Capital One Financial Corporation

Patent Trials and Appeals Board

Feb 16, 2022

2021000006 (P.T.A.B. Feb. 16, 2022)

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. 15/878,566 01/24/2018 Christopher MARSHALL COF5095CON (029424.654) 5381 150308 7590 02/16/2022 Troutman Pepper Hamilton Sanders LLP CAPITAL ONE 600 Peachtree St., NE, Suite 3000 Atlanta, GA 30308 EXAMINER CHIANG, JASON ART UNIT PAPER NUMBER 2431 NOTIFICATION DATE DELIVERY MODE 02/16/2022 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): Katherine.swider@troutmansanders.com capitalonepatents@troutman.com patents@troutman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHRISTOPHER MARSHALL Appeal 2021-000006 Application 15/878,566 Technology Center 2400 Before ERIC B. CHEN, DAVID J. CUTITTA II, and MICHAEL J. ENGLE, Administrative Patent Judges. CUTITTA, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 17-21, 23-29, 31-35, and 37-39, all the pending claims under appeal.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies Capital One Services LLC as the real party in interest. Appeal Brief filed June 24, 2019 (“Appeal Br.”) at 3. 2 Claims 1-16, 22, 30, and 36 are cancelled. Appeal Br. 9-11. Appeal 2021-000006 Application 15/878,566 2 CLAIMED SUBJECT MATTER Summary Appellant’s claimed subject matter generally relates to “identifying malware using hashing techniques.” Spec. ¶ 2.3 Malware is identified by “generating or receiving a listing of acceptable hash values at a server-side network element, generating a current hash value associated with a present website being accessed on a client side device, [and] comparing the generated current hash value with the acceptable hash values using the se[r]ver side network element.” Id. ¶ 6. “[W]hen a current hash value is not found on the acceptable hash value listing [via the comparison], the server side network element indicates that it has detected malware associated with the website accessed from the client side device.” Id. Illustrative Claim Claims 17, 25, and 31 are the independent claims. Claim 17 illustrates the claimed subject matter and is reproduced below: 17. A system, comprising: a backend server that includes a backend processor configured to calculate a hash value for a known web application; backend data storage configured to store the known web application and the calculated hash value for the known web application; a backend communication interface configured to: 3 In addition to the above-noted Appeal Brief, throughout this Decision we refer to: (1) Appellant’s Specification filed January 24, 2018 (“Spec.”); (2) the Final Office Action (“Final Act.”) mailed December 31, 2018; (3) the Examiner’s Answer (“Ans.”) mailed September 4, 2019; and (4) the Reply Brief filed November 1, 2019 (“Reply Br.”). Appeal 2021-000006 Application 15/878,566 3 receive, via a network, a request for the known web application from a mobile device, provide, via the network, the known web application to the mobile device, and receive, via the network, at least one mobile hash value that has been calculated by the mobile device; a hash processor configured to: compare the calculated hash value to the at least one received mobile hash value to determine if the calculated hash value matches the at least one received mobile hash value, and identify malware when the hash processor determines that the calculated hash value does not match the at least one received mobile hash value, wherein the backend processor is configured to generate a log of the identified malware that is stored within the backend data storage, and wherein the log comprises date and time that the malware was identified, a mobile device identifier associated with the identified malware, and the at least one received mobile hash value associated with the identified malware. Appeal Br. 9 (Claims Appendix). REFERENCES The Examiner relies on the following prior art references:4 Name Reference Date Schmugar US 6,654,751 B1 Nov. 25, 2003 Palliyil US 2005/0132205 A1 June 16, 2005 De Spiegeleer US 2007/0150948 A1 June 28, 2007 Ranganathan US 2012/0072982 A1 Mar. 22, 2012 Baumhof US 2012/0198528 A1 Aug. 2, 2012 De Monseignat US 8,578,166 B2 Nov. 5, 2013 4 All citations to the references use the first-named inventor or author only. Appeal 2021-000006 Application 15/878,566 4 REJECTIONS The Examiner rejects the claims as shown below: Claim(s) Rejected 35 U.S.C. § References Final Act. 17-21, 23-29, 31-35 Non-Statutory Double Patenting U.S. Patent No. 9,912,690 B2 2 17, 20, 21, 23, 25, 28, 29, 31, 34, 35 103 Baumhof, Palliyil, Britton 4 18, 26, 32 103 Baumhof, Palliyil, Britton, Ranganathan 15 19, 27, 33 103 Baumhof, Palliyil, Britton, De Monseignat 16 24 103 Baumhof, Palliyil, Britton, De Spiegeleer 17 37-39 103 Baumhof, Palliyil, Britton, Schmugar 18 OPINION Obviousness Rejection We review the appealed rejections for error based upon the issues identified by Appellant and in light of Appellant’s arguments and evidence. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). The Examiner finds that Baumhof teaches or suggests most of the limitations in claim 17, but finds that “Baumhof does not explicitly disclose backend data storage configured to store the target web application and the calculated hash value for the target web application.” Final Act. 6. The Examiner relies on Palliyil to teach or suggest this limitation. Id. at 6-7 Appeal 2021-000006 Application 15/878,566 5 (citing Palliyil ¶¶ 75, 77). The Examiner determines that sufficient motivation existed to incorporate Palliyil’s hash value storage into Baumhof because: [I]t would have been obvious to a person having ordinary skill in the art to incorporate the teaching of Palliyil et al. into the teaching of Baumhof with the motivation that a match between a newly computed hash value and a previously computed hash value for a resource indicates that the resource has not changed since the previous computation and the result of the comparison can be used to determine whether a virus scan is currently required for a resource as taught by Palliyil et al. Id. at 7. Appellant traverses the Examiner’s reasoning for incorporating Palliyil’s hash value storage into Baumhof, arguing the Examiner fails to demonstrate that a person of ordinary skill would have had a reason to modify Baumhof in view of Palliyil. Appeal Br. 12. The Examiner relies on Baumhof’s characteristic values to teach a hash value, as claimed. Final Act. 4. According to Appellant, the characteristic values in Baumhof are only used once for a single verification and because the “characteristic values generated by the server in Baumhof cannot be used to for any future authentications, contrary to Examiner’s allegation . . . a person of ordinary skill in the art would not have been motivated [to modify Baumhof] to store the expected characteristic values at the server for future use.” Appeal Br. 7. The Examiner first responds by dismissing Appellant’s argument as “not directed to [the] claim limitations.” Ans. 22. The Examiner’s statement that Appellant argues features not recited in the claim misses the point, however. Appellant does not argue that certain features are not taught by the Appeal 2021-000006 Application 15/878,566 6 references but instead seeks to rebut the Examiner’s stated motivation for modifying the teachings of Baumhof based on Palliyil. Next, the Examiner responds: Baumhof explicitly discloses the enterprise server generates characteristic values (hash values) during set up phase (see fig. 2, pars. 0056-0058). During the verification phase, the enterprise server compare[s] the hash value received from the client with the hash value previous calculated during the set up phase on the enterprise server (see fig. 3, pars. 0068-0072). The server does not need to store the session key and one time password because it is the stored hash value calculated from session key and one time password [that] will be used during verification phase for comparison. Ans. 22 (emphasis added). Here, the Examiner appears to find that Baumhof does store the characteristic values, i.e., teaches storing hash values, while noting Baumhof’s session key and one-time password need not be stored. This finding, however, contradicts the Examiner’s previous finding that “Baumhof does not explicitly disclose backend data storage configured to store the target web application and the calculated hash value for the target web application.” Final Act. 6 (emphasis added). Indeed, this new contradictory position calls into question why the Examiner cites Palliyil in the original rejection since there would have been no reason to rely on Palliyil to teach storing hash values if that limitation was already taught by Baumhof. Id. at 6-7. Also, the Examiner provides no citation to Baumhof to support the new finding that Baumhof teaches storing hash values. We agree with Appellant, therefore, that the Examiner has not set forth a sufficient factual basis to support the conclusion that one of ordinary skill, having considered the cited references, would have been motivated or had a reasonable suggestion to combine the teachings in the manner claimed. Appeal 2021-000006 Application 15/878,566 7 “[A] rejection cannot be predicated on the mere identification . . . of individual components of claimed limitations. Rather, particular findings must be made as to the reason the skilled artisan, with no knowledge of the claimed invention, would have selected these components for combination in the manner claimed.” Ecolochem, Inc. v. Southern Calif. Edison Co., 227 F.3d 1361, 1375 (Fed. Cir. 2000). Here, the Examiner has failed to establish why a skilled artisan would have been motivated to modify Baumhof to store characteristic values, based on the teachings of Palliyil and so the Examiner’s stated rationale is merely a legal conclusion unsupported by a sufficient reasonable factual basis. Final Act. 6-7. Because we agree with at least one of the dispositive arguments advanced by Appellant for claim 17, we need not reach the merits of Appellant’s other arguments. Accordingly, we reverse the Examiner’s obviousness rejection of independent claim 17, as well as claims 18-21, 23- 29, 31-35, and 37-39, which rely on the same motivation to combine the references as that discussed for claim 17. Non-statutory Double Patenting Rejection The Examiner rejects claims 17-21, 23-29, and 31-35, on the ground of obviousness-type double patenting based on claims 1-16 of U.S. Patent No. 9,912,690 B2 in view of Britton. Final Act. 2-4. Appellant does not address the merits of this rejection. Appeal Br. 4- 7. Therefore, we summarily sustain the rejection. See MPEP § 1205.02, 9th ed., Rev. 10.2019 Last Revised June 2020 (“If a ground of rejection stated by the examiner is not addressed in the appellant’s brief, that ground of rejection will be summarily sustained by the Board.”). Appeal 2021-000006 Application 15/878,566 8 CONCLUSION We do not sustain the Examiner’s various rejections of claims 17-21, 23-29, 31-35, and 37-39 under 35 U.S.C. § 103. We sustain the Examiner’s obviousness-type double patenting rejection of claims 17-21, 23-29, and 31-35. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 17, 20, 21, 23, 25, 28, 29, 31, 34, 35 103 Baumhof, Palliyil, Britton 17, 20, 21, 23, 25, 28, 29, 31, 34, 35 18, 26, 32 103 Baumhof, Palliyil, Britton, Ranganathan 18, 26, 32 19, 27, 33 103 Baumhof, Palliyil, Britton, De Monseignat 19, 27, 33 24 103 Baumhof, Palliyil, Britton, De Spiegeleer 24 37-39 103 Baumhof, Palliyil, Britton, Schmugar 37-39 17-21, 23-29, 31-35 Non-Statutory Double Patenting U.S. Patent No. 9,912,690 B2 17-21, 23- 29, 31-35 Overall Outcome 17-21, 23- 29, 31-35 37-39 Appeal 2021-000006 Application 15/878,566 9 TIME PERIOD FOR RESPONSE 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. § 1.136(a)(1)(iv). AFFIRMED IN PART