Ex Parte Sarkar

Board of Patent Appeals and Interferences

Jul 16, 2010

10364043 (B.P.A.I. Jul. 16, 2010)

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.
10/364,043 02/11/2003 Soumitra Sarkar SJO920010229US1 7335
29683 7590 07/19/2010
HARRINGTON & SMITH
4 RESEARCH DRIVE, Suite 202
SHELTON, CT 06484-6212
EXAMINER
LANIER, BENJAMIN E
ART UNIT PAPER NUMBER
2432
MAIL DATE DELIVERY MODE
07/19/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SOUMITRA SARKAR
____________

Appeal 2009-004721
Application 10/364,043
Technology Center 2400
____________

Before JOSEPH F. RUGGIERO, CARLA M. KRIVAK, and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Final Rejection of
claims 1-30, which are all of the pending claims. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
Rather than reiterate the arguments of Appellant and the Examiner,
we refer to the Appeal Brief (filed October 25, 2007), the Answer (mailed
January 8, 2008), and the Reply Brief (filed March 10, 2008) for the
respective details. We have considered in this decision only those
arguments Appellant actually raised in the Briefs. Any other arguments
which Appellant could have made but chose not to make in the Briefs are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).

Appellant’s Invention
Appellant’s invention relates to the running of anti-virus software for
a file system that is accessible by a client through a server. After a current
point-in-time copy (PiTC) of the file system is created, a determination is
made whether a file in the file system has changed based on a difference
between the current PiTC and an earlier PiTC. A further determination is
made whether the file is to be examined by the anti-virus software based on
whether the file has changed. (See generally Spec. 5:16-30).
Claim 1 further illustrates the invention and reads as follows:
1. A method for running anti-virus software for a file system that
is accessible by a client through a server, said method comprising:
creating a current point-in-time copy (PiTC) of said file system, the
PiTC being an immutable view of the entire file system that represents an
instantaneous state of the file system;
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determining whether a file in said file system is changed, based on a
difference between said current PiTC and an earlier PiTC of said file system;
and
determining whether said file is to be examined by said anti-virus
software, based on whether said file is changed.

The Examiner’s Rejections
The Examiner’s Answer cites the following prior art references:
Wells US 6,338,141 B1 Jan. 8, 2002
Glover US 6,763,466 B1 Jul. 13, 2004
(filed Jan. 11, 2000)
Manley US 7,007,046 B2 Feb. 28, 2006
(filed Mar. 19, 2002)
Claims 1-27 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Manley and Glover.
Claims 28-30 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Manley, Glover, and Wells.

ISSUES
Based on Appellant’s contentions, as well as the findings and
conclusions of the Examiner, the pivotal issues before us are as follows:
a) did the Examiner err in finding that Manley discloses the
creation of PiTC of an entire file system; and
b) did the Examiner err in concluding that it would have been
obvious to an ordinarily skilled artisan to combine the anti-virus scanning
teachings of Glover with the system of Manley.

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FINDINGS OF FACT
The following findings of fact (FF) relevant to the issues are
supported by a preponderance of the evidence in the record:
1. Manley discloses (Fig. 1; col. 3, ll. 20-27) a file recovery
system that generates snapshots, which are read-only images of a file system
at a point in time.
2. Manley further discloses that (col. 3, ll. 18-20; col. 4, ll. 11-44)
an old snapshot and a new snapshot are compared to determine which files
have been changed.
3. Manley also discloses the creation of PiTCs of an entire file
system by disclosing (col. 3, ll. 11-13) that “it is common to ‘mirror’ or
replicate some or all of the underlying data and/or the file system that
organizes the data.”
4. Glover discloses (col. 1, ll. 28-34) the advantages of using anti-
virus scanning to protect file systems from infected files and ensuring that
infected files are not copied to other computers.
5. Glover further discloses (col. 1, ll. 47-55) that the time and
computer resources required for anti-virus scanning can be reduced by
avoiding the re-scanning of unchanged files.

ANALYSIS
Claims 1-4, 6, 9-13, 15, 18-22, 24, and 27
With respect to the obviousness rejection of independent claims 1, 10,
and 19, Appellant’s arguments initially focus on the contention that the
Examiner has not established a basis for combining the Manley and Glover
references. In particular, Appellant contends (App. Br. 8-9; Reply Br. 3-6)
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that the system of Glover is incompatible with Manley because i) the system
of Glover would have to wait for Manley to perform the “differencing”
operation before being allowed to scan changed files for viruses; and ii)
Manley’s use of a read-only block of a data image is in conflict with and not
suitable for the file manipulation and quarantine operations required by
Glover.
We do not agree with Appellant. As alluded to by the Examiner (Ans.
16-17), we do not interpret the Examiner’s position as suggesting the bodily
incorporation of the anti-virus scanning teachings into the system of Glover.
Rather, it is Glover’s teaching (FF 4) of the advantages of using anti-virus
scanning to protect file systems from infected files and ensuring that infected
files are not copied to other computers that is relied upon as a rationale for
the proposed combination with Manley. As further pointed out by the
Examiner (Ans. 3), Glover also teaches (FF 5) the reduction of time and
computing resources by scanning only changed files for viruses. “The test
for obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference . . . . Rather,
the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.” See In re Keller, 642 F.2d
413, 425 (CCPA 1981).
We also find unpersuasive Appellant’s argument that, even if
combined, the resultant combination of Manley and Glover would not satisfy
the claimed requirement of the current PiTC of the file system being an
immutable view of the entire file system. According to Appellant (App. Br.
9-10; Reply Br. 3-4), the Manley reference, relied upon by the Examiner as
teaching the “entire file system” feature, merely discloses the creation of
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“snapshots” of a volume or portions of volume of a file system and not an
entire file system as claimed.
We agree with the Examiner, however, that Manley explicitly teaches
the creation of PiTCs of an entire file system by disclosing (FF 3) that “it is
common to ‘mirror’ or replicate some or all of the underlying data and/or
the file system that organizes the data” by creating “snapshots” (FF 1) which
are read-only images of a file system at a point in time (emphases added).
While Appellant has directed attention to the portion of the disclosure of
Manley (col. 3, ll. 56-64) that suggests that complete recopying of an entire
file system to a remote site may be “inconvenient” where large file systems
are involved or available bandwidth is limited, this disclosure nonetheless
provides an explicit teaching of replicating by “snapshotting” an entire file
system. It is apparent that the mentioned “inconvenience” factors of
extremely large files and limited available bandwidth will exist in only
limited situations.
For the above reasons, we sustain the Examiner’s 35 U.S.C. § 103(a)
rejection of independent claims 1, 10, and 19, as well as dependent claims 2-
4, 6, 9, 11-13, 15, 18, 20-22, 24, and 27 not separately argued by Appellant.

Dependent claims 5, 14, and 23
The Examiner’s obviousness rejection of dependent claims 5, 14, and
23 is also sustained. We agree with the Examiner’s finding (Ans. 18),
Appellant’s arguments (App. Br. 11) to the contrary notwithstanding, that
Glover discloses maintaining an AV attribute indicating whether a file has
been scanned and free from viruses (col. 6, ll. 24-29) as well as providing an
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encryption feature (col. 6, ll. 21-24) prohibiting malicious modifications of
the AV state information.

Dependent claims 7, 16, and 25
We also sustain the Examiner’s obviousness rejection of dependent
claims 7, 16, and 25 which are directed to invoking an incremental mode of
anti-virus software operation if there is an indication that a file was not
examined and found to be virus-free. Appellant argues (App. Br. 11) that, in
contrast to the claimed incremental mode of operation, Glover discloses
(col. 8, ll. 7-10) that scheduled anti-virus scans are performed on “a pre-
defined batch of files,” i.e., a batch mode of operation. While Appellant is
correct that Glover discloses that scheduled scans are performed in a batch
mode, the Examiner has relied on the portion of Glover (col. 8, ll. 19-21)
which describes an incremental mode of operation wherein individual files
are re-scanned if the AV state information indicates a need for re-scanning.

Dependent claims 8, 17, and 26
Dependent claims 8, 17, and 26 are directed to the feature of running
anti-virus software in response to a call for a batch mode execution of the
anti-virus software. As indicated in our previous discussion of dependent
claims 7, 16, and 25, Glover discloses (col. 8, ll. 7-10) that, when an
initiating call for execution of anti-virus software is received, scheduled
scans are executed on a “pre-defined batch of files,” i.e., a batch mode of
execution. Accordingly, the Examiner’s obviousness rejection of dependent
claims 8, 17, and 26 is sustained.

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Dependent claims 28-30
The Examiner’s obviousness rejection of dependent claims 28-30 is
also sustained. We find no error in the Examiner’s application of the virus
signature update teachings of Wells to the combination of Manley and
Glover. As with our previous discussion regarding the Examiner’s proposed
combination of Manley and Glover, we do not interpret the Examiner’s
stated position (Ans. 15) as suggesting the bodily incorporation of the virus
scanning system of Wells into the combined system of Manley and Glover.
Instead, it is Wells’s teaching of scanning the entire system after virus
signature files have been updated. We agree with the Examiner (Ans. 19-
20) that an ordinarily skilled artisan would have recognized and appreciated
that Wells’s teaching of ensuring that scanning is performed with up to date
virus signatures would have served as an obvious enhancement to the
combined system of Manley and Glover.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner did not err in rejecting claims 1-30 for obviousness under
35 U.S.C. § 103(a).

DECISION
The Examiner’s decision rejecting appealed claims 1-30 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)(v) (2009).

AFFIRMED
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