Ex Parte SchumacherDownload PDFPatent Trial and Appeal BoardFeb 19, 201410941725 (P.T.A.B. Feb. 19, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/941,725 09/15/2004 Michael K. Schumacher 84,355-006 9417 26127 7590 02/19/2014 DYKEMA GOSSETT PLLC 39577 WOODWARD AVENUE SUITE 300 BLOOMFIELD HILLS, MI 48304-5086 EXAMINER DAO, THUY CHAN ART UNIT PAPER NUMBER 2192 MAIL DATE DELIVERY MODE 02/19/2014 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 MICHAEL K. SCHUMACHER ____________ Appeal 2011-005475 Application 10/941,725 Technology Center 2100 ____________ Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1-47. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE Appellant’s claimed invention is: [a] system for selectively blocking execution of applications on a computer system includes an interface that allows an administrator to set configuration settings and includes tools that assist the administrator in establishing an application list. Appeal 2011-005475 Application 10/941,725 2 The application list specifies zero or more applications that are to be either blocked or that are to be allowed to run (i.e., all others to be blocked), depending on the selected configuration settings. The tools include a mechanism that automatically creates a historical database of applications that have been executed in the past on the computer system. The interface allows easy selection of applications from the historical database for inclusion on the application list. (Spec. 26). Independent claim 1, reproduced below, is representative of the subject matter on appeal. 1. A method of operating a computer comprising the steps of: (A) tracking program files executed on the computer to thereby establish a historical data base wherein the database lists program files that have executed on the computer; (B) using the historical database to create an application list wherein the application list defines designated program files that are permitted to execute on the computer; (C) detecting when a candidate program file has started execution on the computer through a detecting means independent of the candidate program file and evaluating, using the application list, whether the candidate program file is allowed to continue to execute on the computer. REFERENCES and REJECTIONS Claims 1-4, 6-24, 26-34, and 36-46 stand rejected under 35 U.S.C. § 102(b) based upon the teachings of Biddle et al. (U.S. Patent Publication Application No. 2002/0107809 A1, pub. Aug. 8, 2002) (Biddle). Appeal 2011-005475 Application 10/941,725 3 Claims 5, 25, and 35 stand rejected under 35 U.S.C. § 103(a) based upon the teachings of Biddle and Duvvoori et al. (U.S. 6,021,438, issued Feb. 1, 2000) (Duvvoori). Claim 7 stands rejected under 35 U.S.C. § 103(a) based upon the teachings of Biddle and Johnson (U.S. Patent Publication Application No. 2007/0050301 A1, pub. Mar. 1, 2007). ANALYSIS 35 U.S.C. § 102 “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. v. Union Oil Co. of Calif., 814 F.2d 628, 631 (Fed. Cir. 1987). Analysis of whether a claim is patentable over the prior art under 35 U.S.C. § 102 begins with a determination of the scope of the claim. We determine the scope of the claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction 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). The properly interpreted claim must then be compared with the prior art. The Examiner refers to Figure 19 of the Biddle reference to which the Examiner maintains that the "start date" may simply refer to when a license begins, the Fields "issue date" and "start date" are associated with machine ID, "product number," in which said product number/application has executed on the machine ID in Blocks 210 and 262 and Figure 19. (Ans. 20). While we agree with the Examiner that Block 210 states “install and Appeal 2011-005475 Application 10/941,725 4 run application,” Block 262 must have an unexpired license or a valid credit card. Otherwise, the application is disabled without running (Blocks 258 and 242). Therefore, we find Block 210 does not necessarily indicate the execution of the application, but more appropriately would be described as a request to execute in the application subject to valid license or payment. With respect to Appellant's argument regarding prior execution (App. Br. 17), the Examiner maintains that in Figure 9, Block 210 states "install and run application." (Ans. 21-22). While we agree that the Biddle reference states "install and run application," there are conditions precedent that the license be unexpired and/or payment via credit card made. Therefore, the application is not actually executed until Block 262. Thus, we disagree with the Examiner's findings. In response to Appellant's argument that the Biddle reference does not teach that the licensing database is created using the historical database (App. Br. 17), the Examiner maintains that the timestamps are historical by start date or by expire date. (Ans. 22-24). The Examiner creates exemplary database entries which are not supported by the express teachings of the Biddle reference. We find the Examiner's rejection to be based upon conjecture rather than the express teachings of the Biddle reference. Such conjecture would require us to resort to speculation, unfounded assumptions, or hindsight reconstruction. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). We will not resort to such speculation or assumptions to cure the deficiencies in the factual basis in order to support the Examiner’s anticipation rejection. We note that the Examiner's rejection attempts to extend the express disclosure of the Biddle reference, but the Examiner has applied the Biddle reference as an anticipatory reference to each of the Appeal 2011-005475 Application 10/941,725 5 independent claims. We make no finding of the obviousness of independent claim 1 based upon the Biddle reference alone or in combination with any other teachings. The Examiner further maintains that the plain language of independent claim 1 "detecting when a candidate program file has started execution on the computer" does not exclude starting execution of an application/program file when the application is requested/activated by a user. (Ans. 25-26). The Examiner relies upon the license monitor in paragraph [0094] to conclude that a detecting means independent of the candidate program is present and that the application has started execution. We disagree with the Examiner. From our review of paragraphs [0094]- [0104] (extended to put paragraph [0094] into context), we find the Biddle reference clearly evidences the initial security processes and decryption take place during the request rather than during the step of "executing." Therefore, we find the Examiner's finding of the step of "executing" to be unreasonable and in error. Accordingly, we cannot sustain the Examiner's anticipation rejection of independent claim 1 and its respective dependent claims 2-4 and 6-17. Independent claims 18 and 31 contain similar limitations which the Examiner has not shown to be anticipated by the Biddle reference. Therefore, we do not sustain the rejection of claims 18 and 31 and their respective dependent claims 19-24, 26-30, 32-34, and 36-46. 35 U.S.C. § 103 With respect to claims 5, 25, 35, and 47, the Examiner has not identified how the Duvvoori or Johnson references remedy the noted Appeal 2011-005475 Application 10/941,725 6 deficiency with respect to the anticipation rejection. Therefore, we cannot sustain the rejection of dependent claims 5, 25, 35, and 47. CONCLUSIONS The Examiner erred in rejecting claims 1-4, 6-24, 26-34, and 36-46 under 35 U.S.C. § 102. The Examiner erred in rejecting claims 5, 25, 35, and 47 under 35 U.S.C. § 103. DECISION The Examiner’s decision rejecting claims 1-47 is reversed. REVERSED cam Copy with citationCopy as parenthetical citation