Ex Parte Nachenberg et alDownload PDFPatent Trial and Appeal BoardDec 22, 201711865073 (P.T.A.B. Dec. 22, 2017) Copy Citation 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 2 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. 3 Appeal 2017-006953 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 4 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 5 Copy with citationCopy as parenthetical citation