Ex Parte 8015182 et al

Patent Trial and Appeal Board

Sep 28, 2018

90013812 (P.T.A.B. Sep. 28, 2018)

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.
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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
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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
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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.
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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
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(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?
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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
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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).
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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
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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
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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.
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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.
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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
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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.

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ORDER
The Examiner’s decision to reject claims 8–11 and 13 is reversed.

REVERSED