Ex Parte Hyde et al

Patent Trial and Appeal Board

Nov 15, 2017

12150934 (P.T.A.B. Nov. 15, 2017)

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.
12/150,934 04/30/2008 Roderick A. Hyde 0907-004-002-000000
10163
8163
138951 7590 11/17/2017
Advent, LLP/INTELLECTUAL VENTURES
The Advent Building
17838 Burke Street
Suite 200
Omaha, NE 68118
EXAMINER
HELLER, TAMMIE K
ART UNIT PAPER NUMBER
3766
NOTIFICATION DATE DELIVERY MODE
11/17/2017 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):
u spto @ adventip .com
sloma@adventip.com
ISFDocketInbox@intven.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RODERICK A. HYDE,
MURIEL Y. ISHIKAWA, ERIC C. LEUTHARDT,
MICHAEL A. SMITH, and LOWELL L. WOOD JR.
Appeal 2015-005067
Application 12/150,9341
Technology Center 3700
Before ANNETTE R. REIMERS, CYNTHIA L. MURPHY, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’
decision rejecting claims 1, 2, 10, 18, 27—29, 33, and 35—41. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and issue a NEW GROUND OF REJECTION under
37 C.F.R. § 41.50(b).
1 The Appellants identify Searete LLC as the real party in interest.
Appeal Br. 4.
Appeal 2015-005067
Application 12/150,934
ILLUSTRATIVE CLAIM
1. A method implemented in a medical apparatus at least
a portion of which is implanted in an animal and configured to at
least one of transmit or receive a communication, the method
comprising:
receiving a communication;
detecting an indication of a malware threat characteristic
in the received communication; and
implementing in the implanted medical device a
countermeasure responsive to the detected indication of the
malware threat characteristic in the received communication.
REJECTIONS
I. Claims 1, 2, 10, 18, 29, 33, and 35—41 are rejected under
35 U.S.C. § 102(b) as anticipated by Healy et al. (US 2005/0203582 Al,
pub. Sept. 15, 2005) (“Healy”).
II. Claims 27 and 28 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Healy and Persen et al. (US 2005/0288736 Al, pub. Dec.
29, 2005) (“Persen”).
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
Rejections I and II
The Appellants argue that independent claim 1 was rejected
erroneously because Healy does not teach the recited “detecting an
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indication of a malware threat characteristic in the received
communication.” See Appeal Br. 11—22.
Resolving this issue requires a construction of the term “malware.”
According to the rejection, “malware” is “software that is intended to
damage or disable computers and computer systems.” Answer 3. According
to the Specification, “[a] malware may include malicious software. In
another embodiment, a malware may include at least one of a virus, worm,
or Trojan horse.” Spec. 134. The Appellants presented dictionary
definitions of “malware,” during prosecution:
For example, a definition of malware includes “Software that is
written and distributed for malicious purposes, such as
impairing or destroying computer systems. Computer viruses
are malware.” The American Heritage® Science Dictionary,
(2005 by Houghton Mifflin Company)
http://www.thefreedictionary.com/malware (accessed January
4, 2012). For example, a definition of malware includes
“Malicious computer software that interferes with normal
computer functions or sends personal data about the user to
unauthorized parties over the Internet.” The American
Heritage® Dictionary of the English Language, Fourth Edition
(2000 by Houghton Mifflin Company, Updated in 2009)
http://www.thefreedictionary.com/malware (accessed January
4, 2012).
Amendment (Jan. 12, 2012), p. 22. The Appellants also cite the Rule 132
Declaration of Gregory T. Byrd, Ph.D. (hereinafter “Byrd Declaration”),
which states:
Malware is software that is executed by the system under
attack. (Software that is not executed is simply data; it is
harmless until the system executes the specified instructions.)
The malicious software causes the system to behave in such a
way as to defeat or circumvent security measures. For example,
the malware may cause the system to destroy or modify
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sensitive data, or it may cause the system to leak sensitive data
to untrusted external entities, or it may cause the system to
disable its own communication system.
Byrd Decl. 1 7.
These sources inform our determination that the broadest reasonable
construction of the claim term “malware” in the present case is computer
software that is designed to interfere with normal computer functions.
Under this construction, “malware” need not be executed by the system
under attack; software that is not executed could be “malware.”
Healy relates to a technique for preventing a specific type of
malicious attack on a computer system, called a “replay attack.” See Healy
49-50, 104. In a replay attack, a malicious entity records the exchange
through which a legitimate user authenticates itself to a computer system
and, then, the malicious entity replays the exchange, in order to gain access
to the computer system:
In a replay attack, the legitimate sender chooses a code,
communicates the code to the receiver, and then sends a valid
command. A hostile sender records this exchange and later
hijacks the session. Now the hostile sender can replay the
earlier exchange and the message receiver would receive a
legitimate code (the same code as received previously), and
then a legitimate command (the same command as received
previously).
Healy 149. The replay attack, as described in Healy, involves
surreptitiously obtained credentials (which are themselves legitimate) and
Healy does not disclose any software designed to interfere with normal
computer functions.
Although the replay attack that Healy describes (and endeavors to
thwart) is malicious, Healy does not disclose the use of “malware” or a
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Application 12/150,934
“communication” that contains an “indication of a malware threat
characteristic,” as recited in claim 1. Therefore, Healy does not disclose
“detecting an indication of a malware threat characteristic in the received
communication,” as claim 1 requires. Nor does Healy teach the similar
limitations of the other independent claims involved in this Appeal (claims
29 and 35). Accordingly, we do not sustain the rejection of claims 1, 2, 10,
18, 29, 33, and 35—41 under 35 U.S.C. § 102(b). Persen — which, in
addition to Healy, is cited in the rejection of dependent claims 27 and 28 —
does not cure the identified shortcoming of Healy. Accordingly, we do not
sustain the rejection of claims 27 and 28 under 35 U.S.C. § 103(a).
New Ground of Rejection (Claim 38)
Dependent claim 38 recites, in part: “The method of claim 0,
wherein . . . .” (Emphasis added).
The Final Office Action sets forth an objection to claim 38, stating
that the reference to the nonexistent “claim 0” appears to be “an
unintentional typographical error” and that “[appropriate correction is
required.” Final Action 3. The Appellants acknowledge this error and
express an intention to correct claim 38. See Appeal Br. 27.
According to 35 U.S.C. § 112,14, “a claim in dependent form shall
contain a reference to a claim previously set forth and then specify a further
limitation of the subject matter claimed.” Claim 38 does not “contain a
reference to a claim previously set forth,” as 35 U.S.C. § 112,14, requires.
Therefore, exercising our authority under 37 C.F.R. § 41.50(b), we set
forth a new ground of rejection of claim 38, based upon the identified
violation of 35 U.S.C. § 112,14.
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DECISION
We REVERSE the Examiner’s decision rejecting claims 1, 2, 10, 18,
29, 33, and 35^11 under 35 U.S.C. § 102(b).
We REVERSE the Examiner’s decision rejecting claims 27 and 28
under 35 U.S.C. § 103(a).
We issue a NEW GROUND OF REJECTION for claim 38 under 35
U.S.C. § 112,14, pursuant to 37 C.F.R. § 41.50(b).
This Decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
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 the appeal 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. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
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misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in MPEP § 1214.01.
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).
REVERSED; 37 C.F.R, $ 41.50(b)
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