Ex Parte Kyler

Board of Patent Appeals and Interferences

Sep 27, 2011

11148690 (B.P.A.I. Sep. 27, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DANIEL B. KYLER
____________

Appeal 2009-009211
Application 11/148,690
Technology Center 2100
____________

Before JOSEPH L. DIXON, JEAN R. HOMERE, and
JAMES R. HUGHES, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
The Patent Examiner rejected claims 14-17, 19-26, 28-32, and 34.
The Appellant appeals therefrom under 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

A. INVENTION
The invention at issue on appeal generally relates to “systems and
methods for keeping operating systems free of unwanted files and, more
particularly, identifying and removing unwanted files from network
servers.” (Spec. 1, ll. 15-17). The invention provides a system and method
for limiting files that can be saved to a system. Instead of looking only at
the file name, the invention can “review the data of the file to be saved to see
if it matches the data found in an unwanted file type.” (Spec. 3, l. 22- 4, l.
2).

B. ILLUSTRATIVE CLAIM
Claim 14, which further illustrates the invention, follows.
14. A method, comprising:
intercepting an operation to save a file to a system;
scanning contents of said file to generate a file signature
corresponding to said file, wherein said file signature is
dependent upon data stored within said file;
determining whether said file signature corresponding to
said file matches one or more signatures stored in a signature
database;
in response to determining that said file signature
matches one or more signatures stored in said signature
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database, executing a storage policy with respect to said file;
and
in response to determining that said file signature
matches no signatures stored in said signature database, saving
said file to said system.

C. REFERENCES
The Examiner relies on the following references as evidence:
Guck US 5,864,870 Jan. 26, 1999
Abraham US 5,983,270 Nov. 9, 1999

AIX Version 4.3 Commands Reference, Volume 2, Mar. 5, 2001 available at
http://web.archive.org/web/20010305083622/http://www.unet.univie.ac.at/ai
x/cmds/aixcmds2/. . . (last visited July 5, 2007) (“file command”).

D. REJECTIONS
Claim 14-16, 19-24, 26-31, and 34 stand rejected under 35
U.S.C. §103(a) as being unpatentable over Guck in view of “file
command.”
Claims 17, 25, and 32 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Guck in view of “file Command” as
applied to claims 14-16, 19-24, and 26-31 above and in further view
of Abraham.

PRINCIPLES OF LAW
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
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(3) the level of skill in the art. Graham v. John Deere Co. of Kansas City,
383 U.S. 1, 17 (1966).
In rejecting claims under 35 U.S.C. §§ 102 and 103, it is incumbent
upon the Examiner to establish a factual basis to support the prior art
rejection – the so-called “prima facie” case. See In re Piasecki, 745 F.2d
1468, 1472 (Fed. Cir. 1984) (the USPTO has the initial burden of proof “to
produce the factual basis for its rejection of an application under sections
102 and 103.” (quoting In re Warner, 379 F.2d 1011, 1016 (CCPA 1967))).
“[T]he examiner bears the initial burden, on review of the prior art or on any
other ground, of presenting a prima facie case of unpatentability.” In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Appellants have the opportunity on appeal to the Board of Patent
Appeals and Interferences (BPAI) to demonstrate error in the Examiner’s
position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (citing In re
Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)).

ANALYSIS
At the outset we note that independent claims 14, 20, and 29 are
similar in scope with respect to the limitations argued by Appellant.
Therefore, independent claims 14, 20, and 29 will stand or fall together.
Appellant argues:
Guck does not disclose that an operation to save a file is
intercepted. In claim 14, the recited operation to save a file
does not proceed to completion unconditionally. Rather, it is
intercepted and made subject to a condition precedent: whether
the file’s signature matches or does not match signatures stored
in a signature database. By contrast, Guck simply describes
initiating the process of storing a virtual file by “receiv[ing] the
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file’s name, content and optional properties.” (col. 9, lines 45-
47) Receiving the details of an operation to write a file is not
equivalent to or suggestive of intercepting that operation.

(App. Br. 11) (underlines omitted). Appellant further provides the plain and
ordinary meaning of the term “intercept” and argues that:
The Examiner appears to be assuming that “receiving” and
“intercepting” are synonymous. However, Appellant notes that
according to Webster’s Third New International Dictionary,
Unabridged, “to intercept” means “to take, seize, or stop by the
way or before arrival at the destined place” as well as “stop or
interrupt the progress or course of.” That is, while intercepting
may involve receiving, to intercept entails more than merely
receiving. Appellant notes that Guck’s discussion of a server
receiving a file does not amount to a disclosure of the
intercepting that is required by claim 14.

(Id.) (underlines omitted) (emphasis added). The Examiner maintains
in the responsive arguments that:
[N]othing in this definition requires “the possibility that the
saying that is intercepted will not [eventually] reach the
particular destination”. It is merely required that before the file
is actually saved to the system a series of steps are performed
on it as further recited in the independent claims. These steps
are performed before the save operation as indicated in the final
rejection and clearly visible in figure 5A.
Therefore, Guck clearly discloses intercepting an
operation to save a file in the manner required by the claim. It
is noted that nothing in claim requires “at least the possibility
that the thing that is intercepted will not reach that particular
destination.”

(Ans. 11). We find the Examiner’s responsive arguments to not
address the express definition and the proffered distinction between
merely “receiving” data at the intended recipient location versus
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“intercepting” data at a location different than the intended recipient
location. We will adopt the plain and ordinary meaning of the term
“intercepting” as provided by Appellant and undisputed by the
Examiner. In particular, we construe “intercepting an operation” as an
affirmative action of an interceptor to stop or seize something before
it reaches its intended destination, whereas receiving something
merely involves an intended target passively coming into possession
of something. Therefore, the Examiner has not provided any specific
teachings or a line of reasoning as to why the teachings of Guck
would have suggested to one of ordinary skill in the art at the time the
invention was made “intercepting an operation to save a file to a
system” as recited in independent claims 14 and 19 and similar
language in independent claim 29. Nor has the Examiner relied upon
the teachings of “file command” for teaching or suggesting the
claimed “intercepting” step. Therefore, the Examiner has not set forth
a sufficient showing of obviousness of independent claims 14, 19, and
29. Therefore, we cannot sustain the rejection of these claims and
their respective dependent claims.
With respect to dependent claims 17, 25, and 32, the Examiner
has not identified how the teachings of Abraham cures the noted
deficiency in the rejection of the independent claims. Therefore, we
cannot sustain the Examiner’s rejection over the combination of Guck,
“file command,” and Abraham.

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CONCLUSION
For the aforementioned reasons, Appellant has shown error in the
Examiner’s showing of obviousness of independent claims 14, 19, and 29.

ORDER
We reverse the obviousness rejections of claims 14-17, 19-26, 28-32,
and 34.

REVERSED

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