Ex Parte Jung et al

Patent Trial and Appeal Board

Jul 29, 2014

11487595 (P.T.A.B. Jul. 29, 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.
11/487,595 07/14/2006 Edward K.Y. Jung SE1-0435-US 5035
80118 7590 07/30/2014
Constellation Law Group, PLLC
P.O. Box 580
Tracyton, WA 98393
EXAMINER
UDDIN, MOHAMMED R
ART UNIT PAPER NUMBER
2167
MAIL DATE DELIVERY MODE
07/30/2014 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 EDWARD K. Y. JUNG, ROYCE A. LEVIEN,
ROBERT W. LORD, MARK A. MALAMUD,
and WILLIAM HENRY MANGIONE-SMITH
____________

Appeal 2012-001993
Application 11/487,595
Technology Center 2100
____________

Before JEAN R. HOMERE, BRUCE R. WINSOR, and J. JOHN LEE,
Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-001993
Application 11/487,595

2
STATEMENT OF THE CASE
Appellants
1
appeal under 35 U.S.C. § 134(a) from the final rejection
of claims 1, 3-10, 12-18, 20-27, and 29-37. Claims 2, 11, 19, and 28 have
been cancelled. We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b).
We reverse.

CLAIMED SUBJECT MATTER
Independent claim 1 is exemplary of the claims on appeal and recites:
1. A network device comprising:
a memory coupled to a processor;
a processor-executable countermeasure engine operable
to generate a plurality of countermeasures useable in at least
substantially reducing a harm caused by a malware (hereafter
"malware countermeasure"), the malware countermeasures
generated responsive to an indication of the malware being
present on a node of a plurality of networked nodes;
a processor-executable decision module operable to
select a generated malware countermeasure for distribution
from among at least two of the generated malware
countermeasures and to determine if a criterion for distribution
of the selected generated malware countermeasure to the
plurality of networked nodes is met, the criterion for
distribution of the selected generated malware countermeasure
is independent of the indication of the malware being present
on the node of the plurality of networked nodes; and
a processor-executable distribution module operable to
transmit the selected generated malware countermeasure to a
first set of nodes of the plurality of networked nodes if the
criterion is met.

1
Appellants identify Searete, LLC, and Intellectual Ventures Management
LLC as the real parties in interest. (App. Br. 5.)
Appeal 2012-001993
Application 11/487,595

3
REJECTION
Claims 1, 3-10, 12-18, 20-27, and 29-37 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Liang (US 2005/0050378 A1), Bascle
(US 7,571,483 B1), and Komura (US 2007/0002838 A1).

ANALYSIS
2

Claims 1, 3-10, and 12-17
Appellants contend the Examiner erred in finding that Liang teaches
the “processor-executable decision module” element recited in independent
claim 1. (App. Br. 24.) We agree the Examiner’s finding was erroneous.
As the Examiner found (Ans. 5-6, 16-17), Liang teaches an anti-virus
system featuring a “controller 126” that controls more than one “network
virus monitor 102.” (Liang, fig. 1, ¶¶ 43, 58, 72.) The Examiner found that
by selecting between two network virus monitors, the controller in Liang
teaches the decision module “operable to select a generated malware
countermeasure for distribution from among at least two of the generated
malware countermeasures,” as recited in claim 1. (Ans. 5, 16-17.)
However, on its face, Liang’s virus monitors cannot be “generated malware
countermeasures” because they were not “generated responsive to an

2
Our analysis was conducted with reference to Appellants’ Appeal Brief,
filed May 31, 2011 (“App. Br.”), and the Examiner’s Answer, filed August
1, 2011 (“Ans.”). We did not consider Appellants’ Reply Brief, which was
untimely filed and contained only arguments that were neither responsive to
points made in the Examiner’s Answer nor based on new law or evidence
unavailable at the time Appellants’ Appeal Brief was filed. See 37 C.F.R. §
41.41 (2010); see also Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI
2010) (informative) (“[T]he reply brief [is not] an opportunity to make
arguments that could have been made in the principal brief on appeal to
rebut the Examiner’s rejections, but were not.”).
Appeal 2012-001993
Application 11/487,595

4
indication of the malware being present on a node,” as required by the claim.
To the contrary, Liang discloses that the virus monitors operate to detect
viruses (malware), not that they are generated in response to viruses being
detected. (See Liang, ¶¶ 58-59.) Thus, the Examiner has failed to show how
Liang’s controller teaches or suggests “a processor-executable decision
module operable to select a generated malware countermeasure for
distribution from among at least two of the generated malware
countermeasures,” as recited in claim 1.
For the above reasons, we do not sustain the Examiner’s rejection of
claim 1. Claims 3-10 and 12-17 depend on claim 1, and Appellants argue
their patentability on the same basis as claim 1. (App. Br. 36-37.) Thus, we
also do not sustain the rejection of those claims.

Claims 18, 20-27, and 29-34
Appellants contend the Examiner erred in finding that Liang teaches
“selecting a generated malware countermeasure for distribution from among
at least two of the generated malware countermeasures,” as recited in
independent claim 18. (App. Br. 50.) The Examiner rejected claim 18 on
the same basis as claim 1. (Ans. 14; see also id. 26.) For similar reasons as
regarding claim 1, we agree the Examiner’s findings with respect to claim 18
are also erroneous. Thus, we do not sustain the rejection of independent
claim 18 as well as dependent claims 20-27 and 29-34, the patentability of
which were argued on the same basis as claim 18. (App. Br. 63.)

Appeal 2012-001993
Application 11/487,595

5
Claims 35-37
Appellants contend the Examiner erred in finding that Liang teaches
“means for selecting a generated malware countermeasure for distribution
from among at least two of the generated malware countermeasures,” as
recited in independent claim 35. (App. Br. 77-78.) The Examiner rejected
claim 35 on the same basis as claim 1 with respect to this limitation. (Ans.
14.) For similar reasons as regarding claim 1, we agree the Examiner’s
findings with respect to claim 35 are also erroneous. Thus, we do not
sustain the rejection of independent claim 35 as well as dependent claims 36
and 37, the patentability of which were argued on the same basis as claim
35. (App. Br. 90.)

DECISION
We REVERSE the Examiner’s rejection of claims 1, 3-10, 12-18, 20-
27, and 29-37 under 35 U.S.C. § 103(a).

REVERSED

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