Ex Parte Tarbotton et al

Board of Patent Appeals and Interferences

Mar 28, 2011

10262307 (B.P.A.I. Mar. 28, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte LEE CODEL LAWSON TARBOTTON, PAUL NICHOLAS
GARTSIDE, and DANIEL JOSEPH WOLFF
____________________

Appeal 2009-007036
Application 10/262,3071
Technology Center 2400
____________________

Before JOSEPH L. DIXON, THU A. DANG, and JAMES R. HUGHES,
Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed September 30, 2002. The real party in interest is
McAfee, Inc. (App. Br. 3.)
Appeal 2009-007036
Application 10/262,307

2
STATEMENT OF THE CASE
Appellants appeal from the Examiner’s rejection of claims 1-24 and
26-31 under authority of 35 U.S.C. § 134(a). Claim 25 has been canceled.
(App. Br. 5.) The Board of Patent Appeals and Interferences (BPAI) has
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appellants’ Invention
The invention at issue on appeal relates to a computer program
product and method for recovering a computer system by defining a safe
quarantine area on a disk for use in storing information about changes made
to the disk during a virus cleaning operation to recover data if the computer
system is corrupted during cleaning of the system for viruses. In particular,
the method (or product) defines a safe area on a primary storage device of
the computer system and stores the location (information on the location) of
the safe area on a secondary storage device, boots the computer system
utilizing a backup device, changes data on the primary storage device, and
records the changes in the safe area of the primary storage device so that the
changes are accessible when the computer system is booted from the backup
device. (Spec. 1:3-7; 6:2-9.)2
Representative Claim
Independent claim 1 further illustrates the invention, and is
reproduced below with the key disputed limitations emphasized:

2 We refer to Appellants’ Specification (“Spec.”); Appeal Brief (“App. Br.”)
filed January 15, 2008; and Reply Brief (“Reply Br.”) filed June 11, 2008.
We also refer to the Examiner’s Answer (“Ans.”) mailed April 14, 2008.
Appeal 2009-007036
Application 10/262,307

3
1. A method for defining an area to record changes made
to a computer system, the method comprising:
defining a safe area on a primary storage device of the
computer system, said primary storage device containing a
primary operating system;
storing information on the location of the safe area on a
secondary storage device;
booting the computer system utilizing a backup device;
changing data on said primary storage; and
recording changes made to said primary storage device
in the safe area of said primary storage device, wherein the
recorded changes are accessible with the computer system
booted from the backup device,.

References
The Examiner relies on the following references as evidence of
unpatentability:
Halladay US 5,713,024 Jan. 27, 1998

Nachenberg US 6,067,410 May 23, 2000

Malivanchuk US 2002/0144129 A1 Oct. 3, 2002
(filed Mar. 30, 2001)

Colligan US 6,519,762 B1 Feb. 11, 2003
(filed Dec. 15, 1998)

Rejections on Appeal
1. The Examiner rejects claims 1, 2, 4, 7-9, 21, and 22 under 35
U.S.C. § 103(a) as being unpatentable over Colligan and Halladay.
Appeal 2009-007036
Application 10/262,307

4
2. The Examiner rejects claims 5, 6, 23, 24, 30, and 31 under 35
U.S.C. § 103(a) as being unpatentable over Colligan, Halladay and
Nachenberg.
3. The Examiner rejects claims 3 and 20 under 35 U.S.C. § 103(a)
as being unpatentable over Colligan, Halladay and Malivanchuk.
4. The Examiner rejects claims 26-29 under 35 U.S.C. § 103(a) as
being unpatentable over Malivanchuk, Halladay, and Nachenberg

ISSUE
Based on our review of the administrative record, Appellants’
contentions, and the Examiner’s findings and conclusions, the pivotal issues
before us are as follows:
1. Does the Examiner err in finding Colligan and Halladay would
have taught or suggested : (1) “storing information on the location of the
safe area on a secondary storage device;” and (2) “recording changes made
to said primary storage device in the safe area of said primary storage
device” as recited in Appellants’ claim 1?
2. Does the Examiner err in finding Malivanchuk, Halladay, and
Nachenberg would have taught or suggested “recording changes made to
said primary storage device during the cleaning in a predefined area of said
primary storage device” as recited in Appellants’ claim 26?

FINDINGS OF FACT (FF)
We adopt the Appellants’ descriptions of the excerpted passages of
the Colligan and Halladay references (App. Br. 10-15) as our own, except as
Appeal 2009-007036
Application 10/262,307

5
to those findings that we expressly overturn or set aside in the Analysis that
follows.

ANALYSIS
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 407 (2007) (“While the sequence of [the]
questions [posed in Graham] might be reordered in any particular case, the
factors continue to define the inquiry that controls.”). “[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). The question of obviousness is “based on
underlying factual determinations including . . . what th[e] prior art teaches
explicitly and inherently.” In re Zurko, 258 F.3d 1379, 1383 (Fed. Cir.
2001).
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)). The Examiner sets forth a
detailed explanation of a reasoned conclusion of obviousness in the
Examiner’s Answer with respect to Appellants’ claims (Ans. 2-30), and in
particular independent claims 1 (Ans. 2-4, 17-20), 23 (Ans. 8-10, 23-27), 26
(Ans. 12-14, 27-29), and 29 (Ans. 15-17, 27-29). Therefore, we look to the
Appeal 2009-007036
Application 10/262,307

6
Appellants’ Briefs to show error in the proffered reasoned conclusions. See
Kahn, 441 F.3d at 985-86.
Arguments Concerning the Examiner’s Rejection of
Representative Claim 1
The Examiner rejects Appellants’ independent claim 1 as being
obvious over Colligan and Halladay. (Ans. 2-4.) Appellants contend that
the combination of Colligan and Halladay does not teach or suggest the
disputed features of claim 1 (App. Br. 10-15), which calls for, in pertinent
part: (1) “storing information on the location of the safe area on a secondary
storage device” (App. Br. 10); and (2) “recording changes made to said
primary storage device in the safe area of said primary storage device” (App.
Br. 12). (See App. Br. 35, Claim App’x., Claim 1). Based on the record
before us, we find error in the Examiner’s obviousness rejection of
Appellants’ claim 1. We agree with Appellants that the combination of
Colligan and Halladay does not teach or suggest storing information
concerning the location of a safe area of a primary storage device on to a
secondary storage device, and also does not teach recording changes made to
the primary storage device into the safe are on the primary storage device.
(App. Br. 10-15; Reply Br. 2-16).
There is no dispute as to the teachings of Colligan. The Examiner and
Appellants agree that Colligan teaches a safe area on the primary storage
device (a restoration image file on the hard disk) and storing the location of
the safe area on the primary storage device (hard disk), not a secondary
storage device. (Ans. 2-3; App. Br. 10-11.) The Examiner, however,
asserts, inter alia, that Halladay “teaches a computer system 1 (fig. 1)
comprising a cold boot floppy disk (secondary storage device) for storing
Appeal 2009-007036
Application 10/262,307

7
information on the location of a safe area of a computer system hard disk
(primary storage device) (see column 8, lines 3-20 and column 6, lines 60-
67).” (Ans. 3.) Appellants, on the other hand, point out that “Halladay
merely teaches the copying of ‘computer system hard disk parameters’. . . .
[and] that ‘the cold boot data backup system 10 reviews the directory
information stored on the backup media 21 . . . . [which] indicates the
physical location of each of these data file versions on the backup media.’”
(App. Br. 11 (emphasis added).)
Contrary to the Examiner’s assertions, we do not readily find any
teaching in Halladay of the location of a safe area on the primary storage
device. Halladay at most describes copying hard disk (primary storage
device) parameters to a secondary storage device (cold boot disk), and
reviewing a directory to determine the location of files on a secondary
storage device, not a primary storage device.
The Examiner and Appellants also agree that Colligan teaches
utilizing the restoration file (stored in the safe area) to completely restore
(“restored to like new” (App. Br. 13)) the primary storage device (hard disk),
and that Colligan does not teach recording changes made to the primary
storage device. (Ans. 3; App. Br. 12-15.) The Examiner, asserts that
Halladay records changes made to a computer system in an event log, a
database including an extended file system (that includes a temporal listing
of all files) reads the event log, and Halladay also stores copies of files from
the primary storage device to the secondary storage device so that the files
may be recreated at any selected point in time. (Ans. 3.)
Appellants argue that Halladay merely teaches a “database including
‘an extended file system’ reads the ‘contents of [an] event log . . . to
Appeal 2009-007036
Application 10/262,307

8
determine what data files have been changed since the last backup process
was activated’ where the ‘database 14 [is] located in the cold boot data
backup apparatus 10’” (App. Br. 13 (alteration in original) (citations
omitted)). We agree with Appellants’ understanding of Halladay.
Contrary to the Examiner’s assertions, we do not readily find any
teaching in Halladay saving changes to a primary storage device to a safe
area of the primary storage device. Rather, Halladay teaches saving changes
made to files into an event log on a secondary storage device. Moreover,
Halladay does not teach saving any changes after booting the computer
system (using the cold boot disk) as recited in the claim. Halladay at most
describes copying hard disk (primary storage device) files to a secondary
storage device (cold boot disk), and reading an event log storing file changes
using a database having an extended file system scheme so that the files
from the primary storage device may be recreated at any selected point in
time.
Thus, we are constrained by the record before us to agree with
Appellants that Colligan and Halladay would not have taught or suggested
each feature of Appellants’ claim 1 to one of ordinary skill in the art at the
time of Appellants’ invention. Accordingly, we find error in the Examiner’s
obviousness rejection of claim 1.
Appellants’ claims 2-22, 30, and 31 depend from claim 1, and stand
with representative claim 1. Thus, based on the record before us, we find
that the Examiner erred in finding Colligan and Halladay would have taught
or suggested each limitation recited in Appellants’ claims 1-22, 30, and 31.
Accordingly, we reverse the Examiner’s obviousness rejection of these
claims.
Appeal 2009-007036
Application 10/262,307

9
Arguments Concerning the Examiner’s Rejection of
Representative Claim 23
The Examiner rejects Appellants’ independent claim 23 as being
obvious over Colligan, Halladay, and Nachenberg. (Ans. 8-10, 23-27.)
Representative claim 23 includes limitations of similar scope to the disputed
limitations discussed with respect to claim 1 (supra).
As with representative claim 1, we are constrained by the record
before us to agree with Appellants that Colligan and Halladay would not
have taught or suggested each feature of Appellants’ claim 23 to one of
ordinary skill in the art at the time of Appellants’ invention. Appellants’
claim 24 depends on claim 23, and stands with representative claim 23.
Thus, we find that the Examiner erred in finding Colligan, Halladay, and
Nachenberg would have taught or suggested each limitation recited in
Appellants’ claims 23 and 24. Accordingly, we reverse the Examiner’s
obviousness rejection of these claims.
Arguments Concerning the Examiner’s Rejection of
Representative Claim 26
The Examiner rejects Appellants’ independent claim 26 as being
obvious over Malivanchuk, Halladay, and Nachenberg. (Ans. 12-14, 27-29.)
Representative claim 26 includes limitations of similar scope to the disputed
limitations discussed with respect to claim 1 (supra). Specifically,
“recording changes made to said primary storage device during the cleaning
in a predefined area of said primary storage device.” (App. Br. 38, Claim
App’x., Claim 26.) As with claim 1, the Examiner asserts that Halladay
teaches the recording features. (Ans. 13, 28.) The Appellants present
arguments similar to those made with respect to claim 1. (App. Br. 29-33.)
Appeal 2009-007036
Application 10/262,307

10
As with representative claim 1, we are constrained by the record
before us to agree with Appellants that Halladay does not teach the
recording features, and therefore, the combination of Malivanchuk,
Halladay, and Nachenberg would not have taught or suggested each feature
of Appellants’ claim 26 to one of ordinary skill in the art at the time of
Appellants’ invention. Appellants’ claims 27 and 28 depend on claim 26,
and stand with representative claim 26. Representative claim 29 includes
limitations of similar scope to the disputed limitations of representative
claim 26. Thus, we find that the Examiner erred in finding Malivanchuk,
Halladay, and Nachenberg would have taught or suggested each limitation
recited in Appellants’ claims 26-29. Accordingly, we reverse the
Examiner’s obviousness rejection of these claims.

CONCLUSION OF LAW
Appellants have shown that the Examiner erred in rejecting claims 1-
24 and 26-31 under 35 U.S.C. § 103(a).

DECISION
We reverse the Examiner’s rejection of claims 1-24 and 26-31 under
35 U.S.C. § 103(a).

REVERSED

msc