International Business Machines Corporation

Patent Trials and Appeals Board

Oct 20, 2020

2019003757 (P.T.A.B. Oct. 20, 2020)

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.
14/956,573 12/02/2015 Khalil A. Ayoub CA920140074US1 4995
82531 7590 10/20/2020
Lieberman & Brandsdorfer, LLC
IBM - Austin
802 Still Creek Lane
Gaithersburg, MD 20878
EXAMINER
HUANG, CHENG-FENG
ART UNIT PAPER NUMBER
2497
MAIL DATE DELIVERY MODE
10/20/2020 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte KHALIL A. AYOUB, KALPANA BISHT,
ROBERT CALENDINO, PAUL IONESCU, RICHARD LEE,
FEI LIU, DANIEL H. NGUYEN, and IOSIF V. ONUL
____________________

Appeal 2019-003757
Application 14/956,573
Technology Center 2400
____________________

Before ERIC S. FRAHM, CATHERINE SHIANG, and
JASON J. CHUNG, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

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Application 14/956,573

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STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134 from a rejection of claims
1–19. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

DISCLOSED AND CLAIMED INVENTION
According to Appellant, the disclosed invention “relates generally to
threat modeling in a data processing system and more specifically to
automat[ic][sic] application decomposition for use in threat modeling in the
data processing system” (Spec. ¶ 2), for the purpose of “provid[ing] a list of
countermeasures suitable for implementation to prevent potential security
attacks in an application” (Spec. ¶ 3). According to Appellant,
“[d]iscussions about threat modeling are typically within a context of
software development lifecycle” (Spec. ¶ 3), and known application
decomposition processes are “manual, iterative and non-standardized also
relying on input from and knowledge of the particular user,” thus
“[t]ypically, the current solutions result in an incomplete list of threats”
(Spec. ¶ 6). Independent claims 1, 5, 10, 11, 16, and 17 recite
commensurate limitations regarding a method (see claims 1, 5), computer
program product (see claim 11), and apparatus (see claims 10, 16, 17) for
providing a model for identification of threats and weaknesses specific to an
application, using heuristics and conclusions to generate a model of the

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 (2017). “The word ‘applicant’ when used in this title refers
to the inventor or all of the joint inventors, or to the person applying for a
patent as provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a). Appellant
identifies the real party in interest as International Business Machines
Corporation (Appeal Br. 3).
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application (see e.g., claim 1). Claim 1, reproduced below with bracketed
lettering and emphases added, is illustrative of the claimed subject matter:
1. A computer-implemented method for providing a model for
identification of threats and weaknesses specific to an
application, the method comprising:
providing a data structure, the data structure including:
a first relationship between a domain and a data
type generated utilizing a first tool within the domain;
and
a second relationship between the data type and a
combination of [A] one or more heuristics and [B] one
or more conclusions;
generating, by one or more external tools, a data set
specific to the application and storing the generated data set
in memory;
transforming the data set into a processed data utilizing
the first and second relationships of the data structure, the
transformation including:
assessing the data structure utilizing a tuple of a
first data type within the data set;
applying at least one of the heuristics and at least
one corresponding conclusion from the one or more
conclusions based on an assessment; and
resolving the applied at least one conclusion; and
[C] generating the model of the application in a select
modeling language utilizing one or more transforms and the
processed data, the model comprises one or more
characteristics of the application in accordance with the
resolved at least one conclusion, wherein the model is a
starting point for identification of the threats and the
weaknesses specific to the application.

Appeal Br. 33, Claims Appendix (bracketed lettering and emphases added).
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REJECTIONS
The Examiner made the following rejections:
(1) Claims 1–16 and 18 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Collazo (US 2010/0299292 A1; published
Nov. 25, 2010) and Cabrera et al. (US 2015/0347759 A1; published Dec. 3,
2015) (hereinafter, “Cabrera”). Final Act. 4–18.
(2) Claim 17 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Collazo, Cabrera, and Cochenour (US 2015/0172300 A1;
published June 18, 2015). Final Act. 18–23.
(3) Claim 19 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Collazo, Cabrera, and Lipinski et al. (US 9,648,039 B1;
issued May 9, 2017 and filed Jan. 24, 2008) (hereinafter, “Lipinski”). Final
Act. 23–24.

ISSUES
Based on Appellant’s arguments in the Appeal Brief (Appeal Br. 14–
32) and the Reply Brief (Reply Br. 1–8),2 the following principal issues are
presented on appeal:

2 Appellant argues claims 1–16 and 18 on the basis of claims 1, 5, 10, 11,
and 16, and primarily argues claim 1, arguing the other independent claims
(claims 5, 10, 11, 16) on that same basis (see Appeal Br. 4–23; Reply Br. 2–
8). As to remaining claims 17 and 19, Appellant relies on the arguments
presented as to claim 1, adding that as to (i) claim 17, the additionally
applied reference to Cochenour teaches away from Appellant’s claimed
invention (see Appeal Br. 28–30), and (ii) claim 19, Lipinski fails to cure the
deficiencies of the base combination of Collazo and Cabrera (see Appeal Br.
30–32). Based on Appellant’s arguments, we (i) select claim 1 as
representative of claims 1–16 and 18; (ii) decide the outcome of the
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(1) Did the Examiner err in rejecting claims 1–16 and 18 under
35 U.S.C. § 103 as being unpatentable over the base combination
of Collazo and Cabrera because the combination is not properly
combinable to teach or suggest heuristics (see claim 1, limitation
A) and conclusions (see claim 1, limitation B), or generating a
model (see claim 1, limitation C), as set forth in representative
claim 1?
(2) Did the Examiner err in rejecting claim 17 as being unpatentable
over the combination of Collazo, Cabrera, and Cochenour because
Cochenour teaches away from the claimed invention?
(3) Did the Examiner err in rejecting claim 19 as being unpatentable
over the combination of Collazo, Cabrera, and Lipinski because
the combination fails to teach or suggest applying heuristics and a
corresponding conclusion to a data set and transform the data set
into processed data, as recited in claim 19?

ANALYSIS
We have reviewed the Examiner’s rejections (Final Act. 4–24) in light
of Appellant’s arguments (Appeal Br. 14–32; Reply Br. 1–8) that the
Examiner has erred, as well as the Examiner’s response to Appellant’s
arguments in the Appeal Brief (Ans. 3–6). With regard to representative
claim 1, we agree with and adopt as our own the Examiner’s findings of
facts and conclusions as set forth in the Final Rejection (Final Act. 4–6) and
Answer (Ans. 3–6). And, with regard to claims 17 and 19 separately argued,

rejections of claims 17 and 19 separately; and (iii) decide the outcome of
claim 19 on the same basis as claim 1 from which it depends.
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we also agree with and adopt as our own the Examiner’s findings of facts
and conclusions as set forth in the Final Rejection (Final Act. 18–23 (claim
1), 23–24 (claim 19)) and Answer (Ans. 6–7 (claim 17), 7 (claim 19)). We
provide the following explanation for emphasis only.
We emphasize that the Examiner’s ultimate legal conclusion of
obviousness is based upon the combined teachings of the cited references.
Moreover, “‘the question under 35 USC 103 is not merely what the
references expressly teach but what they would have suggested to one of
ordinary skill in the art at the time the invention was made.’” Merck & Co.
v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In re
Lamberti, 545 F.2d 747, 750 (CCPA 1976)) (emphasis added); see also
MPEP § 2123. In this light, we agree with the Examiner that the combined
teachings and suggestions of (i) Collazo and Cabrera support the legal
conclusion of obviousness as to claim 1; (ii) Collazo, Cabrera, and
Cochenour support the legal conclusion of obviousness as to claim 17; and
(iii) Collazo, Cabrera, and Lipinski support the legal conclusion of
obviousness as to claim 19.
“During examination, ‘claims … are to be given their broadest
reasonable interpretation consistent with the specification, and … claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d
831, 833 (Fed. Cir. 1990)); In re Morris, 127 F.3d 1048, 1053–54 (Fed. Cir.
1997). To the extent possible, claim terms are given their ordinary and
customary meaning, as they would be understood by one of ordinary skill in
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the art in question at the time of the invention. Phillips v. AWH Corp., 415
F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc).
In this respect, we consult the Specification to determine the meaning
of the claim terms but do not limit claims to the specific embodiments and
language disclosed in the Specification if the claim terms can reasonably be
interpreted to have a broader meaning. See, e.g., Phillips, 415 F.3d at 1323;
In re Van Geuns, 988 F.2d 1181, 1184–1185 (Fed. Cir. 1993); In re Zletz,
893 F.2d 319, 321–22 (Fed. Cir. 1989) (“During patent examination the
pending claims must be interpreted as broadly as their terms reasonably
allow. When the applicant states the meaning that the claim terms are
intended to have, the claims are examined with that meaning, in order to
achieve a complete exploration of the applicant’s invention and its relation
to the prior art. See In re Prater, 415 F.2d 1393, 1404–05, 56 CCPA 1381,
162 USPQ 541, 550–51 (1969) (before the application is granted, there is no
reason to read into the claim the limitations of the specification.).”); see also
Martek Biosciences Corp. v. Nutrinova, Inc., 579 F.3d 1363, 1380 (Fed.
Cir. 2009) (“When a patentee explicitly defines a claim term in the patent
specification, the patentee’s definition controls.”).
Appellant’s primary argument is that none of the references, and
especially Collazo, teach or suggest heuristics that “are contemporaneously
engaged in the claimed analysis process as the analysis is executed” (Appeal
Br. 15). Appellant acknowledges, however, that “Collazo teaches heuristics”
(Appeal Br. 15), but that Collazo performs all analysis and transformation of
data sets offline (see Appeal Br. 15–17, 19–21). And Appellant admits that
“Lipinski uses a plurality of heuristics” as well (Appeal Br. 31). Appellant
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asks us to interpret the claims to require heuristics be used “during the data
transformation process” (Appeal Br. 20) (emphasis added).
The Examiner concludes that the claims are not so limited, so as to
require heuristics to be predefined (see Ans. 4–5). We agree with the
Examiner because Claim 1, nor any other claims, requires the recited
heuristics to be contemporaneous, to occur offline or at a specific time, or to
be predefined. Claim 1 simply recites that “heuristics” are used. The recited
heuristics are applied in the transformation step, and then a model is
generated as a starting point for identifying threats (see claim 1).
“[A]lthough a method claim necessarily recites the steps of the
method in a particular order, as a general rule the claim is not limited to
performance of the steps in the order recited, unless the claim explicitly or
implicitly requires a specific order.” Baldwin Graphics Systems, Inc. v.
Siebert Inc., 512 F.3d 1338, 1345 (Fed. Cir. 2008); see also Interactive Gift
Exp., Inc. v. Compuserve Inc., 256 F.3d 1323, 1343–44 (Fed. Cir. 2001).
Unless the steps of a method actually recite an order in which the step must
be performed, the steps are not ordinarily construed to require one.
Interactive Gift Express 256 F.3d at 1342. See also Altiris, Inc. v. Symantec
Corp., 318 F.3d 1363, 1369–71 (Fed. Cir. 2003) (district court erred in claim
construction by reading a step order from the written description into the
claims).
In this light, claim 1 recites a “computer-implemented method for
providing a model for identification of threats and weaknesses specific to an
application” that includes a series of steps, including (i) providing a data
structure (including heuristics and conclusions); (ii) generating a data set;
(iii) transforming the data set into processed data using the heuristics and
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conclusions; and (iv) generating a model of the application using the
transformed and processed data (see claim 1). However, there is nothing in
claim 1 preventing the heuristics from being processed or analyzed offline by
a computer, or requiring the heuristics to be predefined or contemporaneous
with the processing and/or analyzing. In other words, claim 1 simply calls
for heuristics and conclusions to be used in transforming the data set and
generating the model of the application — claim 1 is not limited as Appellant
contends.
As Appellant aacknowledges, Collazo teaches a learning engine 220
that uses heuristics and corresponding behavior pattern evaluations using
evolutionary algorithms (i.e., conclusions) (see ¶¶ 62, 79; Final Act. 4–5), to
find threat signatures and model threat profiles specific to applications (see ¶
76). And Cabrera teaches providing data structures for identified security
threats (see ¶¶ 3, 52), and applying a specific language to process data in
order to identify threats using a threat model (see ¶ 92; Final Act. 6).
In view of the foregoing, we agree with the Examiner’s (i) findings
that Collazo teaches using heuristics and conclusions in the recited
relationships to generate a data set for transformation and analysis, and
Cabrera teaches providing a data structure and generating a model as recited
in claim 1; and (ii) conclusion of obviousness for claim 1 (see Final Act. 4–6;
Ans. 4–6).
Appellant’s contentions (see Appeal Br. 24–28; Reply Br. 5–8) that
there is no motivation to combine Collazo and Cabrera are unpersuasive.
Moreover, we are not persuaded that modifying Collazo with Cabrera would
not merely produce predictable results or was “uniquely challenging or
difficult for one of ordinary skill in the art” at the time of Appellant’s
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invention (see Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157,
1162 (Fed. Cir. 2007) (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007)). This is evidenced by the fact that both Collazo, Cabrera, and
Appellant’s recited invention pertain to computer threat security, and both
Collazo and Cabrera are concerned with information security. As the
Examiner determines, and we agree:
Collazo and Cabrera are analogous art as they are in the same
field of endeavor of information security. It would have been
obvious to one of ordinary skill in the art before the effective
filing date of the claimed invention to combine the teachings of
Cabrera with the disclosure of Collazo. The
motivation/suggestion would have been to protect their
applications from unauthorized use and malicious attacks
(Cabrera, [0001]).

Final Act. 6.
In view of the foregoing, Appellant has not overcome the Examiner’s
prima facie case of obviousness with respect to independent claim 1. As a
result, we are not persuaded the Examiner erred in rejecting claim 1.
Accordingly, we sustain the Examiner’s rejection of (i) claim 1, as well as
claims 2–16 and 18 grouped therewith; and (ii) claim 19, depending from
claim 1, and argued for similar reasons.
With regard to claims 17 and 19, Appellant’s contentions (Appeal Br.
29–31) that neither Cochenour (as to claim 17) nor Lipinski (as to claim 19)
teaches using heuristics in combination with conclusions as recited are not
persuasive in view of the Examiner’s reliance on Collazo for the use of
heuristics with conclusions. Similarly, Appellant’s contention that
Cochenour teaches away from Appellant’s invention because Cochenour
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does not teach using heuristics is not persuasive, because Cochenour does
not discourage the path taken by Appellant (or by Collazo).
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994); see Para-Ordnance Mfg., Inc. v. SGS Importers Int’l, Inc.,
73 F.3d 1085, 1090 (Fed. Cir. 1995). Furthermore, it is irrelevant that the
prior art and the present invention allegedly have different purposes. See
Nat’l Steel Car, Ltd. v. Canadian Pac. Ry., Ltd., 357 F.3d 1319, 1339 (Fed.
Cir. 2004) (“A finding that two inventions were designed to resolve different
problems . . . is insufficient to demonstrate that one invention teaches away
from another.”). A prior-art reference that discloses alternatives does not,
simply by preferring some alternatives, “teach away” from the non-preferred
alternatives, In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004), and a
particular reference’s mere silence about a particular feature does not tend to
teach away from it, especially if it is disclosed elsewhere in the prior art,
Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005).
In other words, “[t]he prior art’s mere disclosure of more than one
alternative does not constitute a teaching away from any of these alternatives
because such disclosure does not criticize, discredit, or otherwise discourage
the solution claimed . . . .” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004).
In the instant case, the Examiner relies on Cochenour for teaching
tools used to analyze and heterogeneously scanned data as set forth in claim
17 (see Final Act. 22–23), and not heuristics. And, although we agree with
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Appellant that Cochenour teaches generating behavioral models to find
unique behavioral fingerprints of certain malware without the use of static
signatures and heuristics (see Cochenour ¶ 84; see also Appeal Br. 29),
Cochenour is merely a preference for one alternative to identifying threats,
and does not criticize, discredit, or otherwise discourage the solution
claimed. Therefore, one of ordinary skill in the art, reading Collazo,
Cabrera, and Cochenour, would not be discouraged from following the path
set out in Collazo of using heuristics, and would not be led in a direction
divergent from the path that was taken by Appellant. See In re Gurley, 27
F.3d at 553; Para-Ordnance Mfg., Inc. v. SGS Importers Int’l, Inc., 73 F.3d
at 1090.

CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
References/Basis Affirmed Reversed
1–16, 18 103 Collazo, Cabrera 1–16, 18
17 103 Collazo, Cabrera,
Cochenour
17
19 103 Collazo, Cabrera,
Lipinski
19
Overall
Outcome
1–19

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED