Ex Parte Cohen et al

Patent Trial and Appeal Board

Nov 25, 2014

11728312 (P.T.A.B. Nov. 25, 2014)

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.
11/728,312 03/22/2007 Alexander J. Cohen SE1-0204-US 1563
80118 7590 11/25/2014
Constellation Law Group, PLLC
P.O. Box 580
Tracyton, WA 98393
EXAMINER
GOODCHILD, WILLIAM J
ART UNIT PAPER NUMBER
2433
MAIL DATE DELIVERY MODE
11/25/2014 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 ALEXANDER J. COHEN, EDWARD K.Y. JUNG,
ROYCE A. LEVIEN, ROBERT W. LORD, MARK A. MALAMUD,
JOHN D. RINALDO JR., and LOWELL L. WOOD JR.
____________________

Appeal 2012-0081171
Application 11/728,312
Technology Center 2400
____________________

Before JEAN R. HOMERE, JOHNNY A. KUMAR, and
DANIEL N. FISHMAN, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 Appellants identify the real party in interest as Searete LLC. App. Br. 4.
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–7, 9–13, 15–18, 20–27, 29–46, 55, and 59.
Claims 8, 14, 19, 28, 47–54, 56–58, and 60–72 have been canceled. App.
Br. 5. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ Invention
Appellants invented a method and system for implementing security
control from service emulation indications. In particular, upon obtaining an
indication that a software is safe for use in a first environment wherein the
software was emulated with a first security control practice, a decision is
made in a second environment on whether to use the software therein
without the security control practice. Spec. 6:26–31.
Representative Claim
Independent claim 1 is representative. It reads as follows:
1. A method executed on a hardware-containing system
comprising:
obtaining an indication of an emulation of a service in a first
environment with a first security control practice; and
signaling a decision whether to use a second environment
without the first security control practice in performing at least a
portion of the service as a result of the indication of the emulation of
the service in the first environment with the first security control
practice.

Prior Art Relied Upon
Szor US 2004/0255165 A1 Dec. 16, 2004
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Rejection on Appeal
The Examiner rejects claims 1–7, 9–13, 15–18, 20–27, 29–46, 55, and
59 under 35 U.S.C. § 102(b) as being anticipated by Szor.
ANALYSIS
We consider Appellants’ arguments seriatim as they are presented in
the Appeal Brief, pages 13–71.2

Dispositive Issue: Under 35 U.S.C. § 102, did the Examiner err in
finding Szor describes signaling a decision of whether to use at least a
portion of a service in a second environment without a first security control
practice subsequent to an indication that the service was emulated in a first
environment with the security control practice, as recited in claim 1?
Appellants argue Szor does not describe the disputed limitations
emphasized above. App. Br. 30. In particular, Appellants argue that,
although Szor discloses a system that tests software to determine whether it
contains a virus, Szor is silent about making a decision in a second
environment on whether to use the software without the security control
practice. App. Br. 32.
In response, the Examiner finds Szor discloses an emulating module
in a virtual machine (first environment) for running a virus detection

2 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed October 3, 2011), and the Answer (mailed
November 28, 2011) for the respective details. We have considered in this
Decision only those arguments Appellants actually raised in the Brief. Any
other arguments Appellants could have made but chose not to make in the
Brief are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
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program (security control practice) to detect whether suspected software
code contains a virus. In response to determining that the software code
does not contain a virus, the software is run in a PC (second environment)
without using the emulating module in the second environment (Szor ¶¶ 14,
51–54, 99, and 100). Ans. 19–20. According to the Examiner, the cited
disclosures of Szor describe the disputed limitations. Id.
On the record before us, we do not find error in the Examiner’s
anticipation rejection of claim 1. We note at the outset Appellants do not
dispute the Examiner’s findings with respect to Szor’s disclosures in the
afore-cited paragraphs. However, Appellants dispute the Examiner’s finding
that such disclosures describe “signaling a decision whether to use a second
environment without the first security control practice in performing at least
a portion of the service as a result of the indication of the emulation of the
service in the first environment with the first security control practice,” as
recited in claim 1. Although the cited disclosures of Szor do not explicitly
describe the disputed limitations, we nonetheless agree with Examiner’s
finding of anticipation because the afore-cited paragraphs implicitly provide
the requisite description in support thereof. In particular, such implicit
description emanates from paragraph 14, which recites in relevant part “[t]he
virtual machine (422) executes the instructions in isolation from the actual
hardware and software on the computer system (200) so that a virus in the
virtual machine cannot infect files on the computer system.” In our view, by
emulating the virus check on the software code in isolation in the virtual
environment (first environment) to prevent files in the computer system
(second environment) from being infected, Szor implicitly discloses that the
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virus check should not be performed in the computing system. Further, the
disclosed software emulation is not an end itself. Rather, it is a prerequisite
for ultimately running the virus-free software in the computing environment
while minimizing the possibility of infecting files therein. Therefore, it
follows that in order to run the software in the computing environment, as
stipulated, the software must first be cleared in the virtual environment.
Subsequently, the computing system must be notified that the software is
ready for safe use in the computing environment without having to perform
another virus check therein. Thus, we are satisfied that Szor’s disclosure
that the computing environment receives a signal to use to the virus-free
software without having to do another virus check describes the disputed
limitations. Furthermore, because the Examiner’s detailed response in the
Answer (Ans. 21–42) has fully rebutted, by a preponderance of the evidence,
Appellants’ additional arguments with respect to claim 1, we adopt the
Examiner’s findings and underlying reasoning, which we incorporate herein
by reference. It follows Appellants have not shown error in the Examiner’s
rejection of claim 1.
Regarding the rejection of claims 2–7, 9–13, 15–18, 20–27, 29–46,
55, and 59, to the extent Appellants have either not presented separate
patentability arguments or have reiterated substantially the same arguments
as those previously discussed for patentability of claim 1 above, claims 2–7,
9–13, 15–18, 20–27, 29–46, 55, and 59 fall therewith. See 37 C.F.R.
§ 41.37(c)(1)(vii). Further, to the extent Appellants have raised additional
arguments for patentability of these claims (App. Br. 44–71), we find that
the Examiner has rebutted in the Answer each and every one of those
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arguments by a preponderance of the evidence. Ans. 23–85. We adopt the
Examiner’s findings and underlying reasoning, which we incorporate herein
by reference. Because Appellants have failed to persuasively rebut the
Examiner’s findings regarding the rejections of claims 2–7, 9–13, 15–18,
20–27, 29–46, 55, and 59, Appellants have failed to show error in the
Examiner’s rejections of these claims.
DECISION
We affirm the Examiner’s rejections of claims 1–7, 9–13, 15–18, 20–
27, 29–46, 55, and 59 as set forth above. 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

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