Ex Parte Dhamankar et alDownload PDFPatent Trial and Appeal BoardMar 2, 201613030715 (P.T.A.B. Mar. 2, 2016) Copy Citation 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. 2 Appeal2014-003858 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 3 Appeal2014-003858 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. 4 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, 5 Appeal2014-003858 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. 6 Appeal2014-003858 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. 7 Appeal2014-003858 Application 13/030,715 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 .... 8 Appeal2014-003858 Application 13/030,715 (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) 9 Copy with citationCopy as parenthetical citation