Ex Parte 7058822 et al

Patent Trial and Appeal Board

Dec 30, 2015

90013017 (P.T.A.B. Dec. 30, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
90/013,017 10/07/2013
115222 7590 12/30/2015
Bey & Cotropia PLLC (Finjan Inc,)
Dawn-Marie Bey
213 Bayly Court
Richmond, VA 23229
FIRST NAMED INVENTOR
7058822
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.
FINREXM0006 6388
EXAMINER
BASEHOAR, ADAM L
ART UNIT PAPER NUMBER
3992
MAILDATE DELIVERY MODE
12/30/2015 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 FINJAN, INC.
Appellant
Appeal2015-006304
Reexamination Control 90/013,017
Patent 7 ,058,822 B2
Technology Center 3900
Before STEPHEN C. SIU, JEREMY J. CURCURI, and
IRVINE. BRANCH, Administrative Patent Judges.
Opinion for the board filed by Administrative Patent Judge CURCURI.
Opinion dissenting-in-part filed by Administrative Patent Judge BRANCH.
CURCURI, Administrative Patent Judge.
DECISION ON APPEAL
Patent 7,058,822 B2 (Edery et al.) is under reexamination. Appellant
appeals under 35 U.S.C. §§ 134(b) and 306 from the Examiner's rejection of
claims 1-8, 16-27, and 36-40. Final Act. 2. We have jurisdiction under
35 U.S.C. §§ 134(b) and 306, and we heard oral argument in the appeal on
November 3, 2015.
Claims 4---6, 8, 16-27, 37, and 40 are rejected under 35 U.S.C.
§ 102(e) as anticipated by Ji (5,983,348; issued Nov. 9. 1999). Ans. 3-17.
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Claim 7 is rejected under 35 U.S.C. § 103(a) as obvious over Ji. Final
Act. 9-10.
Claims 1-3 are rejected under 35 U.S.C. § 103(a) as obvious over Ji
and Liu ( 6,058,482; issued May 2, 2000). Ans. 17-22.
Claims 4--8, 16-27, 37, and 40 are rejected under 35 U.S.C. § 103(a)
as obvious over Ji and Liu. Ans. 22-27.
Claims 4--8, 16-27, 37, and 40 are rejected under 35 U.S.C. § 103(a)
as obvious over Ji and Golan (5,974,549; issued Oct. 26, 1999). Ans. 27-33.
Claims 36, 38, and 39 are rejected under 35 U.S.C. § 305 as enlarging
the scope of the claims. Final Act. 19-20.
We affirm-in-part.
STATEMENT OF THE CASE
Appellant's invention relates to "protecting network-connectable
devices from undesirable downloadable operation." Edery, col. 1, 11. 28-29.
Claim 4 is illustrative:
4. A processor-based method, comprising:
receiving downloadable-information;
determining whether the downloadable-information
includes executable code; and
causing mobile protection code to be communicated to at
least one information-destination of the downloadable-
information, if the downloadable-information is determined to
include executable code,
wherein the causing mobile protection code to be
communicated comprises forming a sandboxed package
including the mobile protection code and the downloadable-
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information, and causing the sandboxed package to be
communicated to the at least one information-destination.
ANALYSIS
THE ANTICIPATION REJECTION OF CLAIMS 4---6, 8, 16-27, 37, AND 40 BY JI
The Examiner finds Ji discloses all limitations of claim 4. Ans. 3-5.
The Examiner finds "[b ]y disclosing that applets are scanned while non-
applets are not scanned, Ji at least implicitly discloses the step of
determining whether the downloadable-information includes executable
code." Ans. 3 (citing Ji, col. 3, 11. 23-25; col. 4, 1. 66-col. 5, 1. 4). The
Examiner finds Ji's JAR file corresponds to the recited sandboxed package.
Ans. 4--5 (citing Ji, col. 6, 11. 38--42; col. 7, 11. 13-28; col. 8, 11. 4--10).
Appellant presents the following principal arguments:
1. Ji does not disclose the recited (claim 4) "determining whether
the downloadable-information includes executable code" because "Ji then
scans only downloaded applets to look for malicious applet instructions; not
to determine ifthe downloaded applet contains executable code." App. Br.
16; see also App. Br. 17 ("[T]here are numerous ways that Ji can distinguish
downloaded applets from non-applets without determining whether the
downloadable-information includes executable code. For example, Ji could
simply search for applet tags. A file with an applet tag is not a
determination that the file contains executable code.").
[O]ne of skill in the art would understand that an applet tag is
not a determination that the file contains executable code
because an applet tag does not mean executable code exists
within the Downloadable, nor does the lack of an applet tag
mean that executable code does not exist within the
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Downloadable. Furthermore, Ji only operates on applets and
does not scan non-applets.
Declaration of Dr. Nenad Medvidovic i-f 22; see also id. at i-fi-123-24.
11. Ji's JAR file containing the instrumented applet and monitoring
package does not disclose the recited (claim 4) "sandboxed package." See
App. Br. 19-20; Declaration of Dr. Nenad Medvidovic i-f 27.
In response, the Examiner further explains
It is not relevant to patentability whether Ji "passively assumes"
or skeptically analyzes; the claim broadly requires determining.
Since Ji' s system takes a first action for downloadable-
information including executable code (i.e., scanning Java
applets assumed to be executable code) and takes a different
action for other downloadable-information (i.e., not scanning
non-applet downloadable information), Ji's system "determines
whether the downloadable-information includes executable
code".
Ans. 37-38.
In response, the Examiner further explains Ji's JAR file corresponds
to the recited sandboxed package. See Ans. 40-43.
Appellant has shown error in the Examiner's finding that Ji discloses
the recited (claim 4) "determining whether the downloadable-information
includes executable code."
Ji (col. 3, 11. 23-25) discloses: "At this point the applets are statically
scanned at the server by the scanner looking for particular instructions which
may be problematic in a security context." Ji (col. 4, 1. 66-col. 5, 1. 4)
discloses:
Upon receipt of a particular Java applet, the HTTP proxy server
32, which is software running on server machine 20 and which
has associated scanner software 26, then scans the applet and
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instruments it using an instrumenter 28 which is part of the
scanner software 26. (Downloaded non-applets are not
scanned.)
In order to disclose determining whether the downloadable-
information includes executable code, Ji must disclose distinguishing
between two alternative possibilities: executable code is included in the
downloadable-information, and executable code is not included in the
downloadable-information.
To the extent Ji's scanner does detect applets (for example, via applet
tags), Ji does determine some cases where executable code is included in the
downloadable-information (the applet tag reasonably indicates the existence
of executable applet code). Nonetheless, we agree with Appellant that the
lack of an applet tag does not determine that executable code is not included
in the downloadable-information. See Declaration of Dr. Nenad Medvidovic
,-r 22. Thus; at best; Ji determines; in some cases; when executable code is
included in the downloadable-information, but does not adequately
determine when executable code is not included in the downloadable
information. Therefore, Ji does not disclose the recited determining.
Appellant has also shown error in the Examiner's finding that Ji
discloses the recited (claim 4) "forming a sandboxed package including the
mobile protection code and the downloadable-information." The error in
this finding hinges on the meaning of the term "sandbox."
Ji (col. 6, 11. 38--42) discloses: "The pre and post filter and monitoring
package security policy functions[] are combined with the instrumented
applet code in a single JAR (Java archive) file format at the server 32, and
downloaded to the web browser 22 in client machine 14." Ji (col. 7, 11. 13-
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28) discloses prefetching dependency class files and instrumenting them
once. Ji (col. 8, 11. 4--10) discloses creating a new JAR file from the
instrumented class files and the monitoring package, and transfer thereof to
the client machine.
Appellant's Specification discloses: "The sandboxed package can
also include a corresponding Downloadable and can provide for initiating
the Downloadable in a protective 'sandbox'." Edery, col. 3, 11. 15-18.
Appellant's Specification discloses: "An MPC and applicable policies can
also, for example, precede each executable, such that each executable will be
separately sandboxed in the same or a different manner according to
MPC/policy configuration (see above) upon inflation and installation."
Edery, col. 13, 11. 62---66.
The term "sandbox" may be defined in the computer context as:
n. 1. Java Virtual Machine security area for downloaded
(remote or untrt1sted) applets, an area in \'l1hich such applets are
confined and prevented from accessing system resources.
Confinement to the sandbox prevents downloaded applets from
carrying out potentially dangerous operations, maliciously or
otherwise. They have to "play" inside the sandbox, and any
attempt to "escape" is thwarted by the Java Security Manager.
MICROSOFT COMPUTER DICTIONARY 463 (5th ed. 2002).
Thus, we conclude that the broadest reasonable interpretation of
"sandbox" requires an area in which executable code is initiated, confined,
and prevented from accessing system resources. This interpretation is both
consistent with Appellant's Specification and with a plain meaning of the
term in the computer context. Thus, the recited (claim 4) "forming a
sandboxed package including the mobile protection code and the
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downloadable-information" requires the downloadable-information to be
inside an area in which executable code is initiated, confined, and prevented
from accessing system resources.
Ji's JAR file does include the instrumented class files and the
monitoring package. See Ji, col. 8, 11. 4--10. However, Ji's JAR file is an
archive file and not a sandboxed package because the JAR file does not
cause Ji's applet to be inside an area, in which the applet's executable code
is initiated, confined, and prevented from accessing system resources. With
regard to Ji' s instrumentation, Ji instruments instructions. See Ji, Abstract.
Thus, although Ji may have particular instructions that are instrumented, the
instrumentation is also not a sandboxed package because the instrumentation
also does not cause Ji 's applet to be inside an area in which the applet's
executable code is initiated, confined, and prevented from accessing system
resources. Therefore, Ji does not disclose the recited forming a sandboxed
package.
We, therefore, do not sustain the Examiner's rejection of claim 4, or
of claims 5, 6, and 8, which depend from claim 4.
Similarly, we also do not sustain the Examiner's rejection of
independent claim 16, which recites "wherein the causing is accomplished
by forming a sandboxed package including the mobile protection code and
the downloadable-information, and causing the sandboxed package to be
delivered to the downloadable-information destination," or of claims 17-27,
which depend from claim 16.
Similarly, we also do not sustain the Examiner's rejection of
independent claim 37, which recites "determining whether the
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downloadable-information includes executable code," and further recites
"forming a sandbox package including the MPC and the downloadable-
information."
Similarly, we also do not sustain the Examiner's rejection of
independent claim 40, which recites "determining by a content inspection
engine associated with the server whether the downloadable-information
includes executable code," and further recites "forming by a packaging
engine a sandboxed package including the mobile protection code and the
downloadable-information."
THE OBVIOUSNESS REJECTION OF CLAIM 7 OVER JI
The Examiner finds Ji teaches all limitations of claim 7. Final Act. 9-
10. Claim 7 depends from claim 4. Thus, we do not sustain the Examiner's
rejection of claim 7 for reasons discussed above with respect to claim 4.
THE OBVIOUSNESS REJECTION OF CLAIMS 1-3 OVER JI AND LIU
The Examiner finds Ji and Liu teach all limitations of claims 1-3.
Ans. 17-22; see also Ans. 46-55. The Examiner finds Liu's detecting applet
tags discloses the recited (claim 1) "determining whether the downloadable-
information includes executable code." Ans. 19-20 (citing Liu, col. 3, 11. 7-
18; col. 4, 1. 62---col. 5, 1. 6; col. 6, 11. 19-57).
Appellant presents the following principal arguments:
1. Liu does not teach the recited (claim 1) "determining whether
the downloadable-information includes executable code" because Liu
generates web pages with modified class names. See App. Br. 22-27.
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11. There is no motivation to combine Ji and Liu to arrive at the
claimed invention. See App. Br. 27-29.
Appellant has shown error in the Examiner's finding that Liu
discloses the recited (claim 1) "determining whether the downloadable-
information includes executable code."
Our analysis of Liu is similar to our analysis of Ji. To the extent Liu
does detect applet tags, the lack of an applet tag does not determine that
executable code is not included in the downloadable-information. Thus, at
best, Liu determines, in some cases, when executable code is included in the
downloadable-information, but does not adequately determine when
executable code is not included in the downloadable information. Therefore,
Liu does not disclose the recited determining whether the downloadable-
information includes executable code.
We, therefore, do not sustain the Examiner's rejection of claim 1, or
of claims 2 and 3, which depend from claim 1.
THE OBVIOUSNESS REJECTION OF CLAIMS 4--8, 16-27, 37, AND 40
OVER JI AND LIU
The Examiner finds Ji and Liu teach all limitations of claims 4--8, 16-
27, 37, and 40. Ans. 22-27; see also Ans. 55-57. The Examiner finds Liu's
Java architecture including the Java sandbox discloses the recited sandboxed
package. Ans. 22-23 (citing Liu, col. 2, 11. 19--41 ).
Appellant presents the following principal arguments:
1. Ji does not disclose the recited (claim 4) "determining whether
the downloadable-information includes executable code." App. Br. 31.
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11. Liu does not disclose the recited (claim 4) "forming a
sandboxed package including the mobile protection code and the
downloadable-information" because Liu's Java sandbox is part of the JVM
within the client browser. See App. Br. 31-32; see also Declaration of Dr.
Nenad Medvidovic i-f 39.
111. There is no motivation to combine Ji and Liu to arrive at the
claimed invention. See App. Br. 32. Appellant has shown error in the
Examiner's finding that Ji teaches the recited (claim 4) "determining
whether the downloadable-information includes executable code" for
reasons given above when addressing the anticipation rejection based on Ji.
Appellant has also show error in the Examiner's finding that Liu
teaches the recited (claim 4) "forming a sand boxed package including the
mobile protection code and the downloadable-information." Liu (col. 2, 11.
19--41) discloses the Java sandbox and Java bytecode verifier.
For reasons given above when addressing the anticipation rejection
based on Ji, the recited (claim 4) "forming a sandboxed package including
the mobile protection code and the downloadable-information" requires the
downloadable-information to be inside an area in which executable code is
initiated, confined, and prevented from accessing system resources.
Liu's Java sandbox is part of the JVM within the client browser.
Further, Liu's Java sandbox is an area in which executable code is initiated,
confined, and prevented from accessing system resources. However, Liu's
Java sandbox is not formed as a package including the downloadable-
information because the Java sandbox is part of the JVM within the client
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browser. See Liu, col. 2, 11. 19--41. Therefore, Liu does not disclose the
recited forming a sandboxed package.
We, therefore, do not sustain the Examiner's rejection of claim 4, or
of claims 5, 6, and 8, which depend from claim 4.
Similarly, we also do not sustain the Examiner's rejection of
independent claim 16, which recites "wherein the causing is accomplished
by forming a sandboxed package including the mobile protection code and
the downloadable-information, and causing the sandboxed package to be
delivered to the downloadable-information destination," or of claims 17-27,
which depend from claim 16.
Similarly, we also do not sustain the Examiner's rejection of
independent claim 37, which recites "determining whether the
downloadable-information includes executable code," and further recites
"forming a sandbox package including the MPC and the downloadable-
information."
Similarly, we also do not sustain the Examiner's rejection of
independent claim 40, which recites "determining by a content inspection
engine associated with the server whether the downloadable-information
includes executable code," and further recites "forming by a packaging
engine a sandboxed package including the mobile protection code and the
downloadable-information."
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THE OBVIOUSNESS REJECTION OF CLAIMS 4--8, 16-27, 37, AND 40
OVER JI AND GOLAN
The Examiner finds Ji and Golan teach all limitations of claims 4--8,
16-27, 37, and 40. Ans. 27-33; see also Ans. 57-59. The Examiner finds
Golan's security monitor discloses the recited (claim 4) "determining
whether the downloadable-information includes executable code." Ans. 27
(citing Golan, col. 4, 11. 51---61). The Examiner finds Golan's security
monitor's secure sandbox discloses the recited sandboxed package. Ans. 28
(citing Golan, col. 4, 1. 62---col. 5, 1. 14).
Appellant presents the following principal arguments:
1. Golan does not disclose the recited (claim 4) "determining
whether the downloadable-information includes executable code" because
Golan monitors the behavior of already downloaded and executing code to
intercept and redirect API calls. App. Br. 35-36.
11. "Golan's security monitor is also not a sandboxed package
because the claimed package is structured so that the mobile protection code
is executed prior to executing the downloadable, as illustrated in elements
340 - 343 of FIGS. 3 and 4 of the present specification." App. Br. 36.
111. There is no motivation to combine Ji and Golan to arrive at the
claimed invention. See App. Br. 36-37. Appellant has shown error in the
Examiner's finding that Golan teaches the recited (claim 4) "determining
whether the downloadable-information includes executable code."
Our analysis of Golan is similar to our analysis of Ji and Liu. Golan
(col. 4, 11. 58---61) discloses: "The security monitor detects when a
downloaded software component attempts to commit an action that breaches
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security and functions to halt the component's execution and issue a warning
to the user." To the extent Golan does detect actions that breach security;
the lack of such an action does not determine that executable code is not
included in the downloadable-information. Thus, at best, Golan determines,
in some cases, when executable code is included in the downloadable-
information, but does not adequately determine when executable code is not
included in the downloadable information. Therefore, Golan does not
disclose the recited determining whether the downloadable-information
includes executable code.
Appellant has also shown error in the Examiner's finding that Golan
teaches the recited (claim 4) "forming a sand boxed package including the
mobile protection code and the downloadable-information." Golan (col. 4, 1.
62---col. 5, 1. 14) discloses the secure sandbox and security monitor, with the
security monitor filtering the APL
For reasons given above when addressing the anticipation rejection
based on Ji, the recited (claim 4) "forming a sandboxed package including
the mobile protection code and the downloadable-information" requires the
downloadable-information to be inside an area in which executable code is
initiated, confined, and prevented from accessing system resources.
Golan's sandbox is an area in which executable code is initiated,
confined, and prevented from accessing system resources. However,
Golan's sandbox is not formed as a package including the downloadable-
information. See Golan, Fig. 1. Therefore, Golan does not disclose the
recited forming a sandboxed package.
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We, therefore, do not sustain the Examiner's rejection of claim 4, or
of claims 5, 6, and 8, which depend from claim 4.
Similarly, we also do not sustain the Examiner's rejection of
independent claim 16, which recites "wherein the causing is accomplished
by forming a sandboxed package including the mobile protection code and
the downloadable-information, and causing the sandboxed package to be
delivered to the downloadable-information destination," or of claims 17-27,
which depend from claim 16.
Similarly, we also do not sustain the Examiner's rejection of
independent claim 37, which recites "determining whether the
downloadable-information includes executable code," and further recites
"forming a sandbox package including the MPC and the downloadable-
information."
Similarly, we also do not sustain the Examiner's rejection of
independent claim 40, which recites "determining by a content inspection
engine associated with the server whether the downloadable-information
includes executable code," and further recites "forming by a packaging
engine a sandboxed package including the mobile protection code and the
downloadable-information."
THE REJECTION OF CLAIMS 36, 38, AND 39 AS
ENLARGING THE SCOPE OF THE CLAIMS
The Examiner rejected claims 36, 38, and 39 as enlarging the scope of
the claims. Final Act. 19-20.
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Appellant does not present any arguments regarding this rejection.
See App. Br. 39--43; Reply Br. 24.
We, therefore, sustain the Examiner's rejection of claims 36, 38, and
39.
DECISION
The Examiner's decision rejecting claims 1-8, 16-27, 37, and 40 is
reversed.
The Examiner's decision rejecting claims 36, 38, and 39 is affirmed.
Extensions of time for taking any subsequent action in connection
with this appeal are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R.
§ 41.50(±).
AFFIRMED-IN-PART
ACP
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UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FINJAN, INC.
Appellant
Appeal2015-006304
Reexamination Control 90/013,017
Patent 7 ,058,822 B2
Technology Center 3900
Before STEPHEN C. SIU, JEREMY J. CURCURI, and
IRVINE. BRANCH, Administrative Patent Judges.
BRANCH, Administrative Patent Judge, dissenting-in-part.
I agree with and join the majority's decision that the Examiner's
rejection of claims 36, 38, and 39 should be affirmed. I also agree with the
majority's ultimate decision that the Examiner's rejection of claims 4--8, 16-
27, 37, and 40 should be reversed, although I do not fully agree with the
majority's reasoning. Specifically, as I explain hereinafter, I do not agree
with the majority's reasoning with respect to the "determining whether"
limitation of certain claims at issue. While I otherwise agree with the
majority's reasoning because of the "sandbox" limitations, our disagreement
over "determining whether" compels me to dissent as to the majority's
decision that the Examiner's rejection of claims 1-3 must be reversed. I
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would, instead, affirm the Examiner's decision that claims 1-3 are obvious
over Ji and Liu.
The majority finds that "[i]n order to disclose determining whether the
downloadable-information includes executable code, Ji must disclose
distinguishing between two alternative possibilities: executable code is
included in the downloadable-information, and executable code is not
included in the downloadable-information." I disagree. Instead, for either
obviousness or anticipation with respect to the limitation at issue, a prior art
reference "determin[ing] some cases where executable code is included in
the downloadable-information," as the majority finds to be the case, is
sufficient for "determine whether" downloadable-information includes
executable code.
Accordingly, I respectfully dissent-in-part.
Appellant:
Bey & Cotropia PLLC (Finjan Inc.)
Dawn-Marie Bey
213 Bayly Court
Richmond VA 23229
Third-party requestor:
Ryan W. Cobb, DLA PIPER LLP (US)
401 B Street
Suite 1700
San Diego, CA 92101
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