Ex Parte Jung et al

Patent Trial and Appeal Board

Sep 23, 2013

11526213 (P.T.A.B. Sep. 23, 2013)

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.
11/526,213 09/22/2006 Edward K.Y. Jung SE1-0430-US 9660
80118 7590 09/24/2013
Constellation Law Group, PLLC
P.O. Box 580
Tracyton, WA 98393
EXAMINER
HERZOG, MADHURI R
ART UNIT PAPER NUMBER
2438
MAIL DATE DELIVERY MODE
09/24/2013 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, JOHN D. RINALDO JR.,
and LOWELL L. WOOD JR.
____________________

Appeal 2011-001238
Application 11/526,213
Technology Center 2400
____________________

Before THU A. DANG, JAMES R. HUGHES,
and JEFFREY S. SMITH, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 106, 108-118, 120-123, 127, 130-140, 142-146, 148, and 149 (App.
Br. 7). Claims 1-105, 107, 109, 119, 124-126, 128, 129, 141, and 147 have
been canceled (id.). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

A. INVENTION
Appellants’ invention is directed to a multi-network virus
immunization system that prevents or reduces damage caused by malicious
software code including at least one network policy device that determines a
virus associated with communication data and provides a prioritized bypass
for an anti-viral agent to prevent a virus infection on a non-infected network
device by sending a data packet having an identifier bit associated with the
virus and the anti-viral agent data (Abstract; Spec.¶ [0043]).

B. ILLUSTRATIVE CLAIM
Claim 106 is exemplary:
106. A method comprising:

receiving information associated with a virus via at least one network
policy device, the virus associated with communication data on a
communications network;

determining a priority level of at least one identifier by the at least one
network policy device, the at least one identifier being associated with an
anti-viral agent;

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prioritizing transmission of the at least one identifier through the at
least one network policy device, relative to the communication data and
based on the priority level of the at least one identifier; and

outputting the at least one identifier from the at least one network
policy device, for provision of the anti-viral agent on the communications
network, based thereon.

C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Huang US 2004/0073701 A1 Apr. 15, 2004
Liang US 2005/0050378 A1 Mar. 3, 2005
Philips US 2005/0182949 A1 Aug. 18, 2005
Ho US 7,020,150 B2 Mar. 28, 2006

Claim110 stands rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite, including a limitation having insufficient antecedent basis.
Claim123 stands rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
Claims 106, 108 -114, 117, 120-123, 127, 130-136, 139, and 142-144
stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Liang in
view of Huang.
Claims 115, 116, 137, 138, 145, 146, 148, and 149 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Liang in view of Huang
and Phillips.
Claims 118 and 140 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Liang in view of Huang and Ho.
Claims 106, 108-118, 120-123, 127, 130-140, 142-146, and 148-149
are provisionally rejected on the ground of nonstatutory obviousness-type
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double patenting as being unpatentable over claims 48, 52, 62, 67-68, 70, 72,
74-77, 79-92, 94-95, 97, and 150-165 of copending Application No.
11/526,0621, claims1, 4, 8-10, 21, 22, 30, 31, 34-41, 43-61, 65, 68, and 70 of
copending Application No. 11/413,9692, and claims 1, 10, 17, 20, 23-26, 28-
34, 43-45, 101, 104, 105, and 150-167 of copending Application No.
11/474,523.3
II. ISSUES
The dispositive issues before us are whether the Examiner has erred in
determining that:
1. “a recordable signal-bearing medium” (claim 123, emphasis
added) is directed to non-statutory subject matter; and
2. the combination of Liang and Huang teaches or would have
suggested “determining a priority level of at least one identifier by the at
least one network policy device, the at least one identifier being associated
with an anti-viral agent” and “prioritizing transmission of the at least one
identifier through the at least one network policy device, relative to the
communication data and based on the priority level of the at least one
identifier” (claim 106, emphasis added).

1 Application No. 11/526,062 issued on March 27, 2013 as Patent Number
8,424,089.
2 Application No. 11/413,969 issued on March 9, 2011 as Patent Number
7,917,956.
3Application No. 11/474,523 issued on May 9, 2012 as Patent Number
8,191,145.
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III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
The Invention
1. According to Appellants, examples of a signal bearing medium
include, but are not limited to, the following: a recordable type medium such
as a floppy disk, a hard disk drive, a Compact Disc (CD), a Digital Video
Disk (DVD), a digital tape, a computer memory, etc.; and a transmission
type medium such as a digital and/or an analog communication medium
(e.g., a fiber optic cable, a waveguide, a wired communications link, a
wireless communication link, etc.) (Spec. ¶ [0195]).
Liang
2. Liang discloses a distributed network having a computer
program product within a detection module for parsing and identifying a
selected computer virus and an infection and viral code payload module for
identifying a target client device not infected by the selected virus to be
infected with inoculation viral code (Abstract; ¶ [0016]). The distributed
network further includes computer code at the infection module that infects
those computers already infected by the selected virus and computer code
that sends inoculation viral code to the payload module which acts to
prevent further infection by the selected virus (¶ [0016]).
3. Once the affected computers have been identified, the computer
program product identifies a virus cleaning agent that has the effect of
cleaning the affected computers, inoculating the cleaned computers from
subsequent infections, and inoculating unaffected, but threatened computers,
from infection of the virus (¶ [0067]).
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Huang
4. Huang discloses a method and apparatus for routing packets in
a network in conjunction with a quality of service guarantee enabling
providers to leverage the intelligent and distributed content-based routing
technology guaranteeing a quality or level of service, priority routing for
real-time alerts and other real-time services, allocating bandwidth based on
quality of service (¶ [0009]). These real-time alerts have different priorities,
where security and fire alerts are given the highest priority, while news alerts
are given a lower priority (¶ [0138]). In addition, anti-virus files are routed
to using the highest priority link to ensure a real-time anti-virus update while
audio driver files may be routed at the lower priority link (¶ [0140]).
5. The apparatus uses content-based routing which involves
inspecting a payload section of a packet in order to determine how to process
the packet, whereby a message is compared subject-by-subject and attribute-
by-attribute with routing rules to determine a routing for the message (¶
[0090]). In particular, when an intelligent router 92 receives a packet for a
message, it determines from the packet a Channel Identification (ID) for the
corresponding message and retrieves attributes for the channel using this
same ID including location and data type of the packet (¶ [0091]). More
particularly, with regards to the process of real-time data delivery, an agent
128 determines a channel corresponding with the subscription using a
channel ID located within a message and calls an Application Program
Interface (API) for the channel (Fig. 17, steps 380 and 382; ¶¶
[0090],[0091], [0127], and [0139]).
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IV. ANALYSIS
35 U.S.C. §112, second paragraph
Claim 110
The Examiner rejects claim 110 under 35 U.S.C. § 112, second
paragraph, for lack of clarity and finds, pertaining to the recitation in claim
110 of “[t]here is insufficient antecedent basis for” “‘the at least one
identifier,’” since “[t]he ‘identifier’ as recited in this claim corresponds to
the information regarding the virus whereas the ‘the at least one identifier’
recited in the independent claim 106 corresponds to information identifying
the anti-viral agent” (Ans. 11).
Appellants present no separate argument for the patentability of claim
110 with respect to § 112, yet submit an amended claim in the Claims
Appendix section of the Appeal Brief (App. Br. 164). However, since the
proposed amendment has not been entered by the Examiner, we note that
this amended version of the claim is not before us on Appeal.
After reviewing the record on appeal, we agree with the Examiner and
find that Appellants have failed to present any substantive argument to show
error in the Examiner’s legal conclusion under 35 U.S.C. § 112, second
paragraph. In particular, claim 106 recites that “the at least one identifier
[is] “associated with an anti-viral agent” and claim 110 recites that
“receiving the at least one identifier and determining the information
associated with the virus, based on the identifier.” We find that there is
ambiguity as to whether “the at least one identifier being associated with an
anti-viral agent” is used to “determin[e] … information associated with the
virus” (claim 110).
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As set forth in the Examiner’s Answer, the Examiner has not
withdrawn the rejection (Ans. 11). Accordingly, Appellants have not shown
that the Examiner erred in rejecting claim 110 under 35 U.S.C. § 112,
second paragraph, as being indefinite.
Accordingly, we conclude that claim 110 does not reasonably apprise
those skilled in the art of its scope. Because we conclude that there are
ambiguities with respect to claim 110, we sustain the Examiner’s rejection
of claim 110 under 35 U.S.C. § 112, second paragraph.
35 U.S.C. §101
Claim 123
The Examiner finds that a “‘recordable signal bearing medium’ self-
defines itself as a type of signal bearing medium and any type of signal
bearing medium, given the broadest reasonable interpretation, comprise of
signals which are nonstatutory subject matter ” (Ans. 29). The Examiner
notes that the Specification discloses “only examples and not proof enough
that the recordable signal bearing medium does not comprise [ ] signals”
(Ans. 30).
Appellants contend “that the term ‘recordable signal bearing medium’
does not constitute a signal according to the broadest reasonable
interpretation standard” because the “[S]pecification gives specific examples
of recordable type signal bearing media that do not include signals and does
not provide any disclosure relating to recordable type signal bearing media
including signals” (App. Br. 16; Reply Br. 4).
To determine whether the claims are directed to statutory matter, we
give the claims their broadest reasonable interpretation. See In re Zletz, 893
F.2d 319, 321 (Fed. Cir. 1989). Although Appellants argue that the “term
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‘recordable signal bearing medium’ does not constitute a signal” (App. Br.
16), Appellants’ Specification discloses that “signal bearing medium
include[s] … a transmission type medium such as a digital and/or an analog
communication medium (e.g., a fiber optic cable, a waveguide, a wired
communications link, a wireless communication link, etc.)” (Spec. ¶ [0195]).
Appellants’ Specification merely recites a few of the probable storage
mediums including a wireless communication link without limiting the
storage medium to these devices (FF 1). That is, neither the language of the
Specification nor the language of the claim limit the term “recordable signal
bearing medium” to a definition of only tangible media, but rather, the
Specification merely gives non-limiting examples including intangible
media.
We refer Appellants to the Feb. 23, 2010 “Subject Matter Eligibility
of Computer Readable Media” policy statement by PTO Director David J.
Kappos in the Official Gazette of the USPTO (reproduced in part below):
The broadest reasonable interpretation of a claim drawn to a
computer readable medium ... typically covers forms of
nontransitory tangible media and transitory propagating signals
per se in view of the ordinary and customary meaning of
computer readable media, particularly when the specification is
silent. When the broadest reasonable interpretation of a claim
covers a signal per se, the claim must be rejected under 35
U.S.C. § 101 as covering non-statutory subject matter.

David J. Kappos, Subject Matter Eligibility of Computer Readable Media,
1351 OFF. GAZ. U.S. PAT. & TRADEMARK OFF. 212 (Feb. 23, 2010),
available at
http://www.uspto.gov/web/offices/com/sol/og/2010/week08/TOC.htm#ref20
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This reasoning is applicable here. Since the Specification gives only
non-limiting examples of what “recordable signal bearing medium” means,
we give “recordable signal bearing medium” its broadest reasonable
interpretation and conclude that this term is sufficiently broad enough to also
cover transitory propagating signals per se as well as of the listed exemplary
non-transitory tangible media.
Our reviewing court has held that “[a] transitory, propagating signal
[however] . . . is not a ‘process, machine, manufacture, or composition of
matter.’ [These] four categories define the explicit scope and reach of
subject matter patentable under 35 U.S.C. § 101; thus, such a signal cannot
be patentable subject matter.” In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir.
2007). Specifically, signals are “unpatentable … as failing a tangibility
requirement to be ‘manufactures’” because they are not “tangible medi[a].”
Id. at 1366 (emphasis added). Since the broadest reasonable interpretation
of claim 34 covers a signal per se, we see no error in the rejection of the
claim under 35 U.S.C. § 101 as covering non-statutory subject matter. In re
Nuijten, 500 F.3d at 1356-57 (transitory embodiments are not directed to
statutory subject matter). Accordingly, we find no error with the Examiner’s
suggestion to amend the claims and the Specification.
Therefore, we affirm the Examiner’s rejection of claim 123 under
35 U.S.C. § 101 as being directed to nonstatutory subject matter.
35 U.S.C. §103
Claims 106, 108-114, 117, 120-123,
127, 130-136, 139, and 142-144
Appellants contend that “the processing of packets at a router in
Huang is related to separating packets to be transmitted via different links
based on a priority associated with the respective packets, and not
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‘prioritizing transmission ... through the at least one network policy device
relative to the communication data’” (App. Br. 43). Appellants contend that
Liang and Huang do “not explicitly teach determining a priority level of at
least one identifier by the at least one network policy device, the at least one
identifier being associated with an anti-viral agent and prioritizing
transmission based on the priority level of the at least one identifier’” (App.
Br. 52).
However, the Examiner finds that since “Liang teaches that a client
device is directed to an anti-virus installation server to obtain the appropriate
anti-virus software,” “[i]t is inherent from this that to direct a client to the
anti- virus server, a pointer (identifier) should be provided to the client
device” (Ans. 30). The Examiner finds further that Huang teaches “that an
Intelligent router (network policy device) routes real-time alerts and
antivirus updates based on their channel IDs (identifiers) and corresponding
attributes to the subscribers using the highest priority links so that they reach
the subscribers in real time while it routes lower-priority information such as
news links with a lower priority” (Ans. 31).
We give the claim its broadest reasonable interpretation consistent
with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997). Claim 106 does not define “identifier” other than it is associated with
an anti-viral agent. Thus, we give “the at least one identifier” its broadest
reasonable interpretation as any data associated with the anti-viral agent.
Liang discloses a detection module for parsing and identifying a
selected computer virus and an infection and a viral code payload module
for identifying a target client device not infected by the selected virus to be
infected with inoculation viral code (FF 2). Once the affected computers
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have been identified, a virus cleaning agent is identified which has the effect
of cleaning the affected computers, inoculating the cleaned computers, and
inoculating unaffected computers (FF 3). We find that Liang discloses
transmission of data associated with inoculation viral code (an anti-viral
agent) through the at least one network policy device (detection module and
infection module).
In addition, Huang discloses routing packets in a network in
conjunction with a quality of service guarantee enabling providers to provide
priority routing; wherein, anti-virus files are routed on a highest priority link
and news alerts or audio files are routed on a lower priority link (FF 4). The
payload section of each packet is inspected in order to determine how to
process the packet, where the intelligent router determines the channel ID
and attributes of the packet based upon this same ID (FF 5). We find that
the priority routing comprises determining a priority level based upon the
data associated with an anti-viral file and prioritizing transmission of this
data through the intelligent router (network policy device) relative to
communication data, such as news or audio files, and based on the priority
level of the anti-virus file.
In view of our claim construction above, we find that the combination
of Liang and Huang at least suggests providing all the features of claim 106.
Accordingly, we find no error in the Examiner’s rejection of claim
106 under 35 U.S.C. § 103(a) over Liang in view of Huang. Appellants
present similar arguments to claims 114, 123, and127 having similar claim
limitations as that of claim 106 (App. Br. 77, 97, and 115). Therefore,
claims 114, 123, 127, and 145 having similar claim language and claims
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108-113, 117, 120-122, 130-136, 139, and 142-144 (depending from claims
106 and 127) which have not been argued separately, fall with claim 106.
Claims 111 and 137
Appellants contend that “the processing of packets at a router in
Huang is related to separating packets to be transmitted via different links
based on a priority associated with the respective packets, and not
‘associating the at least one identifier with a first queue and associating the
communication data with a second queue’” (App. Br. 62, Reply Br. 7)
Claim 111 does not define “queue” other than a first queue is
associated with the data relating to the anti-viral agent and a second queue is
associated with the communication data. Thus, we give “associating the at
least one identifier with a first queue and associating the communication
data with a second queue” its broadest reasonable interpretation as
associating a first storage unit with the data relating to the anti-virus agent
and associating a second storage unit with the communication data.
We find that Huang’s highest priority link comprises a storage unit for
data relating to the anti-virus file and the lower priority link comprises a
storage unit for data relating to communication. Thus, we find further that
Huang’s priority routing comprises associating a first storage unit with the
data relating to the anti-virus agent and associating a second storage unit
with the communication data.
Accordingly, we find no error in the Examiner’s rejection of claim
111 under 35 U.S.C. § 103(a) over Liang in view of Huang. Further, claim
37 (depending from claims 106) which has not been argued separately, falls
with claim 111.
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Claims 115, 116, 118, 137, 138, 140,
145, 146, 148, and 149
Appellants argue that claims 115, 116, 118, 137, 138, 140, 145, 146,
148, and 149 are patentable over the cited prior art for the same reasons
asserted with respect to claims 106 and 127 (App. Br. 47 and 119). Further,
regarding independent claim 145 (having similar claim limitations to those
of claim 106) and claims 146, 148, and 149, Appellants present similar
arguments to those made with respect to claim 106 (App. Br. 149).
As noted supra, however, we find that the combined teachings of
Liang and Huang at least suggest all the features of claims 106 and 127. We
therefore affirm the Examiner’s rejection of claims 115, 116, 137, 138, 145,
146, 148, and 149 under 35 U.S.C. § 103 over Liang in view of Huang and
Phillips and of claims 118 and 140 under 35 U.S.C. § 103 over Liang in
view of Huang and Ho.
Because our affirmance of the rejection of claims 106, 108-118,
120-123, 127, 130-140, 142-146 and 148-149 as unpatentable over Liang in
view of Huang is dispositive as to each claim on appeal, we do not reach the
Examiner’s provisionally rejected claims 106, 108-118, 120-123, 127, 130-
140,142-146 and 148-149 on the ground of nonstatutory obviousness-type
double patenting as being unpatentable over claims 48, 52, 62, 67-68, 70, 72,
74-77, 79-92, 94-95, 97 and 150-165 of copending Application No.
11/526,062 (Patent Number 8,424,089, issued March 27, 2013), claims 1,4,
8-10, 21, 22, 30, 31, 34-41, 43-61, 65, 68 and 70 of copending Application
No. 11/413,969 (Patent Number 7,917,956, issued March 9, 2011), and
claims1, 10, 17, 20, 23-26, 28-4, 43-45, 101, 104, 105 and 150-167 of
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copending Application No. 11/474,523 (Patent Number 8,191,145, issued
May 9, 2012).

V. CONCLUSION AND DECISION
The Examiner’s rejection of claim 110 under 35 U.S.C. § 112, first
paragraph, claims 123 under 35 U.S.C. § 101, and claims 106, 108-118,
120-123, 127, 130-140, 142-146, 148, and 149 under 35 U.S.C. § 103(a) 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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