. 9.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions.
Rejection under 35 U.S.C. § 102(e) as anticipated by Johnson.2
Appellants contend that Johnson does not disclose “provides an
unpredictable result,” as recited in claims 21 and 28. App. Br. 6-8. The
Examiner finds that in Johnson, the “concatenating random transforms or
prepending or appending random ciphers to a program” would produce an

1 We pro forma affirm the § 101 rejection of claim 21, which was not
contested by Appellants.
2 As pointed out by Appellants (App. Br. 6-7), and admitted by the Examiner
(Ans. 10), we find that the failure to correctly label the prior art Johnson
reference in the Non-Final Rejection (page 3) was an inadvertent and
harmless error.
Appeal 2011-007350
Application 10/976,353

4
unpredictable result. Ans. 10-12. In particular, Appellants recite the claim
element, state the Examiner’s findings, and then allege that various sections
of Johnson do not disclose it. App. Br. 6-8. However, Appellants do not
respond to the Examiner’s findings, and we find Appellants have failed to
traverse the specific factual findings the Examiner has set forth in the
rejection for claims 21 and 28. See Ans. 4-5. In response to the Examiner’s
findings, Appellants merely restate the Examiner’s findings and disagree
(e.g., Reply Br. 2) without any explanation.
In other words, Appellants’ arguments amount to no more than
reciting the claim features and generally alleging that Johnson is deficient.
Merely pointing out certain claim features recited in independent claims 21
and 28 and nakedly asserting that Johnson fails to disclose such features
does not amount to a separate patentability argument. See 37 C.F.R.
§ 41.37(c)(1)(vii) (“A statement which merely points out what a claim
recites will not be considered an argument for separate patentability of the
claim.”); see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e
hold that the Board reasonably interpreted Rule 41.37 to require more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art.”); cf. In re Baxter Travenol Labs., 952 F.2d 388, 391
(Fed. Cir. 1991) (“It is not the function of this court to examine the claims in
greater detail than argued by an appellant, looking for [patentable]
distinctions over the prior art.”). On this record, we find Appellants have
failed to present substantive arguments and supporting evidence persuasive
of Examiner error regarding the aforementioned disputed limitation in
claims 21 and 28.
Appeal 2011-007350
Application 10/976,353

5
Rejections under 35 U.S.C. § 103(a).
We begin our analysis by again observing that Appellants respond to
the Examiner’s rejection of claims 1, 3, 5-14, 16-19, 21-24, and 26-31 by
merely reciting the language in the claims and asserting that the claimed
limitations are not disclosed in any of the cited art. See App. Br. 8-13;
Reply Br. 3-9. In addition, we find Appellants have failed to traverse the
specific factual findings the Examiner has set forth in the rejection of claims
1, 3, 5-14, 16-19, 21-24, and 26-31. See Ans. 5-9, 13-19.
Also, our reviewing Court has reaffirmed that the procedural burden
of establishing a prima facie case of obviousness is met, in accordance with
35 U.S.C. § 132, by stating reasons for a rejection together with information
and references as may be useful to the applicant in judging the propriety of
continuing prosecution. See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir.
2011). This the Examiner has done, over the course of many pages in the
Examiner’s Answer. See Ans. 5-9, 13-19.
The Court in Jung also spoke approvingly of the Board’s longstanding
practice of requiring the appellant to identify the alleged error in the
examiner’s rejection, with the panel then reviewing the rejection for error
based upon the issues identified by the appellant, and in light of the
arguments and evidence produced thereon. Jung, 637 F.3d at 1365-66
(citing Ex parte Frye, 94 USPQ2d 1072 (BPAI 2010) (precedential)).
Accordingly, we will sustain the Examiner’s § 103 rejections of
claims 1, 3, 5-14, 16-19, 21-24, and 26-31 for the reasons discussed supra
with respect to the rejection of claims 21 and 28.
It follows that Appellants have failed to establish the Examiner erred
in concluding that the combination of Johnson, Yodaiken, and Chow renders
Appeal 2011-007350
Application 10/976,353

6
claims 1, 3, 5-14, 16-19, 21-24, and 26-31 unpatentable, as Appellants have
failed to rebut the Examiner’s specific factual findings.

CONCLUSION
The rejection of claim 21 under 35 U.S.C. § 101 as being directed to
non-statutory subject matter is affirmed.
The rejection of claims 21 and 28 under 35 U.S.C. § 102(e) as being
anticipated by Johnson is affirmed.
The rejection of claims 1, 3, 5-14, 16-19, 21-24, and 26-31 under 35
U.S.C. § 103(a) as being unpatentable over Yodaiken in view of Johnson is
affirmed.
The rejection of claims 12 and 17 under 35 U.S.C. § 103(a) as being
unpatentable over Yodaiken in view of Johnson and further in view of Chow
is affirmed.

DECISION
The Examiner’s rejection of claims 1, 3, 5-14, 16-19, 21-24, and 26-
31 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)(1)(iv).

AFFIRMED

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