Ex Parte 7506155 et al

Patent Trial and Appeal Board

Mar 29, 2016

95002201 (P.T.A.B. Mar. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
95/002,201 09/12/2012 7506155
23524 7590 03/29/2016
FOLEY & LARDNER LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
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.
098888-7888 5639
EXAMINER
HENEGHAN, MATTHEW E
ART UNIT PAPER NUMBER
3992
MAILDATE DELIVERY MODE
03/29/2016 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
SYMANTEC CORPORATION
Requester
v.
INTELLECTUAL VENTURES I LLC. INC.
Patent Owner
Appeal 2016-000700
Reexamination Control 95/002,201
Patent No. US 7,506,155
Technology Center 3900
Before JAMES T. MOORE, MARC S. HOFF, and DAVID M. KOHUT,
Administrative Patent Judges.
HOFF, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Third Party Requester Symantec Corporation appeals under 35 U.S.C.
§§ 134(b) and 315(a) (2002) from the non-adoption of proposed rejections of
Appeal 2016-000700
Reexamination Control 95/002,201
Patent No. 7,506,155
claims 1, 2, 4, 10, 16, 17, 19, 25, and 31. Claims 1, 2, 3, 16, 17, 19, and 31
stand rejected on other grounds. Claims 10 and 25 stand confirmed by the
Examiner. Third Party Requester Symantec Corporation ("Symantec"),
filed a brief ("Req. Br.") on March 30, 2015. Patent Owner Intellectual
Ventures filed a Notice of Appeal, but did not file a brief. The Examiner
mailed an Examiner's Answer ("Ans.") on June 3, 2015 which incorporated
the RAN by reference. We have jurisdiction under 35 U.S.C. §§ 134 and
315.
We affirm.
The '155 Patent issued to Stewart on March 17, 2009. The invention
disclosed is an e-mail virus protection system and method. Any executable
programs or other suspicious parts of incoming e-mail message are
forwarded to a sacrificial server, where they are converted to non-executable
format such as Adobe Acrobat PDF and sent to the recipient. The sacrificial
server is then checked for virus activity. After the execution is completed,
the sacrificial server is rebooted. Abstract.
Claim 10 is exemplary of the claims on appeal:
10. The method of claim 1, wherein the converting
comprises:
maintaining a list of approved executable code;
determining whether the executable code is in the list of
approved executable code; and
deactivating the executable code if the executable code is
not in the list of approved executable code.
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Reexamination Control 95/002,201
Patent No. 7,506,155
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
McMillan
Chen et al.,
Ji et al.,
Shastri et al.
Kellum
Ko
Kim et al.
us 5826,267
us 5,832,208
us 5,889,943
us 2001/0033297
US 6,487 ,664 B 1
US 6,697,950 Bl
US 6,701,440 Bl
Oct. 20, 1998
Nov. 3, 1998
Mar. 30, 1999
Oct. 25, 2001
Nov. 26, 2002
Feb. 24, 2004
Mar. 2, 2004
Norton AntiVirus for Internet Email Gateways User's Guide,
Symantec Corporation, c. 1997-98 ("NA V-IEG").
"E-Mail Anti-Virus Software: Anti-Virus Gatekeepers", Info World
Magazine, 2l(issued 4), published Jan. 25, 1999 ("Info World").
"eSafe Technologies Announce the Most Comprehensive
Gateway_Level Content Protection for Firewalls" PR Newswire, published
on August 10, 1998, ("eSafe").
Requester appeals from the following non-adopted grounds of
rejection:
Proposed rejection of claims 1, 2, 4, 10, 16, 17, 19, 25, and 31 under
35 U.S.C. § 102(b) as being anticipated by eSafe.
Proposed rejection of claims 10 and 25 under 35 U.S.C. § 103(a) as
being unpatentable over Kellum and eSafe.
Proposed rejection of claims 10 and 25 under 35 U.S.C. § 103(a) as
being unpatentable over Ko and eSafe.
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Reexamination Control 95/002,201
Patent No. 7,506,155
Proposed rejection of claims 10 and 25 under 35 U.S.C. § 103(a) as
being unpatentable over Ji and eSafe.
Proposed rejection of claims 10 and 25 under 35 U.S.C. § 103(a) as
being unpatentable over Chen and eSafe.
Proposed rejection of claims 10 and 25 under 35 U.S.C. § 103(a) as
being unpatentable over NAV-IEG and eSafe.
Proposed rejection of claims 10 and 25 under 35 U.S.C. § 103(a) as
being unpatentable over Info World and eSafe.
Proposed rejection of claims 10 and 25 under 35 U.S.C. § 103(a) as
being unpatentable over Kim and eSafe.
ISSUE
Requester argues, inter alia, that the Examiner erred in concluding that
eSafe does not sufficiently one of ordinary skill in the art to reproduce the
software application without undue experimentation. See Req. Br. 5-8.
Requester further argues that eSafe discloses all the limitations of claims 10
and 25, including "maintaining a list of approved executable code." Req.
Br. 8-9, 12-13.
Requester further asserts that NA V-IEG is presumed enabled based on
the Examiner's rejection in the initial Office Action, and that Patent Owner
made no more than unsubstantiated statements that NA V-IEG is not
enabled. Req. Br. 18.
Requester further contends that Info World is presumed enabled based
on the Examiner's rejection in the initial Office Action, and that Patent
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Owner made no more than unsubstantiated statements that Info World is not
enabled. Req. Br. 21.
Requester's arguments present us with the following issue:
Does eSafe disclose or suggest maintaining a list of approved
executable code, as recited in claims 10 and 25?
ANALYSIS
PROPOSED REJECTION OVER KELLUM AND ESAFE
We agree with the Examiner's finding that "maintaining a list of
approved executable code," required by claims 10 and 25, is not explicitly
disclosed or inherently present in eSafe. Ans. 27-30. We further agree that
it would not have been obvious to modify Kellum in view of eSafe' s
teachings.
The eSafe reference is a product announcement for "eSafe Protect
Gateway." As characterized by the Examiner, it is a "high-level marketing
document" briefly describing the features of the product. eSafe discloses
options to "remove all macros, remove none ... , or remove based on
whether they are on a trusted/untrusted site list." eSafe 3. eSafe further
discloses an option "to permanently block sites or mail senders when a virus
or vandal is found. Id. Related to that option, an administrator can choose
"to block ALL files, or only files that have certain extensions." eSafe 4.
We are not persuaded that eSafe' s disclosures equate to maintaining a
list of approved executable code. See Req. Br. 12. Even if we were to agree
with Requester that it would have been obvious to implement a list of
approved items, given the disclosure of a list of disapproved items (Id.), we
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do not agree that a list of trusted or untrusted sites equates in any way to a
list of approved (or even disapproved) executable code. We are not
persuaded that it would have been obvious to the person having ordinary
skill in the art to modify the concept of a list of approved sites in order to
obtain the concept of a list of approved executable code. Similarly, we do
not agree that a list of disapproved file names or file extensions equates to a
list of approved executable code. We are not persuaded by Requester that it
would have been obvious to modify eSafe' s concept of a list of disapproved
file names or file extensions in order to arrive at the concept of a list of
approved executable code.
Because we are not persuaded that eSafe discloses the limitations of
claims 10 and 25, as alleged by Requester, we sustain the Examiner's
decision not to adopt the proposed § 103 rejection of claims 10 and 25 over
Kellum and eSafe.
PROPOSED REJECTION OVER ESAFE
Exhibit C8 of the Original Request for Reexamination makes clear the
portions of eSafe that Requester relies upon as allegedly disclosing the
limitations of claims 10 and 25. Request, Exhibit C8, pp. 21-24 and 45--48.
As discussed supra with respect to the proposed rejection over Kellum
and eSafe, we are not persuaded by Requester's arguments that eSafe
discloses the limitations of claims 10 and 25. We do not agree with
Requester that maintaining a "trusted site list," or a list of disapproved file
names or file extensions, corresponds to the claimed maintenance of a list of
approved executable code.
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Patent No. 7,506,155
Because we do not agree that eSafe discloses the limitations of claims
10 and 25, we sustain the Examiner's decision not to reject claims 10 and 25
under § 102 as anticipated by eSafe. We need not reach the proposed
rejection of claims 1, 2, 4, 16, 17, 19, and 31, which currently stand rejected
by the Examiner on other grounds.
PROPOSED REJECTION OVER Ko AND ESAFE
As discussed supra with respect to the proposed rejection over Kellum
and eSafe, we are not persuaded by Requester's arguments that eSafe
discloses the limitations of claims 10 and 25. We do not agree that
maintaining a "trusted site list," or a list of disapproved file names or file
extensions, corresponds to the claimed maintenance of a list of approved
executable code.
We are also unpersuaded by Requester's further argument that Ko
discloses maintaining a list of approved executable code. See Req. Br. 14.
Ko discloses that "profile database 214 can contain information specifying
non-suspect [macro] operations ... macro operations that are not identified
as being non-suspect macro operations are identified as suspect macro
operations." Ko col. 5, 11. 35--40. We agree with the Examiner's findings
that keeping "information" does not inherently mean keeping a "list," and
that Ko does not keep an actual list of approved macros, but rather macro
operations. Ans. 32-33. We, therefore, find that Ko does not disclose
maintaining a list of approved executable code.
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Because we find that neither Ko nor eSafe discloses the limitations of
claims 10 and 25, we sustain the Examiner's decision not to adopt the
proposed § 103 rejection of claims 10 and 25 over Ko and eSafe.
PROPOSED REJECTION OVER JI AND ESAFE
Exhibit C4 of the Original Request for Reexamination makes clear
that Requester relies on eSafe as allegedly disclosing the limitations of
claims 10 and 25. Request, Exhibit C4, pp. 29--32 and 61---64.
As discussed supra with respect to the proposed rejection over Kellum
and eSafe, we are not persuaded by Requester's arguments that eSafe
discloses the limitations of claims 10 and 25. We do not agree with
Requester that maintaining a "trusted site list," or a list of disapproved file
names or file extensions, corresponds to the claimed maintenance of a list of
approved executable code.
Because we do not agree that eSafe discloses the limitations of claims
10 and 25, we sustain the Examiner's decision not to reject claims 10 and 25
under § 103 over the combination of Ji and eSafe.
PROPOSED REJECTION OVER CHEN AND ESAFE
As discussed supra with respect to the proposed rejection over Kellum
and eSafe, we are not persuaded by Requester's arguments that eSafe
discloses the limitations of claims 10 and 25. See Req. App. Br. 17. We do
not agree that maintaining a "trusted site list," or a list of disapproved file
names or file extensions, corresponds to the claimed maintenance of a list of
approved executable code.
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Reexamination Control 95/002,201
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Because we find that eSafe does not disclose the limitations of claims
10 and 25, we sustain the Examiner's decision not to adopt the proposed
§ 103 rejection of claims 10 and 25 over Chen and eSafe.
PROPOSED REJECTION OVER NA V-IEG AND ESAFE
Exhibit C6 of the Request for Reexamination makes clear that
Requester relies on eSafe as allegedly disclosing the limitations of claims 10
and 25. Request, Exhibit C6, pp. 29-32 and 60-63.
As discussed supra with respect to the proposed rejection over Kellum
and eSafe, we are not persuaded by Requester's arguments that eSafe
discloses the limitations of claims 10 and 25. We do not agree with
Requester that maintaining a "trusted site list," or a list of disapproved file
names or file extensions, corresponds to the claimed maintenance of a list of
approved executable code.
Because we do not agree that eSafe discloses the limitations of claims
10 and 25, we sustain the Examiner's decision not to reject claims 10 and 25
under§ 103 over the combination ofNAV-IEG and eSafe.
PROPOSED REJECTION OVER INFO WORLD AND ESAFE
Exhibit C7 of the Original Request for Reexamination makes clear
that Requester relies on eSafe as allegedly disclosing the limitations of
claims 10 and 25. Request, Exhibit C7, pp. 27-30 and 57---60.
As discussed supra with respect to the proposed rejection over Kellum
and eSafe, we are not persuaded by Requester's arguments that eSafe
discloses the limitations of claims 10 and 25. We do not agree with
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Patent No. 7,506,155
Requester that maintaining a "trusted site list," or a list of disapproved file
names or file extensions, corresponds to the claimed maintenance of a list of
approved executable code.
Because we do not agree that eSafe discloses the limitations of claims
10 and 25, we sustain the Examiner's decision not to reject claims 10 and 25
under § 103 over the combination of Info World and eSafe.
PROPOSED REJECTION OVER KIM AND ESAFE
As discussed supra with respect to the proposed rejection over Kellum
and eSafe, we are not persuaded by Requester's arguments that eSafe
discloses the limitations of claims 10 and 25. See Req. Br. 23-24. We do
not agree that maintaining a "trusted site list," or a list of disapproved file
names or file extensions, corresponds to the claimed maintenance of a list of
approved executable code.
Because we find that eSafe does not disclose the limitations of claims
10 and 25, we sustain the Examiner's decision not to adopt the proposed
§ 103 rejection of claims 10 and 25 over Kim and eSafe.
REQUESTER'S ARGUMENTS REGARDING ENABLING DISCLOSURES
Our finding supra that eSafe does not disclose "maintaining a list of
approved executable code" is dispositive of the proposed rejections at issue.
Thus, we need not reach Requester's arguments that Patent Owner did not
overcome a presumption that eSafe, NAV-IEG, and/or Info World contain
enabling disclosures.
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CONCLUSIONS
eSafe does not disclose or suggest maintaining a list of approved
executable code, as recited in claims 10 and 25.
DECISION
The Examiner's decision not to adopt the rejections of claims 10 and
25 is affirmed.
We need not reach the proposed rejection of claims 1, 2, 4, 16, 17, 19,
and 31, which stand rejected by the Examiner on other grounds.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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