Ex Parte Stewart et al

Patent Trial and Appeal Board

Apr 13, 2017

14295636 (P.T.A.B. Apr. 13, 2017)

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.
14/295,636 06/04/2014 Walter Mason Stewart 104985-0226 4704
23524 7590 04/17/2017
FOT FY Rr T ARDNFR T T P
EXAMINER
3000 K STREET N.W. ZARRINEH, SHAHRIAR
SUITE 600
WASHINGTON, DC 20007-5109 ART UNIT PAPER NUMBER
2497
NOTIFICATION DATE DELIVERY MODE
04/17/2017 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):
ipdocketing @ foley. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte INTELLECTUAL VENTURES I LLC1
Appeal 2017-000054
Application 14/295,636
Technology Center 2400
Before LARRY J. HUME, JOHN P. PINKERTON, and
JOHN D. HAM ANN, 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 Final
Rejection of claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 The named inventors are Walter Mason Stewart, Marcelo Carrera, and
Robert G. Hook.
Appeal 2017-000054
Application 14/295,636
STATEMENT OF THE CASE2
The Invention
Appellant's disclosed and claimed inventions "relate[] generally to
computer systems and computer networks. In particular, the present
disclosure relates to a system and method for detecting and nullifying the
effects of computer viruses." Spec. 13.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphases added to contested limitations):
1. A method comprising:
receiving, at a computing device, a message from an
email server, wherein the received message includes a file
comprising an executable code;
disconnecting the computing device from communication
with the email server after receiving the message from the email
server;
executing the executable code at the computing device;
performing a check of the computing device to identify
unexpected changes after executing the executable code;
if the unexpected changes are identified, activating a
virus alert and executing a ghost copy reboot of the computing
device; and
re-establishing a communication connection between the
computing device and the email server.
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Mar. 18, 2016); Reply Brief ("Reply Br.," filed Sept. 26, 2016); Response
after Final Rejection ("Response," filed Nov. 23, 2015); Examiner's Answer
("Ans.," mailed July 27, 2016); Final Office Action ("Final Act.," mailed
Sept. 23, 2015); and the original Specification ("Spec.," filed June 4, 2014).
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Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Boccon-Gibod ("Boccon") US 5,426,775 June 20, 1995
Chen et al. ("Chen") US 5,832,208 Nov. 3, 1998
Buckley et al. ("Buckley") US 6,035,327 Mar. 7, 2000
Rejections on Appeal
R1. Claims 1—20 stand rejected under the judicially created ground
of obviousness-type double patenting (OTDP) over: (a) claims 1—43 of U.S.
Patent No. 6,901,519 Bl; (b) claims 1—41 of U.S. Patent No. 7,506,155 Bl;
(c) claims 1—64 of U.S. Patent No. 7,913,078 Bl; (d) claims 1—48 of U.S.
Patent No. 7,979,691 B2; and (e) claims 1—37 of U.S. Patent No. 8,769,258
B2. Final Act. 4.
R2. Claims 1—20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Chen, Buckley, and Boccon. Id.
CLAIM GROUPING
We address OTDP Rejection R1 of claims 1—20, not argued separately
or with specificity, infra. See Response 6.
Based on Appellants' arguments (App. Br. 9—14), we decide the
appeal of obviousness Rejection R2 of claims 1—20 on the basis of
representative claim l.3
3 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
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Application 14/295,636
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments that
Appellants 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 disagree with Appellants' arguments with respect to claims 1—20,
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 Appellants' arguments. We incorporate such findings, reasons,
and rebuttals herein by reference unless otherwise noted. However, we
highlight and address specific findings and arguments regarding claim 1 for
emphasis as follows.
1. OTDP Rejection R1 of Claims 1—20
Issue 1
Did the Examiner err in rejecting claims 1—20 over the various claims
of the patents identified by (a)—(d) in Rejection Rl, supra,?
Analysis
Appellants merely state,
Applicant respectfully requests that the present double
patenting rejections be held in abeyance until such time as the
pending claims of the present application are otherwise deemed
to be in condition for allowance. At such time, Applicant will
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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Application 14/295,636
review and respond as appropriate to the double patenting
rejections, if still applicable.
Response 6.
In light of the lack of any specific or substantive argument to rebut
Rejection R1 of claims 1—20, we pro forma sustain the rejection of these
claims. Arguments not made are waived. 37 C.F.R. § 41.37(c)(l)(iv).
2. $103 Rejection R2 of Claims 1—20
Issue 2
Appellants argue (App. Br. 9—14; Reply Br. 4—8) the Examiner's
rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the
combination of Chen, Buckley, and Boccon is in error. These contentions
present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a method that includes, inter alia, the steps of "disconnecting the
computing device from communication with the email server," and
"executing the executable code at the computing device," as recited in
claim 1?
Analysis
Appellants generally contend the cited prior art combination fails to
teach or suggest the contested "executing" and "disconnecting" steps of
claim 1. App. Br. 10, 13.
In particular, with respect to the recited "executing" step, Appellants
argue Chen's teaching of scanning and removing detected viruses "is not
analogous to 'executing the executable code' of the file." App. Br. 11
(emphasis omitted). Appellants further allege "Chen appears to teach away
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Application 14/295,636
from executing the executable code of suspect file . . . [because] the goal of
Chen is to identify and remove the viruses, not cause them to become
active." Id. Additionally, Appellants contend the portion of Chen relied
upon by the Examiner fails to provide any evidence of file execution at the
computing device. Id. Further to this point, Appellants argue Chen,
column 1, lines 26—34, "merely describes what a computer virus is ... . [t]he
fact that a virus is 'executable' or can possible [sic] execute itself is not the
same as the claimed 'executing the executable code at the computing
device.'" Id. (emphasis omitted). Appellants further argue:
Nothing in this section cited by the Examiner provides
any disclosure, suggestion, or teaching of the claimed
'executing the executable code at the computing device ....
[and s]tating that a virus is 'executable' or that a macro virus can
be run when a program document is accessed is not the same as
what is claimed.
App. Br. 12 (emphasis omitted).
Our reviewing court guides, "[i]n the patentability context, claims are
to be given their broadest reasonable interpretations . . . limitations are not to
be read into the claims from the specification." In re Van Geuns, 988 F.2d
1181, 1184 (Fed. Cir. 1993) (citations omitted). Any special meaning
assigned to a term "must be sufficiently clear in the specification that any
departure from common usage would be so understood by a person of
experience in the field of the invention." Multiform Desiccants, Inc. v.
Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see also Helmsderfer
v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008) ("A
patentee may act as its own lexicographer and assign to a term a unique
definition that is different from its ordinary and customary meaning;
however, a patentee must clearly express that intent in the written
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description."). Absent an express intent to impart a novel meaning to a
claim term, the words take on the ordinary and customary meanings
attributed to them by those of ordinary skill in the art. Brookhill-Wilk 1,
LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003)
(citation omitted).
Appellants have not cited to a definition of "executing . . . executable
code at the computing device" in the Specification that would preclude the
Examiner's broader reading. Ans. 4.
We agree, because as the Examiner finds, Chen columns 1 through 3
teach or at least suggest that a virus is executable code which can be
embedded in a macro of a specific computer program such as a word
processing program further spread as an email attachment. Moreover, we
note these portions of Chen cited by the Examiner ("Background of the
Invention") provide background information regarding problems associated
with viruses executing on unsuspecting computer systems, for which Chen's
invention is intended to overcome. Thus, while Chen's ultimate goal is to
preclude virus execution using Chen's claimed invention, we disagree with
Appellants' contention that Chen's background does not teach or at least
suggest a computing device executing code that includes a virus.
Appellants further argue Buckley does not teach or suggest the recited
"disconnecting" step because the SMTP protocol for connections described
therein teaches disconnecting communication between a sending server and
a receiving server after an email message is transferred. App. Br. 13.
Appellants attempt to distinguish the recited computing device which
executes the executable code from Buckley's teaching of a server because
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"[the] claimed this disconnection is not between sending and receiving
servers." App. Br. 14.
We disagree with Appellants' argument because, under a broad but
reasonable interpretation, the recited "computing device" reads on the
disclosed server of Buckley.
Furthermore, we have reviewed Appellants' argument in the Reply
Brief, and find they unpersuasively reiterate arguments presented in the
Appeal Brief. Reply Br. 4—8.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the combined teachings and
suggestions of the cited prior art combination to teach or suggest the
disputed limitation of claim 1, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of independent claim 1, and grouped
claims 2—20 which fall therewith. See Claim Grouping, supra.
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 4—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
C.F.R. § 41.41(b)(2)), which Appellants have not shown.
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CONCLUSIONS
(1) Appellants have not shown the Examiner erred with respect to
OTDP Rejection R1 of claims 1—20, and we pro forma sustain the rejection.
(2) The Examiner did not err with respect to obviousness Rejection
R2 of claims 1—20 under 35 U.S.C. § 103(a) over the cited prior art
combination of record, and we sustain the rejection.
DECISION
We affirm the Examiner's decision rejecting claims 1—20.
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). See 37
C.F.R. §41.50(f).
AFFIRMED
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