Gaurav Banga et al.

Patent Trials and Appeals Board

Sep 2, 2020

2019000010 (P.T.A.B. Sep. 2, 2020)

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.
14/328,189 07/10/2014 Gaurav Banga 85830721 1056
22879 7590 09/02/2020
HP Inc.
3390 E. Harmony Road
Mail Stop 35
Fort Collins, CO 80528-9544
EXAMINER
LABUD, JONATHAN R
ART UNIT PAPER NUMBER
2196
NOTIFICATION DATE DELIVERY MODE
09/02/2020 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):
ipa.mail@hp.com
jessica.pazdan@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GAURAV BANGA, IAN PRATT, VIKRAM KAPOOR, and
KIRAN BONDALAPATI
Appeal 2019-000010
Application 14/328,189
Technology Center 2100

Before JAMES R. HUGHES, DENISE M. POTHIER, and SCOTT E.
BAIN, Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1,2 appeals from the
Examiner’s decision to reject claims 1–22. Appeal Br. 5. The Examiner has
withdrawn the rejection of claims 1–22 under 35 U.S.C. § 101. Ans. 3. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
The claims “relate to downloading data in a dedicated virtual
machine.” Spec. ¶ 4; id. ¶ 11. The invention’s technique includes migrating
downloading activity to a computer system’s dedicated virtual machine
(VM) that (1) may be a different operating environment than from where the
download request originated and (2) may not have access to sensitive
resources (e.g., the file system and memory areas) of the computer system.
Id. ¶¶ 12, 18. The dedicated VM is instantiated “solely for the purpose of
doing network activity and writing bytes to a file system.” Id. ¶ 26. This
permits download operations to be isolated and to be performed securely on
the computer system. See id. ¶¶ 12, 28.
Claim 15 illustrates the claimed subject matter below:
15. A method for safely receiving information from another
apparatus, comprising:

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Bromium, Inc.
Appeal Br. 3.
2 Throughout this opinion, we refer to the Final Action (Final Act.) mailed
January 10, 2018, the Appeal Brief (Appeal Br.) filed April 10, 2018, the
Examiner’s Answer (Ans.) mailed July 30, 2018, and the Reply Brief (Reply
Br.) filed September 28, 2018.
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upon intercepting, at a network stack level on a computer
system, from a process executing within a first virtual machine
or a host operating system running on the computer system, a
request to transfer data from an external location to the
computer system, initiating a connection with the external
location using parameters identified in the request; and
performing the request by transferring the data from the
external location to a second virtual machine, running on the
computer system, which is prohibited from interpreting or
executing the data transferred from the external location.

Appeal Br. 21 (Claims App.).

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Baumann US 2002/0099844 A1 July 25, 2002
Grzonka US 2006/0004737 A1 Jan. 5, 2006
Hutton US 2006/0271926 A1 Nov. 30, 2006
Ferri US 2010/0192224 A1 July 29, 2010
Sanghvi US 2012/0210318 A1 Aug. 16, 2012

OBVIOUSNESS REJECTION OVER FERRI, GRZONKA,
AND SANGHVI
Claims 1, 2, 6–9, 13–16, and 20–223 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Ferri, Grzonka, and Sanghvi. Final Act.
6–10. For independent claims 1, 8, and 15, the rejection cites Ferri to teach
its features, except for intercepting the request to transfer data “at a network
stack level on a computer system” and “a second virtual machine . . .
prohibited from interpreting or executing the data transferred from the

3 Although the heading the rejection does not include claim 22, the
rejection’s body addresses the claim. Compare Final Act. 6, with id. at 10.
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external location.” Id. at 6–7 (citing Ferri ¶¶ 3, 9–20, 25, Figs. 1–2, 4), 9
(referring to claim 1 for claims 8 and 15). The rejection turns to Grzonka in
combination with Ferri to teach “a second virtual machine . . . prohibited
from interpreting or executing the data transferred from the external
location” (id. at 7 (citing Grzonka ¶¶ 3–5, 39); Ans. 4 (citing Ferri ¶¶ 14,
26)) and Sanghvi in combination with Ferri and Grzonka to teach
intercepting the request to transfer data “at a network stack level on a
computer system” (Final Act. 8 (citing Sanghvi ¶¶ 28, 43, Fig. 4)).
Reproducing Ferri’s paragraph 3 (Appeal Br. 13), Appellant argues
that Ferri’s sandbox session, which “is analogous to the second virtual
machine as claimed” (id. at 14), “necessarily requires that the sandbox
session interpret and render the web page [referenced by a hyperlink] so that
it may be displayed.” Id.; see id. at 13–14 (quoting from Final Act. 7 (citing
Ferri ¶¶ 9–20, 25, Figs. 1–2)). Appellant contends modifying Ferri’s
sandbox session based on Grzonka’s teaching would render Ferri
unsatisfactory for its intended purpose because Ferri’s sandbox session
would no longer interpret and render web pages. Id. at 14–16 (citing the
Manual of Patent Examining Procedure (MPEP) § 2143.014(V) and In re
Gordon, 733 F.2d 900 (Fed. Cir. 1984)).

4 The Appeal Brief refers to “§ 2143(V).” Id. at 15–16. We found the
quoted language in MPEP § 2143.01(V).
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ISSUE
Would modifying Ferri with Grzonka as proposed to arrive at the
recited step of “performing the request by transferring the data from the
external location to a second virtual machine . . . , which is prohibited from
interpreting or executing the data transferred from the external location”
render Ferri unsatisfactory for its intended purpose or change Ferri’s
principle of operation?

ANALYSIS
On the record before us, we are persuaded the Examiner has erred.
The Specification explains, when a user selects a link to code on a web
browser, the web browser contacts a web site by initiating a download
request for a particular file (e.g., HTML file, PHP file, or a JavaScript file)
to a web site and then retrieves the file. Spec. ¶ 24. Thus, in this example of
a web browser “[i]n normal use” (id. ¶ 24), claim 1’s “request to transfer
data from an external location to the computer system” is the download
request for a particular file and the web browser retrieves the file, which is
usually interpreted by the browser. See id.
Ferri’s sandbox session operates similarly to that described above
when a web browser is in normal use. For example, Ferri discusses (1)
detecting a selection of a hyperlink (e.g., hyperlink 105, which is a link to
code, on host session’s web browser 103), (2) creating a sandbox session
(e.g., 111) implemented as a virtual machine that instantiates a browser (e.g.,
113), (3) requesting the content referenced by the hyperlink, and (4)
rendering a web page (e.g., 115) on its web browser (e.g., 113). Ferri ¶¶ 11–
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14, Fig. 1; see id. ¶ 3 (discussing loading the web page in the sandbox
session’s web browser), quoted in Appeal Br. 13.
Claim 1, however, recites “performing the request by transferring the
data from the external location to a second virtual machine . . . , which is
prohibited from interpreting or executing the data transferred from the
external location.” Appeal Br. 18 (Claims App.) (emphasis added). We
agree with Appellant (see Appeal Br. 14) that Ferri’s sandbox session, which
the Examiner mapped to the recited “second virtual machine” (see Final Act.
7), interprets or executes the requested data transferred (e.g., request for
content referenced by the selected hyperlink) in order for its browser to
render the web page as described. See Ferri ¶ 14.
Nonetheless, the Examiner contends Ferri further teaches that Ferri’s
sandbox environment may not interpret and render the web page identified
by the hyperlink, citing to a particular passage within Ferri’s paragraph 14.
Ans. 4. In particular, Ferri states:
At stage C, the sandbox session management unit 109
instantiates a browser 113, assuming the browser 113 was not
already instantiated, and configures the browser 113 in the
sandbox session 111. The sandbox session management unit
109 also requests the content referenced by the hyper link 105.
When the requested content is received, the browser 113
renders a web page 115 . . . . In some cases, a browser in a
sandbox session may be configured with additional security
settings. Examples of additional security settings include
disabling opening of additional hyperlinks, disabling running of
scripts, etc.

Ferri ¶ 14 (emphasis added). Based on the emphasized passage, the
Examiner contends “a wide range of permissions and content is possible
through the use of the sandbox’s session’s additional security” (Ans. 4),
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including a sandbox environment configured “not [to] interpret and render
content referenced by a hyperlink in the form of a web page (e.g. html,
scripts, etc.).” Id. at 5.
We disagree with the Examiner’s understanding of Ferri’s additional
security settings. Ferri’s “additional security settings” do not disable
opening (e.g., interpreting or executing) the originally requested hyperlink
(e.g., the recited “request to transfer data”). See Ferri ¶ 14. Rather, Ferri
describes the “additional security settings include disabling opening of
additional hyperlinks” (id. (emphasis added)), such as additional hyperlinks
located within the rendered web page (e.g., 115) discussed in paragraph 14.
See id., Fig. 1. Moreover, even if we were to consider a request for one of
these additional hyperlinks as the recited “request to transfer data,” this
request is from a process executing within the sandbox session, which is the
mapped “second virtual machine,” not the recited “first virtual machine”
required by claim 1. Thus, Ferri’s “disabling opening of additional
hyperlinks” in paragraph 14 does not suggest “performing the request by
transferring data from the external location to a second virtual machine . . . ,
which is prohibited from interpreting or executing the data transferred from
the external location” as claim 1 recites. See Reply Br. 9 (stating the
“configuration setting of a web browser does not satisfy the express
requirements of a second virtual machine as recited by Claim 1.”)
Ferri also discusses “disabling running of scripts” as an additional
setting for the configured web browser in the sandbox session. Ferri ¶ 14.
We understand this teaching to mean the sandbox session’s browser (e.g.,
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113) may disable running some of the scripts or code5 associated with the
requested hyperlink but still renders a web page (e.g., the requested data
transferred) when read in the context of paragraph 14 in its entirety, which
states earlier in the paragraph that the requested hyperlink (e.g., data
transferred) is rendered as web page 115. See id. As such, we disagree that
paragraph 14 suggests the second virtual machine in Ferri is “prohibited
from interpreting or executing the data transferred[6] from the external
location” (e.g., the data referenced by selected hyperlink) in claim 1 as the
Examiner proposes. See Reply Br. 9 (stating “the configuration setting of a
web browser does not satisfy the express requirements of a second virtual
machine as recited by Claim 1.”)
As for Ferri’s Paragraph 26 (see Ans. 6), this passage teaches
extending its technique of opening content referenced by a hyperlink in a
sandbox session’s browser to opening email attachments within a sandbox
session. Ferri ¶ 26. Rather than demonstrating prohibiting interpreting or
executing the requested data transferred from an external location (e.g., the
hyperlink content or email attachment), this passage further suggests Ferri
does not teach “a second virtual machine . . . , which is prohibited from

5 The Specification describes a web browser contacting a web site to retrieve
one or more files comprising code (e.g., HTML file, a PHP file, and a
JavaScript file) that is usually interpreted by the browser. Spec. ¶ 24.
6 Claim 1 recites broadly “a request to transfer data.” The Specification
describes examples of requested data but does not define what this data
encompasses. See Spec. ¶ 24 (discussing retrieving “one or more files
comprising code” or “a particular file.”) The Specification also discusses an
example where download VM 180 “does not interpret or execute any code
being downloaded.” Id. ¶ 34. Notably, claim 1 is not limited to prohibiting
interpreting or executing any code downloaded.
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interpreting or executing the data transferred from the external location” as
claim 1 recites. See Reply Br. 5 (stating that Ferri’s paragraph 26 “actually
teaches that [the] email [attachment] [is] to be interpreted within the same
virtual machine.”).
Accordingly, based on the record, we agree with Appellant (see
Appeal Br. 15–16; see Reply Br. 2–3) that modifying Ferri with Grzonka’s
quarantine approach (Grzonka ¶¶ 3, 39) as the proposed (Final Act. 7) to
“prohibit[] . . . interpreting or executing the data transferred from the
external location” as claim 1 recites, would result in either rendering Ferri
inoperable for one of its intended purposes or change one of its principle of
operation. Specifically, Ferri discloses the sandbox session technique is
“implemented to instantiate a web browser within a controlled virtual
environment (‘sandbox’) that simulates the host system while restricting the
virtual environment to designated space(s) and/or resources of the host
system to prevent harmful effects” and “allows web navigation of risky web
sites without deleterious effects on the host system.” Ferri, code (57). If
modified to quarantine the web page’s content as proposed (see Final Act.
7), Ferri will no longer serve its purposes to simulate the host system and to
allow web navigation of risky web sites within a protected environment. See
Gordon, 733 F.2d at 902 (indicating a rejection based on French did not
establish a prima facie case of obviousness because, as proposed, “French
apparatus . . . would be rendered inoperable for its intended purpose”); see
also In re Ratti, 270 F.2d 810, 813 (CCPA 1959) (holding that the proposed
combination of Jepson with Chinnery would change Chinnery’s basic
principles under which its apparatus was designed to operate).
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For the foregoing reasons, Appellant has persuaded us of error in the
rejection of (1) independent claim 1, (2) independent claims 8 and 15, which
recite commensurate limitations, and (3) the rejected, dependent claims for
similar reasons.
THE REMAINING OBVIOUSNESS REJECTIONS
Claims 3, 4, 10, 11, 17, and 18 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Ferri, Grzonka, Sanghvi, and Baumann. Final
Act. 10–12. Claims 5, 12, and 19 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ferri, Grzonka, Sanghvi, and Hutton. Id. at 12–13.
Appellant has not separately argued these rejections but relies on the
argument presented for the independent claims. Appeal Br. 17. The
rejections of claims 3–5, 10–12, and 17–19 do not cite to the additional
references to cure the above-noted problems. See id. at 10–13. Thus, for the
reasons discussed above, we will not sustain these rejections.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 6–9,
13–16, 20–
22
103(a) Ferri, Grzonka,
Sanghvi
1, 2, 6–9,
13–16, 20–
22
3, 4, 10, 11,
17, 18
103(a) Ferri, Grzonka,
Sanghvi, Baumann
3, 4, 10, 11,
17, 18
5, 12, 19 103(a) Ferri, Grzonka,
Sanghvi, Hutton
5, 12, 19
Overall
Outcome
1–22

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REVERSED