Ex Parte KylerDownload PDFBoard of Patent Appeals and InterferencesSep 27, 201111148690 (B.P.A.I. Sep. 27, 2011) Copy Citation 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 Appeal 2009-009211 Application 11/148,690 2 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 Appeal 2009-009211 Application 11/148,690 3 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 Appeal 2009-009211 Application 11/148,690 4 (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 Appeal 2009-009211 Application 11/148,690 5 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 Appeal 2009-009211 Application 11/148,690 6 “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. Appeal 2009-009211 Application 11/148,690 7 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 llw Copy with citationCopy as parenthetical citation