Ex Parte 8015182 et alDownload PDFPatent Trial and Appeal BoardSep 28, 201890013812 (P.T.A.B. Sep. 28, 2018) Copy Citation 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. 90/013,812 09/16/2016 8015182 0384977 8395 115222 7590 10/01/2018 Bey & Cotropia PLLC (Finjan Inc.) Dawn-Marie Bey 213 Bayly Court Richmond, VA 23229 EXAMINER RIMELL, SAMUEL G ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 10/01/2018 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 FINJAN, INC. ____________________ Appeal 2018-007444 Reexamination Control 90/013,8121 Patent No. US 8,015,182 B2 Technology Center 3900 ____________________ Before JOHN A. JEFFERY, MARC S. HOFF and THOMAS L. GIANNETTI, Administrative Patent Judges. HOFF, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the rejection of claims 8–11 and 13.2 We have jurisdiction under 35 U.S.C. §§ 134(b) and 306. We reverse. The ’182 patent issued to Yuval et al., on September 6, 2011. The ’182 patent is a system3 for appending security information to search engine results. The system issues a security analysis request to a content security 1 Real Party in interest: Finjan, Inc. 2 Claims 1–7, 12, and 14–21 are not subject to reexamination. 3 Method and computer-readable storage media claims are also presented, but are not subject to reexamination. Appeal 2018-007444 Reexamination Control 90/013,812 Patent No. 8,015,182 B2 2 scanner to assess at least one designated web page for potential security risks. A search results summary includes links to the located web pages and security assessments for the located web pages. A client computer issues a search request with at least one user designated search term to the search engine, and receives a search results summary. A content scanner communicatively coupled with the search engine assesses security of content in at least one designated web page. See Abstract. Claim 8 is exemplary of the claims on appeal: 8. A system for appending security information to search engine results, comprising: a search engine for locating web content that includes at least one designated search term, for preparing a search results summary that presents the located web content, and for embedding an active program within the search results summary, wherein the active program, when executed, requests and receives security assessments of web content from a content security scanner; a client computer communicatively coupled with said search engine for issuing a search request with at least one designated search term to said search engine, for receiving the search results summary with the embedded active program from said search engine, for executing the active program, and for combining the search results summary received from said search engine in response to the search request with security assessments received from said content security scanner in response to executed the active program, by (i) displaying a presentation of the search results summary with a portion of the security assessments while some of the security assessments have not yet been received, and (ii) dynamically updating the presentation when additional security assessments are received; and a content security scanner communicatively coupled with said client computer, which is invoked by the active Appeal 2018-007444 Reexamination Control 90/013,812 Patent No. 8,015,182 B2 3 program to assess security of at least a portion of the located web content for potential security risks. The Examiner relies upon the following prior art in rejecting the claims on appeal: Bates et al., US 6,721,721 B1 Apr. 13, 2004 Rowan et al., US 7,694,135 B2 Apr. 06, 2010 Milener et al., US 8,037,527 B2 Oct. 11, 2011 Throughout this decision, we make reference to Appellants’ Brief (“App. Br.,” filed Apr. 12, 2018), the Reply Brief (“Reply Br.,” filed July 11, 2018) and the Examiner’s Answer (“Ans.,” filed May 14, 2018) for their respective details. PRINCIPLES OF LAW 35 USC § 302 reads, in pertinent part: Any person at any time may file a request for reexamination by the Office of any claim of a patent on the basis of any prior art cited under the provisions of section 301. On his own initiative, and any time, the Director may determine whether a substantial new question of patentability is raised by patents and publications discovered by him or cited under the provisions of section 301 or 302. The request must set forth the pertinency and manner of applying cited prior art to every claim for which reexamination is requested. 35 USC § 303(a) reads, in pertinent part: Within three months following the filing of a request for reexamination under the provisions of section 302, the Director will determine whether a substantial new question of patentability affecting any claim of the patent concerned is raised by the request, with or without consideration of other patents or printed publications. On his own initiative, and any time, the Director may determine whether a substantial new Appeal 2018-007444 Reexamination Control 90/013,812 Patent No. 8,015,182 B2 4 question of patentability is raised by patents and publications discovered by him or cited under the provisions of section 301 or 302. The existence of a substantial new question of patentability is not precluded by the fact that a patent or printed publication was previously cited by or to the Office or considered by the Office. 35 USC § 304 reads, in pertinent part: If, in a determination made under the provisions of subsection 303(a), the Director finds that a substantial new question of patentability affecting any claim of a patent is raised, the determination will include an order for reexamination of the patent for resolution of the question. 35 USC § 305 reads, in pertinent part: After the times for filing the statement and reply provided for by section 304 have expired, reexamination will be conducted according to the procedures established for initial examination under the provisions of sections 132 and 133. 35 USC § 306 reads, in pertinent part: The patent owner involved in a reexamination proceeding under this chapter may appeal under the provisions of section 134, and may seek court review under the provisions of sections 141 to 144 with respect to any decision adverse to the patentability of any original or proposed amended or new claim of the patent. 35 USC § 325(d) reads, in pertinent part: Notwithstanding sections 135(a), 251, and 252, and chapter 30, during the pendency of any post-grant review under this chapter, if another proceeding or matter involving the patent is before the Office, the Director may determine the manner in which the post-grant review or other proceeding or matter may proceed, including providing for the stay, transfer, consolidation, or termination of any such matter or proceeding. Appeal 2018-007444 Reexamination Control 90/013,812 Patent No. 8,015,182 B2 5 In determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office. 37 CFR 1.530 reads, in pertinent part: (a) Except as provided in § 1.510(e), no statement or other response by the patent owner in an ex parte reexamination proceeding shall be filed prior to the determinations made in accordance with § 1.515 or § 1.520. If a premature statement or other response is filed by the patent owner, it will not be acknowledged or considered in making the determination, and it will be returned or discarded (at the Office's option). (b) The order for ex parte reexamination will set a period of not less than two months from the date of the order within which the patent owner may file a statement on the new question of patentability, including any proposed amendments the patent owner wishes to make. (c) Any statement filed by the patent owner shall clearly point out why the subject matter as claimed is not anticipated or rendered obvious by the prior art patents or printed publications, either alone or in any reasonable combinations. Where the reexamination request was filed by a third party requester, any statement filed by the patent owner must be served upon the ex parte reexamination requester in accordance with § 1.248. MPEP 2242(I) reads, in pertinent part: [A SNQ exists as to a claim] unless the same question of patentability has already been (A) decided in a final holding of invalidity by a federal court in a decision on the merits involving the claim, after all appeals~ (B) decided in an earlier concluded examination or review of the patent by the Office; or Appeal 2018-007444 Reexamination Control 90/013,812 Patent No. 8,015,182 B2 6 (C) raised to or by the Office in a pending reexamination or supplemental examination of the patent. An earlier concluded examination or review of the patent is: (A) the original examination of the application which matured into the patent; (B) the examination of the patent in a reissue application that has resulted in a reissue of the patent; (C) the examination of the patent in an earlier concluded reexamination or supplemental examination; (D) the review of the patent in an earlier concluded trial by the Patent Trial and Appeal Board, such as a post-grant review, inter partes review, or covered business method review of the patent; or (E) any other contested Office proceeding which has been concluded and which involved the patent. MPEP 2242(I)(b) reads, in pertinent part: A prior art patent ... raises a [SNQ] where there is a substantial likelihood that a reasonable examiner would consider the prior art patent ... important in deciding whether or not the claim is patentable" and, if so, "the examiner should find a [SNQ] unless the same question of patentability has already been decided as to the claim in a final holding of invalidity by a federal court or by the Office in an earlier concluded examination or review of the patent." (Emphasis added). REJECTIONS Claims 8–11 and 13 rejected under 35 U.S.C. § 103(a) as being unpatentable over Rowan, Bates, and Milener. ISSUES Appellants’ argument present us with the following issues: 1. Did the Examiner err in finding a substantial new question of patentability over the proposed combination of Rowan, Bates, and Milener? Appeal 2018-007444 Reexamination Control 90/013,812 Patent No. 8,015,182 B2 7 2. Is Appellants’ argument concerning 35 U.S.C. § 325(d) properly before this Board? 3. Does Bates disclose or suggest embedding an active program within the search results summary that when executed, requests and receives security assessments of web content from a content security scanner? 4. Does Bates disclose or suggest a content security scanner that is communicatively coupled with the client computer and which is invoked by the active program to assess security of at least a portion of the located web content for potential security risks? ANALYSIS SUBSTANTIAL NEW QUESTION OF PATENTABILITY Appellants argue that the Examiner erroneously found a substantial new question of patentability in this proceeding. App. Br. 5. Appellants point out that the Examiner asserted the combination of Bates and Milener during original examination, and that the combination of Rowan and Bates was asserted against the ’182 patent in inter partes review proceeding IPR2015-01548. Id. In Appellants’ view, the asserted combination of Rowan, Bates, and Milener in this reexamination fails to present a substantial new question of patentability because all three references were previously asserted against the claimed invention. App. Br. 7. Appellants further argue that, contrary to the Examiner’s assertion, Milener is not being presented in the rejection in a new light as compared to how it was relied on during prosecution. App. Br. 7–10. Appellants admit that the Board denied institution in IPR2015-01548. App. Br. 5. The Manual of Patent Examining Procedure instructs Examiners Appeal 2018-007444 Reexamination Control 90/013,812 Patent No. 8,015,182 B2 8 that reexamination is to be ordered if prior art patents and publications raise a substantial question of patentability of at least one claim of the patent, unless the same question of patentability has already been decided in a final holding of invalidity by a federal court, or decided in an earlier concluded examination or review of the patent by the Office. See MPEP 2242(I). Because no trial was instituted in the inter partes review, there was no “final holding of invalidity” or “concluded examination or review” based on Rowan and Bates in the IPR proceeding. Accordingly, there has been no “final holding of invalidity” or “concluded examination or review” whatsoever that included the Rowan reference, and no such final holding or concluded examination or review over the combination of Rowan, Bates, and Milener.4 The rejection over Rowan, Bates, and Milener in the instant appeal is based on a different combination of prior art references than a rejection over Rowan and Bates —a distinction that further establishes that these rejections constitute different grounds of rejection despite citing two common references. See In re McDaniel, 293 F.3d 1379, 1384 (Fed. Cir. 2002) (noting that an obviousness rejection that added a prior art reference (Grot) to a combination of other prior art references did not share a common ground of rejection with claims rejected as obvious over those other references). The “substantial new question of patentability” requirement was set forth by Congress to prevent patentees “from having to respond to, or 4 See Appeal No. 2015-006360 at 17–22 (PTAB Decision mailed September 22, 2017). Appeal 2018-007444 Reexamination Control 90/013,812 Patent No. 8,015,182 B2 9 participate in unjustified reexaminations . . . to bar reconsideration of any argument already decided by the Office.” In re Recreative Techs. Corp., 83 F.3d 1394, 1397 (Fed. Cir. 1996). That concern does not apply to this reexamination, because the Office has not already decided the arguments pending herein. We conclude that the Examiner did not err in finding that a substantial new question of patentability exists in view of the combination of Rowan, Bates, and Milener. OFFICE CONSIDERATION OF 35 U.S.C. § 325(d) 35 U.S.C. § 325(d) states in pertinent part that “[i]n determining whether to institute or order” reexamination or other post-grant proceeding, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” Section 325(d) thus gives the Director of the USPTO discretion (through the use of the word “may”), in proceedings such as this ex parte reexamination, to reject a request (for reexamination) if substantially the same prior art or arguments previously were presented to the Office. Section 325(d) does not, however, provide the Office the option to rescind reexamination subsequent to an order granting reexamination. 35 U.S.C. § 304 states that if “the Director finds that a substantial new question of patentability affecting any claim of a patent is raised, the determination will include an order for reexamination of the patent.” 35 U.S.C. § 305 states that “[a]fter the times for filing the statement and reply provided for by section 304 have expired, reexamination will be Appeal 2018-007444 Reexamination Control 90/013,812 Patent No. 8,015,182 B2 10 conducted according to the procedures established for initial examination.” Section 305 does not provide any mechanism for the rescission of ex parte reexamination subsequent to an order granting reexamination. In contrast with an inter partes review proceeding, there is no provision for termination of ex parte reexamination proceedings via joint motion (of, hypothetically, requester and patent owner). While 35 U.S.C. § 306 permits appeal of any decision adverse to the patentability of any claim of the patent, a decision by the Director not to exercise the discretion offered by § 325(d), and thus not decline to order reexamination, does not constitute a decision adverse to patentability of a claim. We conclude that the patent statutes do not provide the option to terminate reexamination under § 325(d) subsequent to an order granting reexamination. We further conclude that § 306 does not permit appeal of a decision not to order reexamination by invoking the discretion granted to the Director under § 325(d), because the Director’s decision is not a decision adverse to the patentability of any claim. We conclude that review of the Director’s decision under § 325(d) is not properly before this Board. OBVIOUSNESS REJECTION Independent claim 8 requires, inter alia, (a) “embedding an active program within the search results summary, wherein the active program, when executed, requests and receives security assessments of web content from a content security scanner,” and (b) “a content security scanner communicatively coupled with said client computer, which is invoked by the Appeal 2018-007444 Reexamination Control 90/013,812 Patent No. 8,015,182 B2 11 active program to assess security of at least a portion of the located web content for potential security risks.” The Examiner finds that Bates discloses the claimed “active program” that is embedded within the search results summary. “[A] user computer 20 may incorporate a virus check plugin 29 that operates in connection with a conventional browser to perform virus checking of files accessed by a user.” Final Act. 2, 10, 11, citing Bates col. 8:32–38. The Examiner finds that Bates discloses “virus checker 52” as corresponding to the claimed content security scanner. “[V]irus checker 52 supports the additional functionality of reporting the results of such virus checks to virus check controller 44 for the inclusion of the resulting status information in database 46.” Final Act. 3, citing Bates col. 8:59–64. Appeal 2018-007444 Reexamination Control 90/013,812 Patent No. 8,015,182 B2 12 Figure 1 of Bates illustrates the configuration of the relevant components relied upon by the Examiner. Figure 1 of Bates is a block diagram of a computer system consistent with Bates’ invention (“Virus Checking and Reporting for Computer Database Search Results”). Bates col. 3:66–67. Virus check plugin 29 is a software component that executes in computer 20. Bates col. 5:45–49. Virus checker component 52 is a software component that executes in computer 50. Bates col. 7:49–51. Appeal 2018-007444 Reexamination Control 90/013,812 Patent No. 8,015,182 B2 13 The Examiner finds that Bates discloses “embedding an active program within the search results summary, wherein the active program, when executed, requests and receives security assessments of web content from a content security scanner.” Final Act. 2–3; Ans. 13. We do not agree with the Examiner’s finding. The Examiner has not identified disclosure in Bates that indicates that virus plugin 29, equated by the Examiner with the claimed active program, receives security assessments of web content from virus checker 52, equated by the Examiner with the claimed content security scanner. Bates discloses only that the results of virus checking by plugin 29 are “returned to computer 30 and processed by virus check controller 44 for incorporation of associated virus status information in virus database 46.” Bates col. 8:36–39. The Examiner further finds that Bates discloses “a content security scanner communicatively coupled with said client computer, which is invoked by the active program to assess security of at least a portion of the located web content for potential security risks.” Final Act. 5–6; Ans. 15. Here, the Examiner finds that “user computer 20 may incorporate a virus check plugin 29 that operates in connection with a conventional browser 28 to perform virus checking of files,” and that “Bates at FIG 4 also illustrates how execution of the virus check plug initiates a sequence of steps . . . to virus check a given file.” Ans. 15, citing Bates col. 8:32–38. We do not agree with the Examiner’s finding. Assuming arguendo that computer 20 of Bates, which contains virus check plugin 29, may be considered to be communicatively coupled with computer 50, which contains virus checker 52, (via Internet 15), the Examiner has not identified Appeal 2018-007444 Reexamination Control 90/013,812 Patent No. 8,015,182 B2 14 disclosure in Bates showing that virus checker 52, equated by the Examiner with the “content security scanner” claimed, is invoked by virus plugin 29 (equated by the Examiner with the claimed active program) to assess security of at least a portion of the located web content, as is claimed. Bates discloses only that the results of virus checking by virus checker 52 are reported to “virus check controller 44 for the inclusion of the resulting status information in database 46.” Bates col. 8:61–64. We therefore find that the combination of Rowan, Bates, and Milener fails to disclose all the elements of the invention recited in independent claim 8. We do not sustain the Examiner’s § 103(a) rejection of claims 8–11 and 13. CONCLUSIONS 1. The Examiner did not err in finding a substantial new question of patentability over the proposed combination of Rowan, Bates, and Milener. 2. Appellants’ argument concerning 35 U.S.C. § 325(d) is not properly before this Board. 3. Bates does not disclose or suggest embedding an active program within the search results summary that when executed, requests and receives security assessments of web content from a content security scanner. 4. Bates does not disclose or suggest a content security scanner that is communicatively coupled with the client computer and which is invoked by the active program to assess security of at least a portion of the located web content for potential security risks. Appeal 2018-007444 Reexamination Control 90/013,812 Patent No. 8,015,182 B2 15 ORDER The Examiner’s decision to reject claims 8–11 and 13 is reversed. REVERSED Copy with citationCopy as parenthetical citation