Ex Parte Grupe

Board of Patent Appeals and Interferences

Aug 26, 2008

09879071 (B.P.A.I. Aug. 26, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT GRUPE
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Appeal 2008-0838
Application 09/879,071
Technology Center 2100
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Decided: August 26, 2008
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Before JAMES D. THOMAS, JAY P. LUCAS,
And THU ANN DANG, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s plural
rejections of record. Since Appellant has canceled claims 2, 18, and 34,
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Application 09/879,071

claims 1, 3 through 17, 19 through 33, and 35 through 53 remain on appeal.
We have jurisdiction under 35 U.S.C. § 6(b).

Representative independent claim 1 is reproduced below:
1. A computer program product comprising a computer program
operable to control a scanning computer to produce a log file identifying
computer data from a source computer having specified content, said
computer program comprising;

scanning logic operable to scan computer data transferred from said
source computer to said scanning computer and to identify one or more
portions of said computer data having one or more predetermined
characteristics indicative of said computer data having said specified
content;

log generating logic operable to write details of said identified
portions to a log file, wherein said computer program product comprises log
transferring logic operable to control said scanning computer to transfer said
log file to said source computer from where said computer data is received;

wherein an amount of scanning of said computer data at said source
computer is reduced by: 1) scanning a copy of said computer data at said
scanning computer, and 2) scanning at said source computer only said
computer data indicated in said log file as having said one or more
predetermined characteristics indicative of said computer data having said
specified content.

The following references are relied on by the Examiner:
Angelo US 5,850,559 Dec. 15, 1998
Chess US 6,560,632 B1 May 6, 2003
(filing date July 16, 1999
Sumita US 6,581,207 B1 Jun. 17, 2003
(filing date June 29, 1999)
Schwering US 6,717,943 B1 Apr. 6, 2004
(filing data June 3, 1999)
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All claims on appeal stand rejected under 35 U.S.C. § 103. As
evidence of obviousness in a first stated rejection of claims 1, 3, 4, 8 through
15, 17, 19, 23 through 30, 32, 33, 35, 36, and 40 through 47, the Examiner
relies upon Schwering in view of Chess. To this combination of references,
the Examiner adds Sumita in a second stated rejection as to claims 5, 16, 20,
31, 37, and 48. In a third stated rejection, the Examiner relies upon
Schwering in view of Chess, further in view of Angelo as to claims 6, 7, 21,
22, 38, 39, 49, and 53.
Rather than repeat verbatim the positions of the Appellant and the
Examiner, reference is made to the lengthy positions in the principal and
Reply Briefs for Appellant’s positions, and to the Answer for the Examiner’s
positions.
OPINION
For the reasons set forth by the Examiner in the Answer, as expanded
upon here, we sustain the rejections of all claims on appeal under 35 U.S.C.
§ 103.
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“On appeal to the Board, an applicant can overcome a rejection
[under § 103] by showing insufficient evidence of prima facie obviousness
or by rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)).
“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
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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., 127 S. Ct. 1727,
1734 (2007).
The Supreme Court reaffirmed principles based on its precedent that
“[t]he combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”
KSR, 127 S. Ct. at 1739. The operative question in this “functional
approach” is thus “whether the improvement is more than the predictable use
of prior art elements according to their established functions.” Id. at 1740.
The Court noted that “[c]ommon sense teaches . . . that familiar items may
have obvious uses beyond their primary purposes, and in many cases a
person of ordinary skill will be able to fit the teachings of multiple patents
together like pieces of a puzzle.” Id. at 1742.
The Federal Circuit recently concluded that it would have been
obvious to combine (1) a device for actuating a phonograph to play back
sounds associated with a letter in a word on a puzzle piece with (2) a
processor-driven device capable of playing the sound associated with a first
letter of a word in a book. Leapfrog Enters., Inc. v. Fisher-Price, Inc.,
485 F.3d 1157, 1161 (Fed. Cir. 2007). In reaching that conclusion, the
Federal Circuit recognized that “[a]n obviousness determination is not the
result of a rigid formula disassociated from the consideration of the facts of a
case. Indeed, the common sense of those skilled in the art demonstrates why
some combinations would have been obvious where others would not.” Id.
at 1161 (citing KSR, 127 S. Ct. 1727, 1739 (2007)). The Federal Circuit
relied in part on the fact that Leapfrog had presented no evidence that the
inclusion of a reader in the combined device was “uniquely challenging or
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difficult for one of ordinary skill in the art” or “represented an unobvious
step over the prior art.” Id. (citing KSR, 127 S. Ct. at 1740-41).
In the absence of separate arguments with respect to claims subject to
the same rejection, those claims stand or fall with the claim for which an
argument was made. See In re Young, 927 F.2d 588, 590 (Fed. Cir. 1991).
See also 37 C.F.R. § 41.37(c)(1)(vii)(2004).
Dovetailing with this precedent, we note further that the test for
obviousness has been further characterized as not whether the features of a
secondary reference may be bodily incorporated into the structure of a
primary reference. It is also not that the claimed invention must be
expressly suggested in any one or all of the references. Rather, the test is
what the combined teachings of the references would have suggested to
those of ordinary skill in the art. In re Keller, 642 F.2d 414, 425 (CCPA
1981); In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991).
The prior art relied on to prove obviousness must be analogous art.
As explained in Kahn,
the ‘analogous-art’ test . . . has long been part of the primary Graham
analysis articulated by the Supreme Court. See Dann [v. Johnston,]
425 U.S. [219,] 227-29 (1976), Graham, 383 U.S. at 35. The
analogous-art test requires that the Board show that a reference is
either in the field of the applicant’s endeavor or is reasonably
pertinent to the problem with which the inventor was concerned in
order to rely on that reference as a basis for rejection. In re Oetiker, at
1447. References are selected as being reasonably pertinent to the
problem based on the judgment of a person having ordinary skill in
the art. Id. (“[I]t is necessary to consider ‘the reality of the
circumstances,’- in other words, common sense-in deciding in which
fields a person of ordinary skill would reasonably be expected to look
for a solution to the problem facing the invention.” (quoting In re
Wood, 599 F.2d 1032 (C.C.P.A. 1979)).

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Kahn, 441 F.3d at 986-87. See also In re Clay, 966 F.2d 656, 659 (Fed. Cir.
1992) (“[a] reference is reasonably pertinent if, even though it may be in a
different field from that of the inventor’s endeavor, it is one which, because
of the matter with which it deals, logically would have commended itself to
an inventor’s attention in considering his problem.”).
The Examiner’s positions in the Answer appear to be consistent with
the analytical framework outlined in the above-noted case law.
At the outset, to the extent recited in some claims on appeal,
particularly some dependent claims, the prior art discussion at Specification
pages 2 and 3 as filed indicates that certain antivirus programs having on
access and on demand mode capabilities were known in the art as well as
email and data filtering programs. Although not recited in the independent
claims, the data to be examined for predetermined characteristics are
computer viruses, worms, Trojans and other undesired content which were
also known in the art. This was done by a comparison functionality with a
library of data defining the content to be detected. This admitted prior art
discussion implicitly presumes that the same computer would perform the
functionalities discussed there.
The question in this appeal becomes where is the actual scanning
done? The claimed invention splits the function of scanning, which has to
be performed first by a scanning/backup computer that identifies by logging
functions certain files that are questionable according to their security
vulnerabilities. The second scanning function is performed in the principal
or a source computer, otherwise considered to be a main computer. The
applied prior art to Schwering and Chess emphasize the splitting of a
functionality of scanning to plural computer systems according to the
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Examiner’s reasoning and more clearly the actual teachings of this applied
prior art.
We observe a certain corresponding relationship among the features
of product independent claim 1, method independent claim 17, and
apparatus independent claim 33, in addition to a slightly different version
reciting the corresponding subject matter in independent claim 32.
Additionally, the same relationship exists among product independent claim
9, method independent claim 24, and apparatus independent claim 41. All
these claims are rejected within the first stated rejection. The third stated
rejection encompasses the remaining independent claims 6, 21, 38, and 49
which recite in addition to the general features of the independent claims
encompassed by the first stated rejection, the additional feature of a backup
computer being a specific functionality or embodiment of the claimed
scanning computer, where the backup computer performs a backup
procedure upon the computer data of the source computer.
Schwering’s system figure 1 contains plural computers each of which
is separately functionally assignable for communications to the outside
world 20, such as the Internet or an inside world 18, such as an intranet. The
background discussion of Schwering is very telling to the issues presented in
this appeal and the features recited in the claims that are argued to be
distinguishing. In a security and protection of network services environment
discussion beginning at column 1, the transmission of packets of information
is functionally indicated to be part of an overall larger series of information
files of data to the extent recited in some independent claims on appeal. The
concept of packet filtering is discussed beginning at column 2 to the extent
also recited in some dependent claims on appeal. Although Appellant’s
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admitted prior art discussion at Specification page 2 does not require the
elimination or deletion of any types of infected files or the like, it was
known in the art according to the discussion at the bottom of column 2, that
separate data machines or interface processors may examine packets of
communicated data and reject some in a comparison operation. This clearly
includes an introduction to the concept of a separate scanning processor to
the extent recited in all claims on appeal. The backup or duplication
capability of some independent claims is discussed in the mirrored data
volumes capability among plural storage systems beginning at the bottom of
column 3. Again, the concept is stated of the whole or part of a given
definable group of data may be transferred or otherwise communicated or
updated. The concept of log files is also introduced at the bottom of this
column.
Again, the concept of data filtering is discussed at column 4, as well
as the discussion of data replication or backup capabilities. As noted by the
Examiner, the separate logging and filtering concepts are also discussed at
the bottom of column 4 utilizing separate scanning computers. The concept
again is repeated of rejecting or accepting packets. Schwering’s details of a
security table in the middle of page 5 of the Summary of the Invention is
depicted in figure 3 and discussed at the bottom of column 7. This figure
depicts a security table for so-called IT entries to include various types of
data including the characterization of a fraction of all or less than the whole
of transferable data. Certain process servers of figure 1 are labeled to
perform certain functions including scanning of Internet traffic for viruses in
the discussion at the middle of column 8. This discussion also ends up
indicating in conjunction with the discussion at the bottom of column 9 as
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well the ability to send for separate processing a fraction or logged or
otherwise identifiable messages to a security officer/computer for security
analysis. The discussion at column 9 indicates a content routine for
determining or prohibiting information and rejecting it in separate scanning
functionalities. Separate filtering functions are also discussed.
The discussion at the bottom of column 10 also details the parallel or
backup computer systems capabilities that was known in the admitted prior
art to Schwering. The discussion in the paragraph bridging columns 4 and 5
of this reference effectively indicates that the inventive contribution of
Schwering is to integrate to a single system the prior art capabilities
discussed at columns 1 through 4 in Schwering’s background discussion.
Figure 4 of Schwering illustrates the capability of evaluating packet
information to route them to specific servers or processors for certain
processing functionalities unique among other processors. Figure 4B
illustrates determining forbidden content, then accepting or rejecting
selected (fractions of the content) packets; those rejected packets are further
processed/sent to another computer for more detailed analysis.
Within the above noted case law, the Examiner’s reasoning of
combinability continues the teaching value of Schwering of having
specialized processors in a plural processor environment for performing
certain scanning functions in a scanning computer or node such as to limit
the scanning capability in one computer by having the functionality of
scanning performed by a specialized or other node in the hierarchy
illustrated in Chess’s figure 1, for example. The entire discussion of Chess
illustrates the Examiner’s reasoning of combinability within 35 U.S.C. §
103.
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The discussion of Chess’s figure 1 at column 2 began from the initial
concepts at column 1 of nodes in Chess’s plural computer system. Within
the definitions of distributed systems in the first paragraph in the background
discussion at column 1 of Chess each node may perform some or all or none
of unique processing required for a given file of data, including the ability to
pass the file along to another node for further processing before it is routed
back toward the originator node or computer. The communication among
the various nodes or levels of figure 1 implicitly requires transmission and
receipt logic, to the extent recited in certain argued dependent claims, as
well as the capability to identify or otherwise log certain types of files for
special processing. The bottom of column 1 of Chess relates to virus
processing capabilities among each or unique PCs, further indicating that a
PC upon discovering a suspect or virus laden file may send a copy of that
file to a central computer for analysis in the manner correspondingly
performed by a scanning computer which sends such logged files back to a
central or source computer for further processing. So-called prescription
identifying data verifies and removes viruses to the extent recited in certain
dependent claims on appeal. The artisan may consider these types of
prescription communications as a logging type file to the extent claimed.
More particularly, the Examiner has relied upon the significant
discussion at the top of column 2 relating to malicious codes for the same
types identified earlier in the admitted prior art of the Specification as filed
as well as those in Schwering. This discussion at the top of column 2 is
significant because certain files that have been labeled suspect on one or
more of the claimed machines 110 in figure 1, for example, are identified
and passed to one or more administrator machine 120 in this figure for
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further limited processing and then, if necessary, to the central analysis
center 140 in this figure. This discussion also may be viewed as a filtering
function to the extent claimed as well as communicating a fractional part of
a larger data file. The discussion of filtering continues at the bottom of
column 2.
The Summary of the Invention at column 3 indicates units of digital
data in the context of logging file type of information that are communicated
among plural computers, to include updating communications for respective
data files. A separate scanning computer file is again taught to identify and
send back to an originating source node or to other nodes logging type
information for further processing to the extent claimed. Thus, the artisan
would well appreciate that not only does the introductory portion of Chess
teach the concepts of sending to a specialized processing computer
information for analysis, the focus of Chess and the particular teachings at
column 6 identified by the Examiner relate to the ability to send back to a
source node or computer identifying file information or logging information
in the form of updates lesser than all the data that may be communicated in
Chess’s distributed system.
To the extent recited in certain dependent claims, the feature of
repairing certain files is taught in a detailed discussion beginning with figure
1 at column 5, the capability of disinfecting files at column 6 and further
filtering email in processing embodiments at the bottom of column 8.
Moreover, certain filtering embodiments are further emphasized in
modifications taught at column 9, beginning at line 10.

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The concept of sending back to a source node computer in the form of
updates or results or logging files to the extent claimed is discussed and
associated with the showing in figure 3, based upon processing associated
with the node 200 according to the protocols illustrated there in figure 2.
Because figure 3 illustrates the concept of sending to all previous and other
nodes within the distributed system of figure 1, for example, identified files
for further processing identified in one node and sent to all other nodes,
including the originating or source node as claimed. Even the capability of
using a checksum of an identified file in advance of sending an actual file is
discussed in the paragraph bridging columns 5 and 6 that teaches the concept
of logging files and the elimination of certain files among a plurality of files
to the extent conveyed by the wherein clause at the end of each independent
claim on appeal. The clustering concept discussed at the bottom of column
2 of Schwering is also taught by the classification based on code similarities
in grouping of common files together as taught in association with figure 4
and the discussion beginning at the bottom of column 6 of Chess.
The reader will therefore appreciate the overlapping teaching value of
both references in many respects. Moreover, the requirements of certain
dependent claims argued, including dependent claims 10 through 13 and 15,
for example, have been addressed during our initial discussion preceding this
paragraph.
In the second stated rejection, the Examiner further relies upon Sumita
as to the features set forth in those dependent claims. Claim 5 is considered
to be exemplary and recites in the alternative banned words or phrases in
context of email or data filtering operations. Our earlier discussion of the
admitted prior art, and the teachings in Schwering and Chess together, would
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have led the artisan to understand that the additional teachings of Sumita as
relied upon by the Examiner as to filtering and the like are cumulative to
what has already been taught.
As the reader will appreciate, the third stated rejection further relies
upon Angelo in addition to Schwering and Chess to relate to the backup
capability requirements of independent claims 6, 21, 38, and 49. Angelo’s
teachings as relied upon by the Examiner, for example, at column 3, lines 1
through 27, relate to backup data and dovetail well with the backup and
redundant processing among plural computers taught in Schwering and
Chess as we outlined earlier in this opinion.
In conclusion, the evidence among the references relied upon by the
Examiner fully supports the Examiner’s rejections of the claims on appeal
within 35 U.S.C. § 103 to the extent argued. We have gone into great detail
identifying the overlapping teachings of Schwering and Chess. The
arguments presented at length in the Brief and Reply Brief appear to be
duplicative. These references directly met the allegations that the references
do not teach the features of the argued claims.
In view of the foregoing, the decision of the Examiner rejecting all
claims on appeal under 35 U.S.C. § 103 is affirmed since we find no error in
the Examiner’s rejections.

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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)(1)(iv).

AFFIRMED

pgc

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P.O Box 721120
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