Ex Parte Dhamankar et al

Patent Trial and Appeal Board

Mar 2, 2016

13030715 (P.T.A.B. Mar. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/030,715 02/18/2011 Rohit DHAMANKAR
23505 7590 03/04/2016
CONLEY ROSE, P,C
Jonathan M. Harris
1001 Mckinney
Suite 1800
HOUSTON, TX 77002-6417
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
7154-00300 3309
EXAMINER
TRUONG, THONG P
ART UNIT PAPER NUMBER
2433
NOTIFICATION DATE DELIVERY MODE
03/04/2016 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):
pathou@conleyrose.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROHIT DHAMANKAR, DAVID S. ENDLER, and
PEDRAM AMINI
Appeal2014-003858
Application 13/030,715
Technology Center 2400
Before JEFFREYS. SMITH, DANIEL N. FISHMAN, and
MICHAEL M. BARRY, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-003858
Application 13/030,715
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1-16, which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part and enter a new ground of rejection.
Representative Claim
1. A method comprising:
initiating a scan for a malware program on a computer
system, the initiating by a first user, and the scan by a scan
program executed on the computer system;
identifying the malware program on the computer system
by the scan program, where the identifying meets a
predetermined achievement; and
posting to a social network, the posting comprises an
indication of meeting the predetermined achievement, and the
posting associated with the first user.
Osburn et al.
Parish et al.
Prior Art
US 2007/0113062 Al
US 2011/0214185 Al
Examiner's Rejections
May 17, 2007
Sept. 1, 2011
Claims 1-8 and 10-15 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Parish.
Claims 9 and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Parish and Osburn.
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Application 13/030,715
ANALYSIS
Section 102 rejection of claims 1-5, 7, 8, 10--12, 14, and 15
We adopt the findings of fact made by the Examiner for claims 1-5, 7,
8, 10-12, 14, and 15 as our own. We agree with the Examiner's decision to
reject claims 1-5, 7, 8, 10-12, 14, and 15 for the reasons given by the
Examiner in the Examiner's Answer. We highlight the following for
emphasis.
Claim 1 recites "identifying the malware program on the computer by
the scan program, where the identifying meets a predetermined
achievement." The Examiner finds identifying code that meets certain
predetermined criteria or characteristics as disclosed by Parish describes "the
identifying meets a predetermined achievement" within the meaning of
claim 1. Ans. 7. Appellants contend Parish does not describe "a
predetermined achievement" recited in claim 1, because a characteristic or
criteria is not synonymous with achievement. Reply Br. 2-3. Appellants
have not persuasively distinguished the claimed "predetermined
achievement" from the predetermined characteristics disclosed by Parish.
The scope of the claimed "predetermined achievement," when read in light
of the examples given in paragraphs 48 and 51 of Appellants' Specification,
encompasses the predetermined characteristics and criteria of Parish.
Appellants contend Parish does not disclose a "social network" as
recited in claim 1. According to Appellants, paragraph 19 of Appellants'
Specification defines a social network as individuals who associate with the
network as a member with a member profile. Reply Br. 4--5. Paragraph 19
of Appellants' Specification discloses
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Application 13/030,715
"Social network" shall mean a service that allows a group of
individuals to communicate with each other. Each individual
associates with the "social network" as a member with a
member profile, and at least a portion of the member profile is
viewable by other members. The members of the "social
network" communicate information either with all of the
members or a select sub-set of the members.
The definition of the claimed "social network" in paragraph 19 is a service
that allows a group of individuals to communicate with each other. The
additional features of the member profiles, and who and how each member
can view profiles of other members, are features of how a member can
interact with the social network, rather than part of the definition of the
social network. We agree with the Examiner (Ans. 8) that the network of
Parish, used by subscribers to report and share virus scan results to other
subscribers, teaches a social network within the meaning of claim 1.
Claim 3 recites "displaying on a display device of the computer
system an indication of meeting the predetermined achievement." The
Examiner finds displaying virus scan results discloses displaying the
predetermined achievement. Ans. 8-9. Appellants contend displaying virus
scan results does not disclose displaying an indication of meeting the
achievement, because the criteria and characteristics that identify the virus
are not an achievement. Reply Br. 5---6. We find Appellants' arguments
unpersuasive for the reasons discussed in our analysis of claim 1.
We sustain the rejection of claims 1-5, 8, 10-12, and 15 under 35
U.S.C. § 102.
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Appeal2014-003858
Application 13/030,715
Section 102 rejection of claims 6, 7, 13 and 14
Claim 6 recites "where the first social network is managed by a first
legal entity, and where the first legal entity is different than a second legal
entity that manufactures the scan program." Appellants contend Parish does
not disclose the manufacturing company and website are separate legal
entities. Reply Br. 6. The Examiner finds one of ordinary skill in the art
recognizes the owner of the software manufacturing company can be
different than the owner of the website service company. Ans. 9-10.
However, the Examiner's finding, though proper for an analysis of whether
claim 6 is obvious, is insufficient to sustain a rejection of anticipation.
Claim 13 has a similar limitation and claims 7 and 14 depend from claims 6
and 13, respectively. Thus, for the same reasons as claim 6, we are
persuaded of error in the rejection of claims 7, 13, and 14.
We do not sustain the rejection of claims 6, 7, 13 and 14 under 35
U.S.C. § 102.
Section 103 rejection of claims 9 and 16
We adopt the findings of fact made by the Examiner for claims 9 and
16 as our own. We agree with the Examiner's decision to reject claims 9
and 16 for the reasons given by the Examiner in the Examiner's Answer.
We highlight the following for emphasis.
Claim 9 recites "identifying during periods of time when the computer
system is operating under a non-native operating system." The Examiner
finds Osburn teaches scanning a secondary operating system, different from
the primary operating system, for malware. Final Act. 7. The Examiner
finds the computers of Parish, which can have multiple operating systems,
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Application 13/030,715
can perform the scanning and identifying of the multiple operating systems
as taught by Osburn. Ans. 10-11. Appellants contend that having different
types of operating systems does not teach an individual device having
multiple operating systems for active use by a user as in Osburn. Reply Br.
6-7.
Appellants have not persuasively explained why a computer with
several "non-native" operating systems as taught by Osburn, when scanned
with the virus scanner taught by Parish, does anything more than yield the
predictable result of identifying viruses on the non-native operating system.
Cumulative to the Examiner's findings, we highlight Osburn alone teaches
one operating system scanning the file system of another operating system.
Abstract.
We sustain the rejection of claims 9 and 16 under 35 U.S.C. § 103.
New Ground of Rejection of Claims 6, 7, 13 and 14
We reject claims 6, 7, 13, and 14 under 35 U.S.C. § 103(a) as
unpatentable over Parish.
Claims 6 and 13 recite "where the first social network is managed by
a first legal entity, and where the first legal entity is different than a second
legal entity that manufactures the scan program." The Examiner finds a
person having ordinary skill in the art would be able to recognize that an
anti-virus service provider in Parish may be different than a company that
manufactures the scan program, i.e., an anti-virus service provider may be
different than McAfee who manufactures virus scanning software. Ans. 9-
10.
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Application 13/030,715
We agree with the Examiner's analysis, but we find this analysis
appropriate for determining whether the claims are obvious. The proper test
for obviousness is not whether the prior art references disclose all elements
of the claimed invention; rather, what the combined teachings would have
suggested to a person of ordinary skill in the art. See In re Kotzab, 217 F.3d
1365, 1370 (Fed. Cir. 2000). In such an analysis, precise teachings directed
to the specific subject matter of the challenged claim need not be identified
because the inferences and creative steps that a person of ordinary skill in
the art would employ can be taken into account. See KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007); see also In re Preda, 401F.2d825,
826 (CCP A 1968) ("[I]n considering the disclosure of a reference, it is
proper to take into account not only specific teachings of the reference, but
also the inferences which one skilled in the art would reasonably be
expected to draw therefrom."). When a patent claims a structure already
known in the prior art that is altered by the mere substitution of one element
for another known in the field, the combination must do more than yield a
predictable result. KSR, 550 U.S. at 416.
Here, Appellants' substitution of one element for another is the
ownership status of the manufacturing and website services taught by Parish.
We agree with the Examiner's finding that using different companies, or
"legal entities," to perform the manufacturing and website services was an
inference one of ordinary skill could reasonably be expected draw.
We reject claims 6 and 13 under 35 U.S.C. § 103.
Claims 7 and 14 recite posting to "a second social network managed
by the second legal entity." The Examiner finds, and we agree, the
subscriber server of Parish teaches a second social network. Final Act. 5.
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Further, Appellants have not provided persuasive evidence to show posting
to a second social network managed by a second legal entity was beyond the
level of skill of one who can post to a first social network managed by a first
legal entity.
We reject claims 7 and 14 under 35 U.S.C. § 103.
DECISION
We affirm the Examiner's rejection of claims 1-5, 8, 10-12, and 15
under 35 U.S.C. § 102(e) as anticipated by Parish.
We reverse the Examiner's rejection of claims 6, 7, 13, and 14 under
35 U.S.C. § 102(e) as anticipated by Parish.
We affirm the Examiner's rejection of claims 9 and 16 under 35
U.S.C. § 103(a) as unpatentable over Parish and Osburn.
We reject claims 6, 7, 13, and 14 under 35 U.S.C. § 103(a) as
unpatentable over Parish.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2011). Section 41.50(b) provides that "[a] new ground of
rejection ... shall not be considered final for judicial review."
Section 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner ....
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(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record.
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
37 C.F.R. § 41.50(b)
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