Ex Parte Nachenberg et al

Patent Trial and Appeal Board

Dec 22, 2017

11865073 (P.T.A.B. Dec. 22, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/865,073 10/01/2007 Carey Nachenberg 007160.014300 4550
81877 7590 12/27/2017
FisiherRrnvles; T T P
EXAMINER
Symantec Corporation
222 South Main St., 5th Floor
WILLIS, AMANDA LYNN
Salt Lake City, UT 84101 ART UNIT PAPER NUMBER
2158
NOTIFICATION DATE DELIVERY MODE
12/27/2017 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):
sym-docketing@fisherbroyles.com
docketing @ fisherbroyles .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CAREY NACHENBERG, MICHAEL SPERTUS,
SOURABH SATISH, and GERRY EGAN
Appeal 2017-006953
Application 11/865,073
Technology Center 2100
Before DENISE M. POTHIER, JOHN A. EVANS, and
CATHERINE SHIANG, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1 and 3-21, which are all the claims pending and rejected
in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
Introduction
According to the Specification, the present invention relates to
creating and updating approved-file and trusted-domain databases. See
generally Spec. 1. Claim 1 is exemplary:
Appeal 2017-006953
Application 11/865,073
1. A computer-implemented method for automatically
creating and updating file whitelists, the method comprising:
identifying, at a proxy server, an attempt by at least one
client computing device to download at least one file from at
least one web server that requires that a user of the client
computing device complete at least one task prior to
downloading the file in a manner that prevents a file
whitelisting system from accessing the file until the task is
performed;
after the user of the client computing device has
completed the task required to download the file, intercepting
the file at the proxy server as the file is transmitted from the
web server to the client computing device;
before allowing the client computing device to access the
file:
identifying, at the proxy server, a source domain
from which the file originated;
identifying, at the proxy server, a trusted-domain
database that identifies trusted source domains for
software vendors that have been verified as publishing
trusted files;
determining, by causing the proxy server to query
the trusted-domain database using the source domain,
that the source domain associated with the file exists
within the trusted-domain database as a trusted domain
for a trusted software vendor;
based on determining that the source domain from
which the file originated exists within the trusted-domain
database, causing the proxy server to add the file to the
file whitelist by:
creating a hash value for the file; and
adding the hash value for the file to the file
whitelist; and
after determining that the source domain associated with
the file exists within the trusted-domain database, allowing the
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Appeal 2017-006953
Application 11/865,073
client computing device to access the file by forwarding the file
from the proxy server to the client computing device.
References and Rejection
Claims 1 and 3-21 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Donaldson (US 6,321,267 Bl, issued Nov. 20, 2001),
Fanton (US 2006/0150256 Al, published July 6, 2006), and Kikuchi (US
2002/0010740 Al, published Jan. 24, 2002)
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
contentions and the evidence of record. We concur with Appellants’
contention that the Examiner erred in finding the cited portions of
Donaldson teach
identifying, at the proxy server, a trusted-domain database that
identifies trusted source domains for software vendors that
have been verified as publishing trusted files; determining, by
causing the proxy server to query the trusted-domain database
using the source domain, that the source domain associated
with the file exists within the trusted-domain database as a
trusted domain for a trusted software vendor,
as recited in independent claim 1 (emphasis added).1 See App. Br. 7-11;
Reply Br. 2-6.
First, the Examiner asserts the italicized claim limitation merely states
an intended use, and does not constitute a patentable distinction. See Ans.
2-3.
1 Appellants raise additional arguments. Because the identified issue is
dispositive of the appeal, we do not reach the additional arguments.
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Application 11/865,073
We disagree. “It is well settled that the recitation of a new intended
use for an old product does not make a claim to that old product patentable.”
In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations omitted).
Claim 1 is a method—not a product—claim, and Schreiber’s intended-use
doctrine is inapplicable here. Additionally, claim 1 also recites “query the
trusted-domain database using the source domain, that the source domain
associated with the file exists within the trusted-domain database as a trusted
domain for a trusted software vendor.” Claim 1 (emphasis added). In any
event, the Examiner has not established why “a trusted-domain database that
identifies trusted source domains for software vendors that have been
verified as publishing trusted files” merely constitutes intended use, and
should not have patentable weight. See Reply Br. 2^1. In particular, the
Examiner’s assertion that “Donaldson . . . [tjhereby satisfying the intent of
the intended use recited by the claim language” (Ans. 3) is insufficient to
support the rejection.
Second, the Examiner cites Donaldson’s column 19, lines 15-26 for
teaching the disputed claim limitation. See Final Act. 6. We have reviewed
the cited Donaldson portions, and they do not teach “identifying, at the
proxy server, a trusted-domain database that identifies trusted source
domains for software vendors that have been verified as publishing trusted
files f as required by claim 1. In particular, the cited Donaldson’s portions
do not teach the claimed “software vendors that have been verified as
publishing trusted files,” and Donaldson’s mail domains are not the claimed
“software vendors that have been verified as publishing trusted files,” as that
term is understood by one skilled in the art. Absent further explanation from
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Appeal 2017-006953
Application 11/865,073
the Examiner, we do not see how the cited Donaldson’s portions teach the
disputed claim limitation.
Because the Examiner fails to provide sufficient evidence or
explanation to support the rejection, we are constrained by the record to
reverse the Examiner’s rejection of claim 1.
We also reverse the Examiner’s rejection of corresponding dependent
claims 3-21 for the same reasons.
DECISION
We reverse the Examiner’s decision rejecting claims 1 and 3-21.
REVERSED
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