Ex Parte Safa

Patent Trial and Appeal Board

Dec 19, 2016

11292910 (P.T.A.B. Dec. 19, 2016)

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.
11/292,910 12/01/2005 John Safa RC-l 4350
59830 7590 12/21/2016
TED SABETY, c/o Sabety +associates, PLLC
830 Third Avenue
5 th Floor
New York, NY 10022
EXAMINER
MACKALL, LARRY T
ART UNIT PAPER NUMBER
2131
NOTIFICATION DATE DELIVERY MODE
12/21/2016 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):
TED@SABETY.NET
eofficeaction @ appcoll.com
docket@ sabety.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN SAFA
Appeal 2016-002021
Application 11/292,9101
Technology Center 2100
Before LARRY J. HUME, SCOTT E. BAIN, and ALEX S. YAP,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Non-
Final Rejection of claims 1, 3—8, 11, 12, 14—62, and 64—67. Appellant has
canceled claims 2, 9, 10, 13, 63, 68, and 69. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to Appellant, the real party in interest is Drive Sentry Limited.
App. Br. 2.
Appeal 2016-002021
Application 11/292,910
STATEMENT OF THE CASE2
The Invention
Appellant's disclosed and claimed inventions "relate[] to a method of
controlling the writing of data to a storage medium such as a hard drive in a
computer system by an application running in a memory of the computer
system." Spec. 1,11. 6—8.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphases added to contested limitations):
1. A method of controlling write access to a mass
data storage device by:
running a first process that operates in conjunction with
an operating system that manages access to a data storage
device, said process operating in kernel mode monitoring data
storage device accesses',
detecting by use of the process an attempt by an
application distinct from the first process to write data to said
data storage device',
in response to such detection, interrogating a rules
database wherein said rules database is comprised of a plurality
of references to a corresponding plurality of applications, each
reference further comprised of at least one access level
associated with the corresponding application; and
2 Our decision relies upon Appellant's Appeal Brief ("App. Br.," filed
May 5, 2015); Reply Brief ("Reply Br.," filed Dec. 7, 2015); Examiner's
Answer ("Ans.," mailed Oct. 8, 2015); Non-Final Office Action ("Non-Final
Act.," mailed Sept. 5, 2014); and the original Specification ("Spec.," filed
Dec. 1,2005).
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Application 11/292,910
controlling write access to the data storage device by the
application attempting the write in dependence on a result of
said interrogation;
wherein said interrogation result is comprised of the
value of the access level associated with said application.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Ohta et al. ("Ohta")
Kyler
Sprigg et al. ("Sprigg")
Freund
Shuster
Ignatchenko et al. ("Ignatchenko")
Golan et al. ("Golan")
US 2001/0011323 Al Aug. 2, 2001
US 2002/0174102 Al Nov. 21,2002
US 2003/0051169 Al Mar. 13, 2003
US 2004/0019807 Al Jan. 29, 2004
US 6,922, 781 B1 July 26, 2005
US 6,978,366 B1 Dec. 20, 2005
US 2006/0075492 Al Apr. 6, 2006
Norton Internet Security User's Guide, NORTON Internet Security 2000,
Manual [online], Symantec Corp., available at http://webpages.charter.net/
cwind/nis.pdf [retrieved on 2008-01-29] (1999) (hereinafter "Symantec").
Evidence Relied Upon by Appellant
Appellant relies upon the following extrinsic evidence of record in
rebutting the Examiner's rejections (App. Br. 17 ("Evidence Appendix")).
1. Affidavit of John Safa filed June 9, 2008. ("Safa Aff.").
2. Affidavit of Alan Jones filed Sept. 8, 2010. ("Jones Aff.").
3. Exhibit A to Affidavit of Alan Jones filed Sept. 8, 2010. ("Exh.
A to Jones Aff").
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Application 11/292,910
4. Affidavit of Luca Rognoni filed Nov. 16, 2011. ("Rognoni
Aff.").
5. Affidavit of Bruce McNair filed July 6, 2012. ("McNair Aff.").
Rejections on AppeaP
Rl. Claims 1, 3-6, 14, 16-23, 26, 29, 39, 40, 44, 46-A9, 54, 56, 61,
62, and 65—67 stand rejected under 35 U.S.C. § 103(a) as being unpatentable
over the combination of Symantec, Sprigg, and Kyler. Ans. 2; Final Act. 2.
R2. Claims 7 and 12 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Symantec, Sprigg, Kyler, and
Freund. Ans. 2; Final Act. 16.
R3. Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Symantec, Sprigg, Kyler, and Golan.
Ans. 2; Final Act. 18.
R4. Claim 11 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Symantec, Sprigg, Kyler, and Shuster.
Ans. 2—3; Final Act. 19.
R5. Claim 11 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Symantec, Sprigg, Kyler, Freund, and
Shuster. Ans. 3; Final Act. 19.
3 We note Rejection Rl of claim 62, depending from claim 7, rejected under
Rejection R2, is what may be characterized as an "inverted rejection," i.e.,
Rejection Rl of claim 62 does not involve the Freund reference cited in
Rejection R2 of claim 7. However, Appellant does not separately or
substantively argue the rejections of either of claims 7 and 62, and
specifically does not argue the inconsistency of the Examiner's Rejection Rl
of claim 62. Arguments not made are waived.
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Application 11/292,910
R6. Claim 11 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Symantec, Sprigg, Kyler, Golan, and
Shuster. Ans. 3; Final Act. 20.
R7. Claims 15 and 30-35 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Symantec, Sprigg, Kyler, and
Shuster. Ans. 3; Final Act. 21.
R8. Claims 24 and 28 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Symantec, Sprigg, Kyler, and
Freund. Ans. 3; Final Act. 23.
R9. Claim 25 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Symantec, Sprigg, Kyler, Shuster, and
Golan. Ans. 3—A\ Final Act. 25.
R10. Claim 27 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Symantec, Sprigg, Kyler, and Freund.
Ans. 4; Final Act. 26.
R11. Claims 36—38 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Symantec, Sprigg, Kyler, Shuster, and
Freund. Ans. 4; Final Act. 27.
R12. Claim 41 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Symantec, Sprigg, Kyler, and
Ignatchenko. Ans. 4; Final Act. 29.
R13. Claims 42, 43, 45, and 50-53 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Symantec, Sprigg,
Kyler, and Freund. Ans. 4; Final Act. 30.
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R14. Claim 55 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Symantec, Sprigg, Kyler, and
Ignatchenko. Ans. 4; Final Act. 32.
R15. Claims 57, 58, and 60 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Freund, Sprigg, and Kyler.
Ans. 5; Final Act. 38.
R16. Claim 59 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Freund, Sprigg, Kyler, and Golan.
Ans. 5; Final Act. 35.
R17. Claim 64 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Symantec, Sprigg, Kyler, and Ohta.
Ans. 5; Final Act. 36.
CLAIM GROUPING
Based on Appellant's arguments (App. Br. 12—37), we decide the
appeal of obviousness Rejection R1 of claims 1, 3—6, 14, 16—23, 26, 29, 39,
40, 44, 46-49, 54, 56, 61, 62, and 65—67 on the basis of representative
claim 1; and we decide the appeal of obviousness Rejection R15 of claims
57, 58, and 60 on the basis of representative claim 57.
Remaining claims 7, 8, 11, 12, 15, 24, 25, 27, 28, 30—38, 41—43, 45,
50-53, 55, 59, and 64 in rejections R2 through R14 and R16 through R17,
not argued separately with specificity, stand or fall with the respective
independent claim from which they depend.4
4 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
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ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. We do not consider arguments that
Appellant could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
We agree with particular arguments advanced by Appellant with
respect to claims 1, 3—8, 11, 12, 14—56, 61, 62, and 64—67 for the specific
reasons discussed below.
However, we disagree with Appellant's arguments with respect to
claims 57—60, and we incorporate herein and adopt as our own: (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken, and (2) the reasons and rebuttals set forth in the Examiner's
Answer in response to Appellant's arguments. We incorporate such
findings, reasons, and rebuttals herein by reference unless otherwise noted.
However, we highlight and address specific findings and arguments
regarding claims 1 and 57 for emphasis as follows.
1. $ 103 Rejection R1 of Claims E 3—6, 14, 16—23, 26, 29, 39, 40, 44,
46-49. 54. 56. 61. 62. and 65-67
Issue 1
Appellant argues (App. Br. 12—27; Reply Br. 2—8) the Examiner's
rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the
combination of Symantec, Sprigg, and Kyler is in error. These contentions
present us with the following dispositive issue:
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 41.37(c)(l)(iv).
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Assuming the Examiner established a prima facie case of obviousness
in rejecting claim 1 under § 103, did the Examiner err by ignoring secondary
considerations of non-obviousness, as evidenced by the McNair Affidavit?
Analysis
Appellant contends the Examiner erred in rejecting claim 1 under
§ 103 by ignoring objective evidence of non-obviousness presented in the
McNair Affidavit, particularly affidavit evidence supporting the claimed
inventions' achievement of unexpected results. App. Br. 20—21 (citing
McNair Aff. || 10-12); see also McNair Aff. || 18—20 (providing evidence
of the claimed inventions' satisfaction of the additional secondary
consideration of a long-felt need in the market).
The Examiner's complete response to the proffered evidence of
secondary considerations of non-obviousness is quoted below:
Dr. McNair further explained that it is unexpected that "a
process on a computer running a typical operating system can
actually operate trapping the disk accesses in order to check the
validity of the process that is calling for disk access without
becoming unstable." McNair 112.
Examiner submits that the proposed modification is not
to replace the network firewall functionality of Symantec. The
proposed combination is to turn the network firewall of
Symantec into a resource firewall as disclosed by Sprigg et al.
Sprigg et al. disclose controlling access to primary memory,
secondary memory, and files (among other things). Examiner
submits that any issues arising from the delay caused by
permission check can be addressed by the control program or
by the running application via exception handling. Sprigg et al.
have not mentioned any issues incurred by the delay inserted by
implementing permission checks on primary and secondary
memory.
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Appellant further argues that Rognoni's affidavit
explained why the instabilities noted by Dr. McNair would be
the expected result of Appellant's invention. Rognoni explained
that a network firewall cannot be predictably adapted to operate
in the manner of Appellant's invention for several technical
reasons. Rognoni 110. These reasons include: dealing with
memory caching, paging requests and other complexities that a
network firewall does not deal with. The point that Rognoni
makes is that "[t]hey are simply not interchangeable parts."
Rognoni 110.
As discussed above, Examiner submits that the
combination is to turn the firewall of Symantec into a resource
firewall as shown by Sprigg et al. Sprigg et al. disclose a
resource firewall that controls all resources of a system on an
application basis.
Ans. 8—9.
We find the Examiner has failed to properly address and provide
proper weight to the affidavit evidence proffered by Professor McNair
concerning the unexpected results of Appellant's claimed invention. McNair
Aff. H 10—12. We further find the Examiner's response is completely silent
on providing any analysis of the objective evidence presented with respect to
the long-felt need for the claimed invention in the relevant technical
community. See McNair Aff. || 18—20.
Our reviewing court holds that a prima facie case for obviousness may
be rebutted by evidence showing secondary considerations, such as has been
proffered by Appellant. Such arguments must be supported by evidence on
the record which demonstrates a nexus between the objective evidence of
secondary considerations and the claimed invention. See Pro-Mold & Tool
Co., Inc. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1574 (Fed. Cir. 1996)
(noting that fact finders must determine the probative value of secondary-
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considerations evidence for rebutting a prima facie case of obviousness);
Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1391—94
(Fed. Cir. 1988) (noting that secondary-considerations evidence must be
considered despite a strong case for obviousness based on prior art);
Simmons Fastener Corp. v. III. Tool Works, Inc., 739 F.2d 1573, 1575 (Fed.
Cir. 1984) (explaining that the weight accorded to secondary-considerations
evidence depends on a demonstration of "[a] nexus between the merits of the
claimed invention and the evidence of secondary considerations").
We find Appellant has met their burden in relying upon evidence of
secondary considerations of non-obviousness in the McNair Affidavit to
overcome the § 103 rejection of claim l.5 We further find the secondary
considerations of non-obviousness (i.e., unexpected results, unmet need) to
be equally applicable to grouped independent claims 14, 39, and 54, as well
as claims depending therefrom.
5 We note Appellant submits additional affidavit evidence to rebut the
Examiner's stated basis for motivation to combine the references in the
manner suggested in rejecting claim 1. See App. Br. 55 el seq.
("EVIDENCE APPENDIX"); and see "Evidence Relied Upon by Appellant"
section, supra. Appellant also submits additional objective evidence of
secondary considerations concerning alleged commercial success. See App.
Br. 25—27; Safa Aff. We need not reach the merits of Appellant's additional
contentions regarding the motivation to combine the references, because,
assuming the Examiner is correct in setting forth a prima facie case of
obviousness, and assuming the weight of the additional affidavit evidence
has insufficient probative value to overcome the prima facie case, we find
the proffered evidence of secondary considerations of unmet need and
unexpected results to be dispositive of the Appeal. We also need not reach
the merits of Appellant's additional contentions regarding commercial
success of the claimed invention.
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Therefore, based upon the findings above, on this record, we are
persuaded of error in the Examiner's legal conclusion of obviousness.
Therefore, we cannot sustain the Examiner's obviousness rejection of
independent claim 1, and grouped claims 3—6, 14, 16—23, 26, 29, 39, 40, 44,
46-49, 54, 56, 61, 62, and 65—67 which stand therewith. See Claim
Grouping, supra.
§ 103 Rejections R2—R14, and R17 of Claims 7, 8, 11, 12, 15,
24, 25, 27, 28, 30-38, 41-43, 45, 50-53, 55, and 64
In light of the reversal of obviousness Rejection R1 under § 103 of
independent claims 1, 14, 39, and 54, supra, we conclude claims 7, 8, 11, 12,
15, 24, 25, 27, 28, 30-38, 41—43, 45, 50-53, 55, and 64, variously depending
therefrom, are also nonobvious. "[Djependent claims are nonobvious if the
independent claims from which they depend are nonobvious." In re Fritch,
972 F.2d 1260, 1266 (Fed. Cir. 1992).
2. $103 Rejection R15 and R16 of Claims 57—60
In view of the lack of any separate, substantive arguments directed to
obviousness Rejection R15 of claims 57, 58, and 60 and Rejection R16 of
claim 59 under § 103 (see App. Br. 36—37), we sustain the Examiner's
rejections of these claims. We find Appellant does not address the
Examiner's specific factual findings and legal conclusion of obviousness of
Rejections R15 and R16, rejected over a different combination of references
under § 103. Arguments not made are waived.6
6 For example, Appellant merely argues,
Independent Claim 57 is directed to the server operations
in support of the claimed invention in Claim 1 . . . [and cjlaim
57, for the same reasons as given above regarding Claim 1, is
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REPLY BRIEF
To the extent Appellant may advances new arguments in the Reply
Brief (Reply Br. 2—8) not in response to a shift in the Examiner's position in
the Answer, we note arguments raised in a Reply Brief that were not raised
in the Appeal Brief or are not responsive to arguments raised in the
Examiner’s Answer will not be considered except for good cause (see 37
CE.R. § 41.41(b)(2)), which Appellant has not shown.
CONCLUSIONS
The Examiner did not err with respect to obviousness Rejections R15
and R16 of claims 57—60 under 35 U.S.C. § 103(a) over the cited prior art
combinations of record, and we sustain the rejections.
The Examiner erred with respect to obviousness Rejections R1
through R14 and R17 of claims 1, 3—8, 11, 12, 14—56, 61, 62, and 64—67
under 35 U.S.C. § 103(a) over the cited prior art combinations of record, and
we do not sustain the rejections.
DECISION
We reverse the Examiner's decision rejecting claims 1, 3—8, 11, 12,
14—56, 61, 62, and 64—67.
non-obvious over Freund (which is a cumulative reference to
Symantec, e.g. a network firewall) in combination with Sprigg
and Kyler. Claim 57 is directed toward trapping disk drive
access while Freund intercepts Internet accesses. Claim 57 is
distinguished from Sprigg, as explained above with regard to
Claim 1. The Kyler reference is equally inapplicable as
explained above with regard to Claim 1.
App. Br. 36.
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We affirm the Examiner's decision rejecting claims 57—60.
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).
AFFIRMED-IN-PART
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