Ex Parte Wardman et al

Patent Trial and Appeal Board

Mar 26, 2018

14352601 (P.T.A.B. Mar. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/352,601 04/17/2014
26359 7590 03/28/2018
Maynard Cooper & Gale, PC (Birmingham)
1901 Sixth Avenue North
2400 Regions/Harbert Plaza
BIRMINGHAM, AL 35203-2618
FIRST NAMED INVENTOR
Brad Wardman
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.
03258-0017 4453
EXAMINER
GOLRIZ, ARYA
ART UNIT PAPER NUMBER
2498
NOTIFICATION DATE DELIVERY MODE
03/28/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
ipdocket@maynardcooper.com
tebbert@maynardcooper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRAD WARDMAN and
WALKER HADDOCK
Appeal2017-010732
Application 14/352,601 1
Technology Center 2400
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
JOYCE CRAIG, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 According to Appellants, the real party in interest is U AB Research
Foundation and PhishMe, Inc. App. Br. 3.
Appeal2017-010732
Application 14/352,601
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed embodiments and claimed invention relate to a
method of "automatically identifying newly observed phishing websites
within a toolbar, correctly branding the phishing websites for investigation,
and determining the prevalence and provenance of the phishing websites."
Spec. ,-r 1.
Exemplary Claim
Claim 1, reproduced below, is illustrative of the subject matter on
appeal (emphasis added to dispositive limitations):
1. A method for identifying a phishing website
compnsmg:
a. providing a computer system having an operating
system, a database system and a communication system for
controlling communications through the Internet,
b. transmitting a communication containing a plurality
of suspected phishing urls to the computer system,
c. retrieving website content files for each suspected
phishing url of the plurality of phishing urls, the website
content files including structural components,
d. preprocessing the website content files thereby
producing normalized website content file sets for each of the
plurality of suspected phishing urls,
2 Our decision relies upon Appellants' Appeal Brief and Corrected Appeal
Brief ("App. Br.," filed Jan. 17, 2017); Reply Brief ("Reply Br.," filed Aug.
16, 2017); Examiner's Answer ("Ans.," mailed June 16, 2017); Final Office
Action ("Final Act.," mailed Dec. 17, 2015); and the original Specification
("Spec.," filed April 17, 2014).
2
Appeal2017-010732
Application 14/352,601
e. creating an abstract syntax tree for each of the
normalized website content file sets,
f. calculating a hash value for each structural component
of each of the normalized website content file sets and
constructing a hash value set there from for each normalized
website content file set,
g. selecting a first hash value from a first hash value set
and comparing the first hash value to hash values of structural
components of known phishing websites to locate a matching
hash value,
h. if a matching hash value is located, comparing the
first hash value set to a hash value set of the matching hash
value and creating a similarity score, and
i. if the similarity score meets or exceeds a
predetermined threshold, designating a suspected url from
which the first hash value was derived as a phishing website.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Jordan US 2004/0243829 Al
Ashworth et al. ("Ashworth") US 2006/0116974 Al
Eubanks
Golan et al. ("Golan")
Chen et al. ("Chen")
US 7,330,884 Bl
US 2008/0052359 Al
US 7,958,555 Bl
3
Dec. 2, 2004
June 1, 2006
Feb. 12,2008
Feb.28,2008
June 7, 2011
Appeal2017-010732
Application 14/352,601
Rejections on Appeal
RI. Claims 1, 2, 4--10, and 12-20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Chen, Eubanks, and
Jordan. Final Act. 3--4.
R2. Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Chen, Eubanks, Jordan, and Golan.
Final Act. 22.
R3. Claim 11 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Chen, Eubanks, Jordan, and Ashworth.
Final Act. 23.
ISSUE
Appellants argue (App. Br. 6-11; Reply Br. 2-5) the Examiner's
rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the
combination of Chen, Eubanks, and Jordan is in error. These contentions
present us with the following issue:
Did the Examiner err in rejecting claim l under 35 U.S.C. § 103(a) as
being obvious over the suggested combination, specifically, in regards to
conditional limitations (h), i.e., "if a matching hash value is located,
comparing the first hash value set to a hash value set of the matching hash
value and creating a similarity score," and (i), "if the similarity score meets
or exceeds a predetermined threshold, designating a suspected url from
which the first hash value was derived as a phishing website," as recited in
claim 1 (emphases added)? 3
3 Although Appellants make additional arguments regarding alleged
deficiencies of Chen in teaching other limitations of claim 1. and
~ '
4
Appeal2017-010732
Application 14/352,601
ANALYSIS
Based upon our review of the record, we find a preponderance of the
evidence supports particular arguments advanced by Appellants with respect
to claims 1-20 for the specific reasons discussed below. We highlight and
address specific findings and arguments regarding claim 1 for emphasis as
follows.
§ 103(a) Rejection RI of Claim 1
Regarding limitation (h) of claim 1, Appellants contend, "Chen
describes only whether or not an exact match is found - there is simply no
similarity score in Chen - as Chen only discloses a binary comparison."
App. Br. 10.
In rejecting claim 1 under§ 103(a), the Examiner finds Chen's
signature match algorithm, which provides a binary phishing result of
"yes/no," teaches the disputed "similarity score." Ans. 6; Final Act. 5.
We give the contested claim limitation the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997).
However, in this case, we find the Examiner has not fully developed
the record to show that Chen teaches or at least suggests, "creating a
similarity score," as required by the contested language of claim 1.
As recently emphasized by our reviewing court in Smith,
[ e ]ven when giving claim terms their broadest reasonable
interpretation, the Board cannot construe the claims "so broadly
that its constructions are unreasonable under general claim
construction principles." Microsoft Corp. v. Proxyconn, Inc.,
commensurate limitations in each of independent claims 17 and 19, we find
this identified issue to be dis positive of the Appeal.
5
Appeal2017-010732
Application 14/352,601
789 F.3d 1292, 1298 (Fed. Cir. 2015) .... "[T]he protocol of
giving claims their broadest reasonable interpretation ... does
not include giving claims a legally incorrect interpretation"
"divorced from the specification and the record evidence." Id.
(citations and internal quotation marks omitted); see PPC
Broadband, Inc. v. Corning Optical Commc 'ns RF, LLC, 815
F.3d 747, 751-53 (Fed. Cir. 2016).
The correct inquiry in giving a claim term its broadest
reasonable interpretation in light of the specification is not
whether the specification proscribes or precludes some broad
reading of the claim term adopted by the examiner. And it is not
simply an interpretation that is not inconsistent with the
specification. It is an interpretation that corresponds with what
and how the inventor describes his invention in the
specification, i.e., an interpretation that is "consistent with the
specification." In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997) (citation and internal quotation marks omitted); see also
In re Suitco Surface, 603 F.3d 1255, 1259-60 (Fed. Cir. 2010).
In re Smith Int'!, Inc., 871 F.3d 1375, 1382-83 (Fed. Cir. 2017).
Here, we are not persuaded by the Examiner's findings because the
disputed limitation "creating a similarity score" is explained in Appellants'
Specification as a calculation that results in a (non-binary) value, based on
measuring the similarity between two file construct sets or hash value sets
by taking the average proportion of matching constructs between the two
sets. Spec. 8-9. Such a similarity score is described as a calculated
numerical value that is then compared to a threshold value, thus, we find it
to be unreasonable and inconsistent with Appellants' Specification to limit
the calculated similarity score to either a binary "O" or "1."
Regarding limitation (i) of claim 1, Appellants state:
[T]he Final Office Action relies on a portion of Chen describing
whether or not a URL matches another URL. This cannot teach
6
Appeal2017-010732
Application 14/352,601
the claim limitations because it does not even reference a
"predetermined threshold". The Final Office Action has
provided no evidence or explanation of how the teachings of
Chen could be considered to teach a "similarity score" or using
a "predetermined threshold."
App. Br. 11. Appellants specifically contend, "[a]s explained in Appellants'
Appeal Brief, if a 'similarity score' cannot be interpreted to cover a binary
comparison, then Chen also cannot be interpreted to cover a 'predetermined
threshold' in combination with the 'similarity score.'" Reply Br. 5.
The Examiner finds a "threshold" can be broadly but reasonably
interpreted to be 0% or 100%. Ans. 7.
We do not find the Examiner's interpretation to be reasonable, because
a threshold of either 0% or 100% is a binary derivation, not a comparison of
a calculated numerical value to a threshold value. We find a reasonable
threshold value could be between 0% and 100%, but also find a "threshold"
at either end of this range is unreasonable. Moreover, while we do not read
limitations into the claims from the Specification, we find the Examiner's
overly broad interpretation impermissibly reads the disputed conditional
limitation "if the similarity score meets or exceeds a predetermined
threshold" out of the claim.
Thus, we are persuaded by Appellants' argument that the cited
portions of the Chen reference do not teach or suggest the disputed
conditional limitation of determining whether "the similarity score meets or
exceeds a predetermined threshold."
Therefore, based upon the findings above, on this record, we are
persuaded of at least one error in the Examiner's reliance on the cited prior
art combination to teach or suggest the dispositive limitation (i) of claim 1,
such that we find error in the Examiner's resulting legal conclusion of
7
Appeal2017-010732
Application I4/352,60I
obviousness. Accordingly, we do not sustain the Examiner's obviousness
rejection of independent claim I, or independent claims I 7 and I9, which
recite the disputed limitations in commensurate form.
For the same reasons, we also reverse Rejection RI under§ I03 of
claims 2, 4--IO, I2-I6, I8, and 20 that variously and ultimately depend from
independent claims I, I 7, and I 9.
§ 103(a) Rejections R2 and R3 of Claims 3 and 11
In light of our reversal of the rejections of independent claims I, I 7,
and I9, supra, we also reverse obviousness Rejections R2 and R3 under
§ I03(a) of claims 3 and I I, which variously and ultimately depend from
claim I. On this record, the Examiner has not shown how the additionally
cited secondary Golan and Ashworth references overcome the
aforementioned deficiencies with the combination of Chen, Eubanks, and
Jordan, as discussed above regarding claim I.
CONCLUSION
The Examiner erred with respect to obviousness Rejections RI
through R3 of claims I-20 under 35 U.S.C. § I03(a) over the cited prior art
combinations of record, and we do not sustain the rejections.
DECISION
We reverse the Examiner's decision rejecting claims I-20.
REVERSED
8