11171457 (P.T.A.B. Mar. 20, 2014)

Ex Parte van Riel

Patent Trial and Appeal BoardMar 20, 2014

11171457 (P.T.A.B. Mar. 20, 2014)

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. 11/171,457 07/01/2005 Henri Han van Riel 0040.0003 6993 14400 7590 03/20/2014 Patent Docket Administrator LOWENSTEIN SANDLER LLP 65 Livingston Avenue Roseland, NJ 07068 EXAMINER LOONAN, ERIC T ART UNIT PAPER NUMBER 2189 MAIL DATE DELIVERY MODE 03/20/2014 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 HENRI HAN VAN RIEL ____________ Appeal 2011-012193 Application 11/171,457 Technology Center 2100 ____________ Before CARLA M. KRIVAK, CAROLYN D. THOMAS, and DANIEL N. FISHMAN, Administrative Patent Judges. KRIVAK, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1-5, 7-15, and 17-19. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2011-012193 Application 11/171,457 2 STATEMENT OF THE CASE Appellant’s claimed invention is directed to a virtualization protection system (VPS) that leverages virtual machine monitor (VMM) technology for protecting computer systems (Abstract; Spec. ¶ [001]). Independent claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A method of protecting a computer system, said method comprising: running an additional operating system on a virtual machine hosted by a first operating system having privileged access to the computer system, wherein the additional operating system has a lower access privilege to the computer system than the first operating system; preventing, by the first operating system, the additional operating system from writing to restricted portions of a memory of the computer system, wherein the restricted portions of the memory include a kernel of the additional operating system; detecting an attempt by the additional operating system or an application to write to the restricted portions of the memory, wherein the application runs inside the virtual machine and has privileged access to the virtual machine; and providing a warning when the attempt to write to the restricted portions of the memory has been detected, wherein preventing the additional operating system from writing to the restricted portions of the memory does not prevent the first operating system from writing to the restricted portions of the memory. REJECTION The Examiner rejected claims 1-5, 7-15, and 17-19 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Appeal 2011-012193 Application 11/171,457 3 ANALYSIS The Examiner finds the claimed limitations “preventing the additional operating system from writing . . . does not prevent the first operating system from writing” (claim 1) and “preventing the guest operating system from writing . . .without preventing the virtual machine monitor from writing” (claims 9, 12, and 18), are not supported by Appellant’s Specification (Ans. 5). Additionally, the Examiner finds the Specification does not provide support for “simultaneous action of restricting write access to a secondary O/S while not restricting write access to the O/S hosting the secondary O/S” (emphasis omitted ) (Ans. 6). We disagree. The written description requirement dictates adequate descriptive support is provided for a recited function if the disclosed device inherently performs that function, even if the specification makes no mention of the function being performed. See In re Reynolds, 443 F.2d 384, 389 (CCPA 1971). As the court stated in In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983): The test for determining compliance with the written description requirement is whether the disclosure of the application as originally filed reasonably conveys to the artisan that the inventor had possession at that time of the later claimed subject matter, rather than the presence or absence of literal support in the specification for the claim language. The content of the drawings may also be considered in determining compliance with the written description requirement. (Citations omitted). Although the claimed invention does not necessarily have to be expressed ipsis verbis in order to satisfy the description requirement (see In Appeal 2011-012193 Application 11/171,457 4 re Wertheim, 541 F.2d 257, 265 (CCPA 1976)), it is nonetheless necessary that the disclosed apparatus inherently perform the functions now claimed (note In re Smythe, 480 F.2d 1376, 1383 (CCPA 1973)). Appellant’s paragraph [016] states “[t]he VPS may protect sensitive areas of memory . . . . [M]ak[ing] it essentially impossible for the virtual machines, guest operating systems, or other components outside of the VPS to write to sensitive areas of the memory, . . .” (emphasis added) (see App. Br. 14). Thus, the additional operating system is on a virtual machine (outside of the VPS). Additionally, Appellant’s paragraph [030] states the VPS retains control of the real MMU of the memory (App. Br. 15). Therefore, in light of these and other cited portions of Appellant’s Specification, the claimed step of preventing the additional operating system from writing to restricted portions and not preventing the first operating system from writing to the restricted portions, is inherently performed.1 DECISION The Examiner’s decision rejecting claims 1-5, 7-15, and 17-19 under 35 U.S.C. § 112, first paragraph is reversed. REVERSED tj 1 Although Appellant’s Specification discloses exemplary embodiments and thus, the written description requirement is met, the Examiner did not reject the claims under § 112, first paragraph for lacking enablement. If there is further prosecution, we leave it to the Examiner to determine if there is sufficient information in the Specification to enable Appellant’s claims.