iBoss, Inc.

Patent Trials and Appeals Board

Mar 30, 2020

14811797 - (D) (P.T.A.B. Mar. 30, 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.
14/811,797 07/28/2015 Paul Michael Martini 38097-0056003 4235
20985 7590 03/30/2020
FISH & RICHARDSON P.C. (SD)
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
ZAIDI, SYED A
ART UNIT PAPER NUMBER
2432
NOTIFICATION DATE DELIVERY MODE
03/30/2020 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PAUL MICHAEL MARTINI and PETER ANTHONY MARTINI
________________

Appeal 2018-006918
Application 14/811,797
Technology Center 2400
____________

Before LARRY J. HUME, JUSTIN BUSCH, and
MATTHEW J. McNEILL, Administrative Patent Judges.

McNEILL, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1‒7, 10‒17, 20, and 22, which are all the claims pending
in this application. An oral hearing was held March 17, 2020, and a
transcript of that hearing will be made of record in due course. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as iboss, Inc.
Appeal Br. 1.
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STATEMENT OF THE CASE
Introduction
Appellant’s application relates to selectively introducing security
issues in a sandbox environment to elicit malicious application behavior.
Spec. ¶ 1. In one embodiment, Appellant discloses a virtual machine
environment that is configured to introduce one or more security issues to
elicit a particular malicious application to perform particular malicious
actions. Id. ¶ 3. Claim 1 is illustrative of the appealed subject matter and
reads as follows:
1. A computer-implemented method executed by one or
more processors for analyzing software application behavior
within a virtual machine environment, the method comprising:
configuring the virtual machine environment to introduce
one or more security issues within the virtual machine
environment, wherein each introduced security issue causes the
virtual machine environment to be less secure by eliciting a
particular malicious application to perform one or more
malicious actions when the security issue is present during
execution of the particular malicious application;
after configuring the virtual machine environment,
transferring a software application into the virtual machine
environment;
after transferring the software application into the virtual
machine environment;
executing the software application within the virtual
machine environment;
detecting a malicious action being performed by the
software application during execution within the virtual
machine environment, wherein the detected malicious action is
one of the one or more malicious actions associated with at
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least one of the security issues introduced in the virtual machine
environment prior to execution of the software application; and
initiating an analysis action in response to detecting the
malicious action being performed by the software application.
The Examiner’s Rejections
Claim 22 stands rejected under 35 U.S.C. § 112(b) as being indefinite.
Final Act. 3‒4.
Claims 1, 3‒7, 10, 11, 13‒17, and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Ford (US 2013/0305368 A1; Nov. 14,
2013) and Dixon (US 2015/0172305 A1; June 18, 2015). Final Act. 5‒11.
Claims 2 and 12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ford, Dixon, and Fitzgerald (US 2013/0091564 A1;
Apr. 11, 2013). Final Act. 11‒12.
ANALYSIS
Indefiniteness
Claim 22 stands rejected under 35 U.S.C. § 112(b) as being indefinite.
Final Act. 3‒4. Appellant does not provide any argument regarding this
rejection. See Appeal Br. 1‒8; Reply Br. 1. Accordingly, we summarily
affirm the Examiner’s indefiniteness rejection of claim 22.
Obviousness
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions that the Examiner erred. We disagree with Appellant’s
contentions. Except as noted below, we adopt as our own: (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken and (2) the reasons set forth by the Examiner in the Examiner’s
Answer in response to Appellant’s Appeal Brief. We concur with the
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conclusions reached by the Examiner. We highlight the following additional
points.
Appellant argues the Examiner erred in rejecting claim 1 as
unpatentable over Ford and Dixon. See Appeal Br. 4‒7; Reply Br. 2. In
particular, Appellant argues Ford does not teach or suggest “configuring the
virtual machine environment to introduce one or more security issues within
the virtual machine environment,” as recited in claim 1. See Appeal Br. 5‒6.
Appellant argues Ford teaches loading an application and executing the
application to detect security issues, but does not teach a separate
configuration of the application or virtual machine environment to introduce
one or more security issues. Id.
Appellant has not persuaded us of Examiner error. The Examiner
finds Ford discloses security issues are introduced to the system, but does
not explicitly disclose whether the security issues are introduced before or
after the software is installed on the system. Final Act. 6. We agree. As one
example, Ford teaches a file emulator that attempts to trigger a malicious
application by simulating a file open or website access to determine if the
actions occur with unusual behavior. Ford ¶ 22. Ford also teaches an
example where an executable application accesses a banking website, in
particular a log-in page, and provides user credentials to attempt to trigger a
malicious application. Id. ¶ 59. Thus, we agree with the Examiner that Ford
teaches introducing “security issues” as claimed.
Regarding the timing of the security issue introduction, the Examiner
finds Dixon teaches configuring a virtual machine to introduce one or more
security issues and an ordinarily skilled artisan would have modified Ford
“to include setting up passwords and other information (i.e., security issues)
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and then installing a malware in the virtual environment.” Final Act. 7.
Accordingly, the Examiner relies on the combination of Ford and Dixon’s
teachings, not Ford alone, for configuring a virtual machine in the claimed
manner. Thus, the relevant inquiry is whether the claimed subject matter
would have been obvious to those of ordinary skill in the art in light of the
combined teachings of those references. In re Keller, 642 F.2d 413, 425
(CCPA 1981). Appellant’s arguments relating to Ford alone are
unpersuasive of error because they do not persuasively rebut the Examiner’s
findings regarding the combined teachings of Ford and Dixon.
Appellant also argues Dixon does not teach or suggest the claimed
security issues and that the Examiner’s findings regarding Dixon are
inconsistent because the Examiner finds Dixon teaches “introduc[ing] one or
more security issues . . . [to] cause[] the virtual machine environment to be
less secure,” but also finds an ordinarily skilled artisan would have
introduced Dixon’s teachings to Ford to provide defense against malware.
See Appeal Br. 7 (citing Final Act. 7).
Appellant has not persuaded us of Examiner error because the
Examiner’s findings regarding an ordinarily skilled artisan’s motivation to
modify Ford with Dixon’s teachings are not inconsistent with causing the
virtual machine environment to be less secure. To the contrary, Dixon, like
Ford, teaches introducing security issues to a virtual machine to elicit a
malicious application to perform a malicious action, thus making the virtual
machine less secure. See Ans. 3‒5. The purpose of introducing these security
issues is to monitor malicious applications so that the system developer may
develop defenses against malware and their operators. See Ford, Abstract;
Dixon Abstract. Thus, the Examiner’s finding regarding an ordinarily skilled
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artisan’s motivation to combine these references is entirely consistent with
the purpose of both references.
We, therefore, sustain the Examiner’s rejection of independent
claim 1 as unpatentable over Ford and Dixon. We also sustain the
obviousness rejection of independent claims 11 and 20, for which Appellant
provides the same argument (see Appeal Br. 8), and dependent claims 2‒7,
10, and 12‒17, for which Appellant provides no separate argument (see id.).
CONCLUSION
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
22 112(b) Definiteness 22
1, 3‒7, 10,
11, 13‒17,
20
103 Ford, Dixon 1, 3‒7, 10,
11, 13‒17,
20

2, 12 103 Ford, Dixon,
Fitzgerald
2, 12
Overall
Outcome
1‒7, 10‒
17, 20, 22

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED