Ex Parte Hanes

Patent Trial and Appeal Board

Nov 30, 2016

11528127 (P.T.A.B. Nov. 30, 2016)

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
11/528,127 09/27/2006 David H.
22879 7590 12/02/2016
HP Inc.
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
Hanes 82224176 5903
EXAMINER
JACKSON, JENISE E
ART UNIT PAPER NUMBER
2439
NOTIFICATION DATE DELIVERY MODE
12/02/2016 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
barbl@hp.com
y vonne.bailey @ hp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID H. HANES
Appeal 2015-004014
Application 11/528,127
Technology Center 2400
Before CAROLYN D. THOMAS, JOHN F. HORVATH, and
JOHN R. KENNY, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 4, 8, 12, 16, 18, and 20-22. Claims 1,
5, 9, and 17 are canceled and claims 2, 3, 6, 7, 10, 11, 13—15, 19, and 23 are
indicated as either allowed are allowable. See Claim Appendix. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
The present invention relates generally to a virus scan process on a
network attached storage device. See Abstract.
Appeal 2015-00004014
Application 11/528,127
Claim 4 is illustrative:
4. A method, comprising:
initiating, by a network attached storage device, a vims
scan process on the network attached storage device;
receiving, by the network attached storage device, a first
file access request that identifies a file;
suspending the vims scan process to respond to the first
file access request, wherein the vims scan process scans at least a
subset of files in the network attached storage device; and
after suspending the vims scan process, initiating a vims
scan process on the file identified in the first file access request.
Appellant appeals the following rejections:
Claims 4, 8, 12, 16, 18, and 20-22 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Caccavale (US 7,363,657 B2, Apr. 22,
2008), McCorkendale (US 7,818,807 Bl, Oct. 19, 2010), and Raz (US
7,861,302 Bl, Dec. 28, 2010).
ANALYSIS
Issue: Did the Examiner err in finding that McCorkendale teaches or
suggests suspending the vims scan process to respond to the first access
request, as set forth in each of independent claims 4, 12, 18, and 20?
Appellant contends that “it is clear that the malware scanning process
continues to proceed when a request for a file is received (intercepted) in
McCorkendale; there is clearly nothing in McCorkendale to indicate that any
malware scanning is suspended” (App. Br. 7; see also Reply Br. 3).
In response, the Examiner finds that “McCorkendale discloses in a
malware scanning scenario, security software is configure to intercept
requests to execute particular files . . . Thus, the suspending, is the
intercepting to respond to the file access request” (Ans. 2) because “[i]n the
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Appeal 2015-00004014
Application 11/528,127
case that there are no associated prefetch files, security software then
initiates scanning of the requested file” {id. at 3). We disagree with the
Examiner.
In part, the Examiner directs our attention supra to when
McCorkendale initiates scanning on the requested file, i.e., McCorkendale
discloses “[i]n the case that there are no associated prefetch files, security
software 30 then initiates scanning of the requested file” (5:10-12).
However, we note that Appellant’s contention is directed to whether the
virus scan is suspended, not when the requested file is scanned.
The Examiner also finds that “McCorkendale discloses suspending the
virus scan process to respond to the first file access request. . . Thus, the
suspending, is the intercepting to respond to the file access request” (Ans. 2).
Regarding the intercepting of requests, McCorkendale specifically discloses
that “[djuring a scanning scenario, a control interception module 33
intercepts requests to execute one or more particular files” (see
McCorkendale 4:55—57). In other words, McCorkendale’s intercepting of
requests, i.e., responding to a file access request, is being performed during a
scanning scenario. The Examiner has not explained how this equates to
suspending the virus scan process to respond to the file access request.
Given the lack of any supporting evidence in McCorkendale, we are
constrained to conclude that the Examiner’s determination that the virus
scan is suspended rests on speculation, unfounded assumptions and/or
hindsight reconstruction of the claimed invention.
The Examiner also has not found that any of the other references of
record teach or suggest this feature. Since we agree with at least one of the
arguments advanced by Appellant, we need not reach the merits of
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Appeal 2015-00004014
Application 11/528,127
Appellant’s other arguments. Accordingly, we will not sustain the
Examiner’s obviousness rejection of the claims.
DECISION
The decision of the Examiner to reject claims 4, 8, 12, 16, 18, and 20—
22 is reversed.
REVERSED
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