Ex Parte Hubbard et al

Patent Trial and Appeal Board

Dec 22, 2016

11680494 (P.T.A.B. Dec. 22, 2016)

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.
11/680,494 02/28/2007 Dan Hubbard 4593.060US1 5374
141463 7590 12/27/2016
Schwegman Lundberg & Woessner / Forcepoint
P.O. Box 2938
Minneapolis, MN 55402
EXAMINER
WILLIS, AMANDA LYNN
ART UNIT PAPER NUMBER
2158
NOTIFICATION DATE DELIVERY MODE
12/27/2016 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):
uspto@slwip.com
SLW @blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAN HUBBARD and ALAN TSE
Appeal 2016-001743
Application 11/680,494
Technology Center 2100
Before JEFFREY S. SMITH, ERIC B. CHEN, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
CHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1—23. Claims 24—34 have been cancelled. We have jurisdiction
under 35 U.S.C. § 6(b). We reverse and enter a new ground of rejection
pursuant to our authority under 37 C.F.R. § 41.50(b).
STATEMENT OF THE CASE
Appellants’ invention relates to identifying active content in websites
on a network. (Abstract.)
Appeal 2016-001743
Application 11/680,494
Claim 1 is exemplary, with disputed limitation in italics:
1. A method of controlling access to requested web content,
implemented on at least one processor, comprising:
receiving, using at least the processor, a request for access to
web content located at an address specified by a uniform resource
locator (URL);
determining which processes are spawned by the web content
identified by the URL;
comparing which processes are spawned with a list to
determine properties of the URL; and
determining, using at least the processor, whether to allow the
request based at least partly on the determined properties.
Claims 1—23 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Golan (US 5,974,549; issued Oct. 26, 1999) and Russell-Falla
(US 6,266,664 Bl; issued July 24, 2001).
ANALYSIS
We are persuaded by Appellants’ arguments (App. Br. 11—12) that the
combination of Golan and Russell-Falla would not have rendered obvious
independent claim 1, which includes the limitations “determining which
processes are spawned by the web content identified by the URL” and
“comparing which processes are spawned with a list to determine properties
of the URL.”
The Examiner found that the security monitor of Golan for a Web
browser, which monitors API calls, corresponds to the limitations
“determining which processes are spawned by the web content identified by
the URL.” (Final Act. 3.) The Examiner further found that the security
monitor of Golan, which also does not permit certain API calls that would
2
Appeal 2016-001743
Application 11/680,494
breach security configurations, corresponds to the limitation “comparing
which processes are spawned with a list to determine properties of the
URL.” {Id.', see also Ans. 2-4.) We do not agree.
Golan relates to “a security monitor for securing untrusted and/or
unknown software downloaded from an external source” (col. 1,11. 5—7), in
particular “creating a secure sandbox within which a plurality of
downloaded software components can execute in a secure manner”
(Abstract). Golan explains that “[t]he monitored application normally
makes API calls 22 to the operating system 18” (e.g., Windows 95 or
Windows NT), such that “[API] calls are intercepted and monitored by
security monitor 20 within the secure sandbox, generally referenced 10” and
“[t]he security monitor does not permit the software component to call
certain APIs with certain parameters that would breach the security
configuration provided by a user.” (Col. 5,11. 3—11.) Golan further explains
that “[t]he security monitor detects when a downloaded software component
attempts to commit an action that breaches security and functions to halt the
component’s execution and issue a warning to the user.” (Col. 4,11. 58—61.)
Although the Examiner cited the security monitor of Golan, which
generally explains that API calls that may breach security are monitored
(Ans. 3—4), the Examiner has provided insufficient evidence to support a
finding that Golan teaches the limitations “determining which processes are
spawned by the web content identified by the URL” and “comparing which
processes are spawned with a list to determine properties of the URL,”
particularly when Golan is silent with respect to spawning a process. In
particular, Golan is silent with respect to API calls executing a spawn
function and comparing the results of such spawn function to any list. On
3
Appeal 2016-001743
Application 11/680,494
this record, the Examiner has not demonstrated that Golan teaches the
limitations “determining which processes are spawned by the web content
identified by the URL” and “comparing which processes are spawned with a
list to determine properties of the URL.”
Thus, we are persuaded by Appellants’ arguments that “Golan does
not disclose or suggest that the downloadable software components
themselves can spawn processes.” (App. Br. 11.) In particular, we are
persuaded by Appellants’ arguments that “[t]he difference between the
Examiner’s position and the claim language is demonstrated by [additional
evidence,] Microsoft TechNet, Chapter 3, Developing Phase: Process and
Thread Management, (May 31, 2006),” which “provides several examples of
process creation” including “one example [that] spawns a ‘notepad’ process
using the ‘CreateProcess’ API.” (Id. at 12.)
Accordingly, we do not sustain the rejection of independent claim 1
under 35 U.S.C. § 103(a). Claims 2—11 depend from independent claim 1.
We do not sustain the rejection of claims 2—11 under 35 U.S.C. § 103(a) for
the same reasons discussed with respect to independent claim 1.
Independent claims 12 and 23 recite limitations similar to those
discussed with respect to independent claim 1. We do not sustain the
rejection of claims 12 and 23, as well as dependent claims 13—22, for the
same reasons discussed with respect to claim 1.
NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b)
We enter the following new ground of rejection:
Claims 1,12, and 23 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Golan, Microsoft TechNet, and Russell-Falla.
4
Appeal 2016-001743
Application 11/680,494
As discussed previously, Golan explains that “[t]he monitored
application normally makes API calls 22 to the operating system 18” (e.g.,
Windows 95 or Windows NT), such that “[API] calls are intercepted and
monitored by security monitor 20 within the secure sandbox, generally
referenced 10” and “[t]he security monitor does not permit the software
component to call certain APIs with certain parameters that would breach
the security configuration provided by a user.” (Col. 5,11. 3—11.) In
particular, Golan explains the following:
Process and Thread APIs
The following APIs are used with processes and threads
and are monitored in order to prevent unauthorized access to the
address space and execution state of other processes and threads
running at the same time.
AttachThreadlnput
Create Process
Create Thread
CreateProcessAsUser....
(Col. 17,11.38-50.)
Microsoft TechNet explains that “[a]n alternative to using
CreateProcess [API] is to use one of the spawn functions that are present in
the standard C runtime.”
The combination of Golan and Microsoft TechNet is nothing more
than the simple substitution of the known spawn functions of Microsoft
TechNet for the Create Process API of Golan, to yield predictable results.
See KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). This
combination would result in the security function of Golan determining if
the spawn functions of Microsoft TechNet appear on the “Process and
Thread APIs” list of Golan, which breaches security protocol. Accordingly,
the combination of Golan and Microsoft TechNet teaches or suggests the
5
Appeal 2016-001743
Application 11/680,494
limitations “determining which processes are spawned by the web content
identified by the URL” and “comparing which processes are spawned with a
list to determine properties of the URL.”
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject
independent claims 1, 12, and 23 as unpatentable over Golan, Microsoft
TechNet, and Russell-Falla under 35 U.S.C. § 103(a).
Because Appellants do not allege error in the Examiner’s findings for
claims 2—11 and 13—22 we adopt the Examiner’s uncontested findings for
claims 2—11 and 13—22. Accordingly, we reject dependent claims 2—11 and
13—22 as unpatentable over Golan, Microsoft TechNet, and Russell-Falla
under 35 U.S.C. § 103(a).
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b).
37 C.F.R. § 41.50(b) provides that a “new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of proceedings (37 C.F.R. § 1.197 (b)) as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. . . .
6
Appeal 2016-001743
Application 11/680,494
DECISION
The Examiner’s decision rejecting claims 1—23 is reversed.
A new ground of rejection has been entered under 37 C.F.R.
§ 41.50(b) for claims 1, 12, and 23, rejected under 35 U.S.C. § 103(a) as
unpatentable over Golan, Microsoft TechNet, and Russell-Falla.
REVERSED
37 C.F.R, $ 41.50(b)
7