Ex Parte HanesDownload PDFPatent Trial and Appeal BoardNov 30, 201611528127 (P.T.A.B. Nov. 30, 2016) 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 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 2 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 3 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 4 Copy with citationCopy as parenthetical citation