Ex Parte Tsai

Board of Patent Appeals and Interferences

Dec 18, 2007

09972596 (B.P.A.I. Dec. 18, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte HUNGCHOU TSAI
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Appeal 2007-2300
Application 09/972,596
Technology Center 2100
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Decided: December 18, 2007
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Before LANCE LEONARD BARRY, HOWARD B. BLANKENSHIP, and
JEAN R. HOMERE, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL

I. STATEMENT OF THE CASE
A Patent Examiner rejected claims 1-20. The Appellant appeals
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).

A. INVENTION
The invention at issue on appeal protects a computer against a virus.
With the widespread use of computers, computer networks such as the
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Application 09/972,596

Internet, and electronic mail ("e-mail"), computer viruses have become
problematic to computers and their users. (Spec. 1.) In particular, the global
nature of the Internet enables a virus-infected e-mail to spawn a large
amount of network traffic that can jam servers and the Internet. Such a virus
can be destructive and can cause lost business due to computer downtime.
(Id. 6.)

For its part, the Appellant's invention does not detect or repair specific
viruses, but alerts users to the fact that they are opening e-mails that could
contain viruses and allows them to delete questionable e-mails. (Id. 10.) To
wit, the invention downloads e-mail without executing it. The invention
then determines whether the downloaded e-mail includes any infected e-
mail. If so, it disposes of the infected e-mail. (Id. 25.)

B. ILLUSTRATIVE CLAIMS
Claims 1 and 11, which further illustrate the invention, follow.
1. A method for avoiding electronic mail (email) attacks on a
computer, comprising:
downloading one or more emails in virtual-copy format
to prevent the one or more emails from executing;
determining whether an infected email is in-the
downloaded one or more emails; and
disposing of the infected email.

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11. A system for avoiding electronic mail (email) attacks on a
computer, comprising:
means for downloading one or more emails in virtual-
copy format to prevent the one or more emails from executing;
means for determining whether an infected email is in the
downloaded one or more emails; and
means for disposing of the infected email.

C. REJECTIONS
Claims 1-3, 5-13, and 15-20 stand rejected under 35 U.S.C. § 102(e)
as anticipated by U.S. Patent No. 6,785,732 ("Bates"). Claims 4 and 14
stand rejected under 35 U.S.C. § 103(a) as obvious over Bates and
U.S. Patent No. 6,763,462 ("Marsh").

II. CLAIM GROUPING
"When multiple claims subject to the same ground of rejection are
argued as a group by appellant, the Board may select a single claim from the
group of claims that are argued together to decide the appeal with respect to
the group of claims as to the ground of rejection on the basis of the selected
claim alone. Notwithstanding any other provision of this paragraph, the
failure of appellant to separately argue claims which appellant has grouped
together 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)(1)(vii) (2006).1 When the patentability of dependent claims in

1 We cite to the version of the Code of Federal Regulations in effect at the
time of the Appeal Brief. The current version includes the same rules.

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particular is not argued separately, the claims stand or fall with the claims
from which they depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986);
In re Sernaker, 702 F.2d 989, 991 (Fed. Cir. 1983).

Here, claims 1-3, 5-13, and 15-20 are subject to the same
ground of rejection. The Appellants argue claims 1-3 and 5-10 as a first
group and claim 11-12 and 14-20 as a second group. (App. Br. 3-6).
Therefore, we select independent claims 1 and 11 as the sole claims on
which to decide the appeal of the respective groups. "With this
representation in mind, rather than reiterate the positions of the parties in
toto, we focus on the issues therebetween." Ex Parte Zettel, No. 2007-1361,
2007 WL 3114962, at *2 (BPAI 2007).

III. AVOIDING ATTACKS ON A COMPUTER
The Examiner finds, "As per claims 1 and 11, Bates teaches a method
and system for avoiding electronic mail (email) attacks on a computer . . . ."
(Ans. 4.) The Appellants argues, "In contrast, in the present invention, the
virus checking is done on the client machine, not on the mail server."
(Reply Br. 3.) Therefore, the issue is whether Bates avoids e-mail attacks on
a computer.

"Both anticipation under § 102 and obviousness under § 103 are two-
step inquiries. The first step in both analyses is a proper construction of the
claims . . . . The second step in the analyses requires a comparison of the
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properly construed claim to the prior art." Medichem, S.A. v. Rolabo, S.L.,
353 F.3d 928, 933 (Fed. Cir. 2003) (internal citations omitted).

A. CLAIM CONSTRUCTION
"[A] claim construction analysis must begin and remain centered on
the claim language itself . . . ." Innova/Pure Water, Inc. v. Safari Water
Filtration Systems, Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004). Here,
contrary to the Appellant's argument, neither claim 1 nor claim 11 requires
virus checking to be done on a client machine. Instead, the representative
claims merely recite in pertinent part the following limitations: "avoiding
electronic mail (email) attacks on a computer . . . ."

B. ANTICIPATION ANALYSIS
"[A]nticipation is a question of fact." In re Hyatt, 211 F.3d 1367,
1371-72 (Fed. Cir. 2000) (citing Bischoff v. Wethered, 76 U.S. (9 Wall.) 812,
814-15, 19 L. Ed. 829 (1869); In re Schreiber, 128 F.3d 1473, 1477 (Fed.
Cir. 1997)). "A reference anticipates a claim if it discloses the claimed
invention 'such that a skilled artisan could take its teachings in combination
with his own knowledge of the particular art and be in possession of the
invention.'" In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (quoting In
re LeGrice, 301 F.2d 929, 936 (CCPA 1962)).

Here, Bates describes "a web server computer system[, which]
includes a virus checker and mechanisms for checking e-mails and their
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attachments, downloaded files, and web sites for possible viruses." (Col. 2,
ll. 11-14.) "When an e-mail message contains a detected virus, the message
is discarded, and both the sender and recipient are informed via e-mail that
the message contained a virus." (Id. at ll. 14-16.) "This configuration
allows one virus checker on the web server to protect each web client
[computer] connected to it from viruses . . . ." (Col. 4, ll. 47-49.) "[T]he
likelihood of a web server spreading viruses is greatly reduced when
information received by the web server is checked for viruses before
forwarding the information to a web client." (Id. at ll. 54-57.) Because the
web server discards infected e-mail before such e-mail can reach the client
computers connected thereto, we agree with the Examiner's finding that
Bates avoids e-mail attacks on a computer.

IV. DOWNLOADING E-MAIL WITHOUT EXECUTING IT
The Examiner finds, "Bates discloses downloading e-mails to an
intermediate location, such as a web server, preventing the emails to execute
on the client . . . column 6, lines 31-37 . . . ." (Ans. 4.) The Appellant
argues that "there is no mention of downloading in a virtual copy format to
prevent execution." (Reply Br. 2.) Therefore, the issue is whether Bates
downloads e-mail without executing it.

A. CLAIM CONSTRUCTION
"Claims must be read in view of the specification, of which they are a
part." Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir.
1995) (en banc). Here, claims 1 and 11 recite in pertinent part the following
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limitations: "downloading one or more emails in virtual-copy format to
prevent the one or more emails from executing . . . ." The Appellant
identifies no definition of the term "virtual-copy format" in his Specification.
For our part, we only find an explanation that "[t]he virtual-copy format
allows the downloaded content to be safely analyzed in that virtual-copy
format data cannot be executed." (Spec. 11.) Reading the representative
claims in view of this explanation, therefore, the limitations merely require
downloading e-mail without executing it.

B. ANTICIPATION ANALYSIS
Figure 1 of Bates shows "specific implementation of [its] web server
computer system . . . ." (Col. 4, ll. 58-59.) The web server hosts a number
of software applications including an "e-mail server application 124; a virus
checker application 125 with associated virus definitions 126; . . . a virus
control mechanism 131 that includes a web page virus processing
mechanism 132, an e-mail virus processing mechanism 134, and a file virus
processing mechanism 136; and a virus information database 138." (Col. 5,
ll. 5-12.)

The reference explains that the "[e]-mail virus processing
mechanism 134 . . . processes e-mails received by e-mail server
application 124 from other e-mail servers," (col. 6, ll. 21-25), "scan[ning] . .
. incoming . . . e-mail messages for viruses." (Id. at ll. 26-27.) "If a virus is
detected in the e-mail itself, the e-mail message is deleted, and an e-mail
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message is sent to the sender and intended recipient notifying both that the e-
mail contained a virus." (Id. at ll. 27-30.)

Based on this explanation, we find that the web server computer
system receives and processes e-mail messages without executing the
messages.2 Because the web server computer system receives and processes
e-mail messages without executing the messages, we agree with the
Examiner's finding that Bates downloads e-mail without executing it.
Therefore, we affirm the rejection of claim 1 and of claims 2, 3, and 5-10,
which fall therewith.

Rather than arguing the rejection of claim 4 separately, the Appellant
reiterates the aforementioned arguments. (App. Br. 6-9.) Unpersuaded by
these arguments, we also affirm the rejection of this claim. We have one
more issue, however, to address regarding claims 11-20.

V. MEANS FOR DETECTING AND DISPOSING
The Examiner finds that "Bates teaches a . . . system for avoiding
electronic mail (email) attacks on a computer" (Answer 4) and that the
system comprises the following features:
determining whether an infected email is in the
downloaded one or more emails (using the virus checking
software to check for viruses in the message; column 2,
lines 10-20; column 5, lines 44-57; column 6, lines 21-27;
column 8, lines 1-44; column 9, lines 22-40);

2 In fact, the web server is not described as hosting an application for
executing e-mail.
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and disposing of the infected email, wherein the infected
email is determined based on one or more of the following: an
email from field, an email to field, and an email subject field
(deleting an infected email; column 2, lines 10-20; column 6,
lines 27-30; column 6, lines 39-49; column 9, lines 28-30 and
lines 36-40; column 11, lines 59-65).

(Id.) Noting that "claim 11 is expressed as a means claims pursuant to
Section 112," (App. Br. 6), the Appellant makes the following allegations
The structure for the means for determining an infected email is
the client computer that can download one or more emails and
executes a browser or an email-like software (such as the
embodiments shown in Figs. 4-5) to allow the user to safely
view the content of the email before making a decision to delete
or keep the email. The structure for the means for disposing the
infected email in one embodiment is the client computer
running a human user interface that allows the user to make the
deletion decision.
(Id.) Based on these allegation, he argues, "Since Bates fail [sic] to show
any corresponding structure, Bates cannot anticipate claim 1[1]." (Id.)
Therefore, the issue is whether Bates discloses a software process for
determining whether e-mail is infected with a virus and for disposing of
infected e-mail.

A. CLAIM CONSTRUCTION
"[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification." Hyatt, 211 F.3d
at 1372. In particular, "[a]n element in a claim for a combination . . .
expressed as a means . . . for performing a specified function without the
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recital of structure, material, or acts in support thereof . . . shall be construed
to cover the corresponding structure . . . described in the specification and
equivalents thereof." 35 U.S.C. §112, ¶ 6 (2007).

Here, claim 11 recites in pertinent part the following limitations:
"means for determining whether an infected email is in the downloaded one
or more emails; and means for disposing of the infected email." To the
extent the Appellant is arguing that the "means for determining" should be
construed to cover a human user making a deletion decision, we remind him
that "a human being cannot constitute a 'means' . . . ." Default Proof Credit
Card System, Inc. v. Home Depot U.S.A., Inc., 412 F.3d 1291, 1300
(Fed. Cir. 2005) (citing In re Prater, 415 F.2d 1393, 1398 (CCPA 1969)).

Turning to the Appellant's Specification, we note that it describes "an
exemplary process 200 to detect and delete emails potentially infected with a
virus or a worm." (Spec. 10.) More specifically, "the process 200 displays
brief information for each email and highlights potential emails that contain
worms or viruses (step 224)." (Id. 12.) "Based on [a] user's instructions, the
process 200 accesses the user's mail server and removes the selected emails
stored in the user's account at the mail server . . . (step 228)." (Id.)
Construing the representative claim to cover the broadest, reasonable
structure described in the Specification, the limitations require a software
process for determining whether e-mail is infected with a virus and for
disposing of infected e-mail.

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B. ANTICIPATION ANALYSIS
As mentioned regarding the prior issue, Bates' web server computer
system hosts a number of software applications including an e-mail virus
processing mechanism 134. More specifically, the reference's "FIG. 7 is a
flow diagram of a method performed by the e-mail virus processing
mechanism 134 . . . ." (Col. 3, ll. 15-16.) When an e-mail message is
received, "the e-mail virus processing mechanism reads the e-mail
message (step 720), and checks the e-mail message body for
viruses (step 722) using [a] selected virus checker application." (Col. 9,
ll. 25-28.) "If a virus is found (step 724=YES), the e-mail message is
deleted (step 730). . . ." (Id. at ll. 34-35.)

Because the reference's e-mail virus processing mechanism checks
e-mail messages for viruses and deletes infected messages, we agree with
the Examiner's finding that Bates discloses a software process for
determining whether e-mail is infected with a virus and for disposing of
infected e-mail. Therefore, we affirm the rejection of claim 11 and of
claims 12, 13, and 15-20, which fall therewith.

Rather than arguing the rejection of claim 14 separately, the Appellant
reiterates the aforementioned arguments. (App. Br. 6-9.) Unpersuaded by
these arguments, we also affirm the rejection of this claim.

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VI. ORDER
In summary, the rejection of claims 1-3, 5-13, and 15-20 under
§ 102(e) is affirmed. The rejection of claims 4 and 14 under § 103(a) is also
affirmed.

"Any arguments or authorities not included in the brief or a reply brief
filed pursuant to [37 C.F.R.] § 41.41 will be refused consideration by the
Board, unless good cause is shown." 37 C.F.R. § 41.37(c)(1)(vii).
Accordingly, our affirmance is based only on the arguments made in the
briefs. Any arguments or authorities omitted therefrom are neither before us
nor at issue but are considered waived. Cf. In re Watts, 354 F.3d 1362, 1367
(Fed. Cir. 2004) ("[I]t is important that the applicant challenging a decision
not be permitted to raise arguments on appeal that were not presented to the
Board.")

No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

pgc

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