Ex Parte Lowe et al

Board of Patent Appeals and Interferences

Jul 27, 2007

10876523 (B.P.A.I. Jul. 27, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOSEPH C. LOWE, JONATHAN L. EDWARDS,
and SRIN N. KUMAR
____________

Appeal 2007-1113
Application 10/876,523
Technology Center 2100
____________

Decided: July 27, 2007
____________

Before HOWARD B. BLANKENSHIP, ALLEN R. MACDONALD, and
JOHN A. JEFFERY, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL
This appeal involves claims 1-9 and 11-20, the only claims pending in
this application. We have jurisdiction under 35 U.S.C. §§ 6(b), 134(a).
Appeal 2007-1113
Application 10/876,523

INTRODUCTION
The claims are directed to a system and method for enhancing
computer network security. When a request is received to open a file on a
local computer, it is determined whether the request is received from a local
process operating on a local computer or from a remote computer. Such
determination may be made for security purposes. (Abstract.) Claims 1 and
15 are illustrative:
1. A security method, comprising:
receiving a request to open a file on a local computer; and
determining whether the request is a local request received from a
local process operating on the local computer or a remote request received
from a remote computer coupled to the local computer via a network;
wherein the remote request is handled with more scrutiny with respect
to the local request by at least one of denying the remote request to open the
file and utilizing more virus signatures during scanning.

15. The method as recited in claim 1, wherein the security method
is utilized to counter terrorism by preventing infection of cyber-frameworks
with malware initiated by terrorists.

The Examiner relies on the following prior art references to show
unpatentability:
Szor US 2004/0168070 A1 Aug. 26, 2004
McIchionc US 6,973,578 B1 Dec. 6, 2005

The rejections as presented by the Examiner are as follows:
1. Claim 15 is rejected under 35 U.S.C. §§ 101 and 112, 2nd ¶.
2. Claims 1-5, 13, 14, 16-18, and 20 are rejected under 35 U.S.C.
§ 102(e) as being anticipated by McIchionc.
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3. Claims 6-9, 11, 12, and 19 are rejected under 35 U.S.C § 103(a) as
unpatentable over McIchionc and Szor.

OPINION
Claim 15
The Examiner submits:
Claim 15 is rejected under 35 U.S.C. 101 because the
claimed recitation of a use, without setting forth any steps
involved in the process, results in an improper definition of a
process, i.e., results in a claim which is not a proper process
claim under 35 U.S.C. 101. See for example Ex parte Dunki,
153 USPQ 678 (Bd.App. 1967) and Clinical Products, Ltd. v.
Brenner, 255 F. Supp. 131,149 USPQ 475 (D.D.C. 1966).

(Answer 3.)
Dunki and Clinical Products each addressed a claim drawn to the
“use” of a composition of matter. We find the cases inapposite. In this case,
claim 15 is drawn to specific application of a method, and incorporates the
process steps set forth in base claim 1 – a claim whose recitation of statutory
subject matter is undisputed. Claim 15 merely recites a “wherein” clause to
further limit the process recited in claim 1. As the Examiner has failed to
demonstrate that claim 15 is not a proper process claim under 35 U.S.C.
§ 101, we do not sustain the rejection.
Nor do we sustain the rejection of the claim under § 112, 2nd ¶ for
indefiniteness. The function of claims is (1) to point out what the invention
is in such a way as to distinguish it from the prior art; and (2) to define the
scope of protection afforded by the patent. In re Vamco Machine & Tool,
Inc., 752 F.2d 1564, 1577 n.5, 224 USPQ 617, 635 n.5 (Fed. Cir. 1985).
The legal standard for definiteness is whether a claim reasonably apprises
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those of skill in the art of its scope. In re Warmerdam, 33 F.3d 1354, 1361,
31 USPQ2d 1754, 1759 (Fed. Cir. 1994). The inquiry is merely to
determine whether the claims do, in fact, set out and circumscribe a
particular area with a reasonable degree of precision and particularity. In re
Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971). The
definiteness of the language employed must be analyzed -- not in a vacuum,
but in light of the teachings of the prior art and of the particular application
disclosure as it would be interpreted by one possessing the ordinary level of
skill in the pertinent art. Id.
As we have noted, claim 15 simply recites a “wherein” clause with the
intent of further limiting the process recited in claim 1. Claim 15 is drawn to
a process but does not need to set forth any active process steps, as those are
set forth by base claim 1. Further, we agree with Appellants that, contrary to
the statement of the rejection, the claim does not purport to discover how an
attack is initiated by terrorists, nor does the method only prevent attacks
initiated by terrorists. The claim would be infringed if the method of claim 1
prevented infection of cyber-frameworks with malware initiated by
terrorists.1

Claims 1-5, 13, 14, 16-18, and 20
Claims 1-5, 13, 14, 16-18, and 20 stand rejected under § 102(e) as
being anticipated by McIchionc. Based on Appellants’ remarks in the Brief,

1 The Examiner’s rejection is not based on perceived difficulty in
determining what may constitute a “terrorist.” In any event, the
Specification (at 13) provides a definition of a “terrorist” in the context of
the instant invention.
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we will consider claim 1 as representative in our review of the § 102
rejection. (See 37 C.F.R. § 41.37(c)(1)(vii)).
McIchoinc describes a method (Fig. 2) of computer virus scanning. In
step 202, an indication is first received that a file is being accessed by a
process. The indication that a file is being accessed may be accomplished
by a file call command “or by any other technique known in the art.”
(McIchoinc col. 3, ll. 56-61). The “accessing” of files may include opening,
reading, executing, indexing, organizing, editing, or moving the files. (Col.
3, l. 62 - col. 4, l. 9).
McIchoinc Figure 2 and Figure 4 further demonstrate that different
virus detection actions may be taken based on the type (category) of process
that may be accessing the files. In particular, an action may be based on the
user of the process accessing the files, with further discrimination based on
the location of the user; e.g., whether at a local or a remote console.
(McIchoinc col. 5, ll. 3-31).
Appellants argue in the briefs that an indication that a file is being
accessed by a process is not “receiving a request to open a file on a local
computer” as recited in claim 1. The claim does not specify what generates
or what receives the “request” to open a file. We find that the interception
of a file call command (to open a file), as described by the reference, is
receiving a request to open a file on a local computer, within the meaning of
claim 1. Moreover, Appellants’ arguments carry less weight when we
compare an operating system described by the reference (col. 3, ll. 45-48)
with Appellants’ description of how a file is opened in such an operating
system (Specification 2: final ¶ - 3: 10). In McIchoinc, the file call
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command to open a file is intercepted before an operating system kernel
processes the command.
To demonstrate anticipation of instant claim 1, the Examiner chooses
to show the alternative of “utilizing more virus signatures during scanning”
for the function of the remote request being handled with more scrutiny with
respect to the local request. A reasonable inference may be drawn from the
reference that heightened scrutiny (e.g., checking for more virus signatures)
is to occur during scanning for a remote request, since McIchoinc
distinguishes between local and remote requests. Moreover, the description
of actions in Table 1 (col. 6) of the reference and column 6, lines 55 through
62, upon which the Examiner relies, provides further support for the
Examiner’s finding that the reference meets the requirements of the
“wherein” clause of claim 1.
We have considered all of Appellants’ arguments in the briefs but are
not persuaded of error in the Examiner’s finding of anticipation with respect
to claim 1. Appellants’ arguments, in the main, seem based on supposed
requirements that are not commensurate with the broad scope of the claim
and on the fact that McIchoinc does not use all the same terms that are
recited in the claim. With respect to claim scope, our reviewing court has
repeatedly warned against confining the claims to specific embodiments
described in the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1323,
75 USPQ2d 1321, 1334 (Fed. Cir. 2005) (en banc). With respect to
anticipation, every element of the claimed invention must be identically
shown in a single reference, but this is not an “ipsissimis verbis” test. In re
Bond, 910 F.2d 831, 832, 15 USPQ2d 1566, 1567 (Fed. Cir. 1990).
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We therefore sustain the rejection of claims 1-5, 13, 14, 16-18, and 20
under 35 U.S.C. § 102(e) as being anticipated by McIchionc.

Claims 6-9, 11, 12, and 19
Claims 6-9, 11, 12, and 19 stand rejected under 35 U.S.C § 103(a) as
unpatentable over McIchionc and Szor. We sustain the rejection of claims
6-9, 11, and 12, because Appellants rely on the arguments that we find
unpersuasive with respect to McIchionc as applied against claim 1. (See Br.
15.)
The statement of the rejection of claim 19 (Answer 9-10) finds that
McIchionc does not disclose multiple steps of the claim, but the teachings
absent from McIchionc are asserted to be contained in Szor. The rejection
relies on paragraphs 7, 10, 11, and 12 of Szor, most of which relate to the
background of the invention described in the reference.
Szor teaches in the referenced sections that, in certain operating
systems, user mode code does not have direct access to kernel mode
(operating system) code, and that the user address space and the operating
system address space are kept separate. Szor documents a need for virus
scanners that may check not only user address space, but also kernel address
space since some newly emerged viruses are implemented as drivers in the
kernel address space.
We agree with Appellants that Szor is not sufficient to teach all that
the rejection attributes to the reference. We find no teaching for
categorizing requests as local or remote based on the start address of code
associated with an identified thread being within or not within the kernel
component, and scanning files accordingly. In particular, we do not find
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disclosure or suggestion in Szor for the determining and categorizing steps
that the rejection (Answer 9) attributes to the reference.
Thus, we have sustained the rejection of claims 6-9, 11, and 12 but we
do not sustain the rejection of claim 19.

Claim 15 Revisited -- New Grounds of Rejection
Instant claim 1 is anticipated by McIchionc (see supra). The
Examiner finds (Answer 11) that McIchionc discloses preventing infection
of cyber-frameworks with malware, at least for the reason that all anti-virus
software does so. We find the position to be reasonable. The further
requirements of instant claim 15 set forth nothing different from McIchionc
because, as Appellants admit (e.g., Br. 11), the claim does not require
preventing attacks only by terrorists. Nor does the claim require, for that
matter, any kind of identification of the origin of malware. The method set
forth by claim 15 would thus be interpreted by the artisan as being met by
the (instant claim 1) method described by McIchionc in its normal use. To
the extent that claim 15 might be interpreted as requiring a conscious effort
to utilize the method of claim 1 against malware initiated by terrorists, we
find that it would have been obvious to the artisan to apply the method
described by McIchionc against any potential infection, including “malware
initiated by terrorists.”
We therefore reject claim 15 under 35 U.S.C. §§ 102(e)(2) and/or
103(a) over McIchionc, pursuant to our authority under 37 C.F.R.
§ 41.50(b).

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CONCLUSION
In summary, the rejection of claim 15 under 35 U.S.C. §§ 101 and
112, 2nd ¶ is reversed as to both grounds. The rejection of claims 1-5, 13,
14, 16-18, and 20 under 35 U.S.C. § 102(e) as being anticipated by
McIchionc is affirmed. The rejection of claims 6-9, 11, 12, and 19 under 35
U.S.C § 103(a) as unpatentable over McIchionc and Szor is affirmed with
respect to claims 6-9, 11, and 12 but reversed with respect to claim 19.
A new rejection of claim 15 under 35 U.S.C. §§ 102(e)(2) and/or
103(a) over McIchionc is set forth herein.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (2006). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the appellant, 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. . . .
(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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
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AFFIRMED-IN-PART -- 37 C.F.R. § 41.50(b)

eld

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