UNITED STATES PATENT AND TRADEMARK OEEICE
`
`UNITED STATES DEPARTIVIENT OF COMNIERCE
`United States Patent and Trademark Office
`Address: COMIVIISS IONER FOR PATENTS
`P.O Box 1450
`Alexandria. Virginia 22313-1450
`www.uspt0 gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAM * ) ENVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`90/013,017
`
`10/07/2013
`
`7058822
`
`FINREXM0006
`
`63 88
`
`Bey & Cotropia PLLC (Finjan Inc‘)
`”’3°”°”
`7590
`“Sm
`DaWn_Mafie Bey
`BASEHOAR. ADAM L
`213 Bayly Court
`Richmon«wA2s229
`
`3992
`
`MAIL DATE
`
`12/30/2015
`
`D]:'LlV]:'RY MODE
`
`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 DEPARTIVIENT OF COMNIERCE
`United States Patent and Trademark Office
`Address: COMIVIISS IONER FOR PATENTS
`P.O Box 1450
`Alexandria. Virginia 22313-1450
`www.uspt0 gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAM * ) ENVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`90/013,017
`
`10/07/2013
`
`7058822
`
`FINREXM0006
`
`63 88
`
`Bey & Cotropia PLLC (Finjan Inc‘)
`”’3°”°”
`7590
`“Sm
`DaWn_Mafie Bey
`BASEHOAR. ADAM L
`213 Bayly Court
`Richmon«wA2s229
`
`3992
`
`MAIL DATE
`
`12/30/2015
`
`D]:'LlV]:'RY MODE
`
`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
`
`Exparle FINJAN, INC.
`Appellant
`
`Appeal 2015-0063 04
`Reexamination Control 90/013,017
`
`Patent 7,058,822 B2
`Technology Center 3900
`
`Before STEPHEN C. SIU, JEREMY J. CURCURI. and
`
`IRVIN E. BRANCH, Administrative Patent Judges.
`
`Opinion for the board filed by Administrative Patent Judge CURCURI.
`
`Opinion dissenting-in-part filed by Administrative Patent Judge BRANCH.
`
`CURCURI, Administrative Patent Judge.
`
`DECISION ON APPEAL
`
`Patent 7,058,822 B2 (Edery et al.) is under reexamination. Appellant
`
`appeals under 35 U.S.C. §§ l34(b) and 306 from the Examiner’s rejection of
`
`claims 1-8, 16-27, and 36-40. Final Act. 2. We have jurisdiction under
`
`35 U.S.C. §§ 134(b) and 306, and we heard oral argument in the appeal on
`
`November 3, 2015.
`
`Claims 4~6, 8, 1@27, 37, and 40 are rejected under 35 U.S.C.
`
`§ 102(e) as anticipated by Ji (5,983,348; issued Nov. 9. 1999). Ans. 3—17.
`
`
`
`Appeal 20l 5—006304
`Reexamination Control 90/01 3 ,0 1 7
`
`Patent 7,058,822 B2
`
`Claim 7 is rejected under 35 U.S.C. § l03(a) as obvious over Ji. Final
`
`Act. 9-10.
`
`Claims 1-3 are rejected under 35 U.S.C. § 103(a) as obvious over Ji
`
`and Liu (6,058,482; issued May 2, 2000). Ans. 17-22.
`
`Claims 4-8, 16-27, 37, and 40 are rejected under 35 U.S.C. § 103(a)
`
`as obvious over Ji and Liu. Ans. 22-27.
`
`Claims 4P8, l&27, 37, and 40 are rejected under 35 U.S.C. § 103(a)
`
`as obvious over Ji and Golan (5,974,549; issued Oct. 26, 1999). Ans. 27-33.
`
`Claims 36, 38, and 39 are rejected under 35 U.S.C. § 305 as enlarging
`
`the scope of the claims. Final Act. 19-20.
`
`We affirrn-in-part.
`
`STATEMENT OF THE CASE
`
`Appellant’s invention relates to “protecting networleconnectable
`
`devices from undesirable downloadable operation.” Edery, col. 1, 11. 28-29.
`
`Claim 4 is illustrative:
`
`4. A processor-based method, comprising:
`
`receiving downloadable—information;
`
`determining whether the downloadable-information
`includes executable code; and
`
`causing mobile protection code to be communicated to at
`least one information—destination of the downloadable-
`
`information, if the downloadab1e—information is determined to
`
`include executable code,
`
`wherein the causing mobile protection code to be
`communicated comprises forming a sandboxed package
`including the mobile protection code and the downloadable-
`
`
`
`Appeal 201 5—OO6304
`Reexamination Control 90/O 1 3 ,0 l 7
`
`Patent 7,058,822 B2
`
`information, and causing the sandboxed package to be
`communicated to the at least one information-destination.
`
`ANALYSIS
`
`THE ANTICIPATION REJECTION or CLAIMS 4-6, 8, 16-27 , 37, AND 40 BY Jr
`
`The Examiner finds Ji discloses all limitations of claim 4. Ans. 3-5.
`
`The Examiner finds “[b]y disclosing that applets are scanned while non-
`
`applets are not scanned, Ji at least implicitly discloses the step of
`
`determining whether the down1oadable—information includes executable
`
`code.” Ans. 3 (citing Ji, col. 3, 11. 23-25; col. 4, 1. 66-001. 5, 1. 4). The
`
`Examiner finds Ji’s JAR file corresponds to the recited sandboxed package.
`
`Ans. 4-5 (citing Ji, col. 6, 11. 38-42; col. 7, 11. 13-28; col. 8, 11. 4-10).
`
`Appellant presents the following principal arguments:
`
`i.
`
`Ji does not disclose the recited (claim 4) “determining whether
`
`the downloadable—inforrnation includes executable code” because “Ji then
`
`scans only downloaded applets to look for malicious applet instructions; not
`
`to determine if the downloaded applet contains executable code.” App. Br.
`
`16; see also App. Br. 17 (“[T]here are numerous ways that Ji can distinguish
`
`downloaded applets from non-applets without determining whether the
`
`downloadable—information includes executable code. For example, Ji could
`
`simply search for applet tags. A file with an applet tag is not a
`
`determination that the file contains executable code”).
`
`[O]ne of skill in the art would understand that an applet tag is
`not a determination that the file contains executable code
`
`because an applet tag does not mean executable code exists
`within the Downloadable, nor does the lack of an applet tag
`mean that executable code does not exist within the
`
`
`
`Appeal 20l 5—OO6304
`Reexamination Control 90/O l 3 ,0 l 7
`
`Patent 7,058,822 B2
`
`Downloadable. Furthermore, Ji only operates on applets and
`does not scan non—applets.
`
`Declaration of Dr. Nenad Medvidovic 1] 22; see also id. at W 23-24.
`
`ii.
`
`Ji’s JAR file containing the instrumented applet and monitoring
`
`package does not disclose the recited (claim 4) “sandboxed package.” See
`
`App. Br. 19-20; Declaration of Dr. Nenad Medvidovic 1] 27.
`
`ln response, the Examiner further explains
`
`It is not relevant to patentability whether Ji “passively assumes”
`or skeptically analyzes; the claim broadly requires determining.
`Since Ji’s system takes a first action for downloadable-
`information including executable code (z'.e., scanning Java
`applets assumed to be executable code) and takes a different
`action for other downloadable—information (i. e., not scanning
`non—applet downloadable information), Ji’s system “determines
`whether the downloadable—information includes executable
`
`code”.
`
`Ans. 37-38.
`
`In response, the Examiner further explains Ji’s JAR file corresponds
`
`to the recited sandboxed package. See Ans. 40-43.
`
`Appellant has shown error in the Examiner’s finding that Ji discloses
`
`the recited (claim 4) “determining Whether the downloadable—information
`
`includes executable code.”
`
`Ji (col. 3, 11. 23-25) discloses: “At this point the applets are statically
`
`scanned at the server by the scanner looking for particular instructions which
`
`may be problematic in a security context.” Ji (col. 4, l. 66—col. 5, 1. 4)
`
`discloses:
`
`Upon receipt of a particular Java applet, the HTTP proxy server
`32, which is software running on server machine 20 and which
`has associated scanner software 26, then scans the applet and
`
`
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`Appeal 20l 5—OO6304
`Reexamination Control 90/O l 3 ,0 l 7
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`Patent 7,058,822 B2
`
`instruments it using an instrumenter 28 which is part of the
`scanner software 26. (Downloaded non-applets are not
`scanned.)
`
`In order to disclose determining whether the downloadable—
`
`information includes executable code, Ji must disclose distinguishing
`
`between two alternative possibilities: executable code is included in the
`
`downloadable-information, and executable code is not included in the
`
`downloadable-information.
`
`To the extent Ji’s scanner does detect applets (for example, via applet
`
`tags), Ji does determine some cases where executable code is included in the
`
`downloadable—information (the applet tag reasonably indicates the existence
`
`of executable applet code). Nonetheless, we agree with Appellant that the
`
`lack of an applet tag does not determine that executable code is not included
`
`in the downloadable—information. See Declaration of Dr. N enad Medvidovic
`
`1] 22. Thus, at best, Ji determines, in some cases, when executable code is
`
`included in the downloadable-information, but does not adequately
`
`determine when executable code is not included in the downloadable
`
`information. Therefore, Ji does not disclose the recited determining.
`
`Appellant has also shown error in the Exan1iner’s finding that Ji
`
`discloses the recited (claim 4) “forming a sandboxed package including the
`
`mobile protection code and the downloadable-information.” The error in
`
`this finding hinges on the meaning of the term “sandbox.”
`
`Ji (col. 6, 11. 38-42) discloses: “The pre and post filter and monitoring
`
`package security policy functions[] are combined with the instrumented
`
`applet code in a single JAR (Java archive) file format at the server 32, and
`
`downloaded to the web browser 22 in client machine 14.” Ji (col. 7, ll.
`
`l3—
`
`
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`Appeal 201 5—OO6304
`Reexamination Control 90/O l 3 ,0 l 7
`
`Patent 7,058,822 B2
`
`28) discloses prefetching dependency class files and instrumenting them
`
`once. Ji (col. 8, ll. 4-10) discloses creating a new JAR file from the
`
`instrumented class files and the monitoring package, and transfer thereof to
`
`the client machine.
`
`Appellant’s Specification discloses: “The sandboxed package can
`
`also include a corresponding Downloadable and can provide for initiating
`
`the Downloadable in a protective ‘sandbox’.” Edery, col. 3, ll. l5—l8.
`
`Appellant’s Specification discloses: “An MPC and applicable policies can
`
`also, for example, precede each executable, such that each executable will be
`
`separately sandboxed in the same or a different manner according to
`
`MPC/policy configuration (see above) upon inflation and installation.”
`
`Edery, Col. 13, ll. 62-66.
`
`The term “sandbox” may be defined in the computer context as:
`
`n. 1. Java Virtual Machine security area for downloaded
`(remote or untrusted) applets, an area in which such applets are
`confined and prevented from accessing system resources.
`Confinement to the sandbox prevents downloaded applets from
`carrying out potentially dangerous operations, maliciously or
`otherwise. They have to “play” inside the sandbox, and any
`attempt to “escape” is thwarted by the Java Security Manager.
`
`MICROSOFT COMPUTER DICTIONARY 463 (5th ed. 2002).
`
`Thus, we conclude that the broadest reasonable interpretation of
`
`“sandbox” requires an area in which executable code is initiated, confined,
`
`and prevented from accessing system resources. This interpretation is both
`
`consistent with Appellant’ s Specification and with a plain meaning of the
`
`term in the computer context. Thus, the recited (claim 4) “forming a
`
`sandboxed package including the mobile protection code and the
`
`
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`Appeal 201 5—OO6304
`Reexamination Control 90/O 1 3 ,0 l 7
`
`Patent 7,058,822 B2
`
`downloadable-information" requires the downloadable-information to be
`
`inside an area in which executable code is initiated, confined, and prevented
`
`from accessing system resources.
`
`Ji’s JAR file does include the instrumented class files and the
`
`monitoring package. See Ji, col. 8, 11. 4-10. However, Ji’s JAR file is an
`
`archive file and not a sandboxed package because the JAR file does not
`
`cause Ji’s applet to be inside an area, in which the applet’s executable code
`
`is initiated, confined, and prevented from accessing system resources. With
`
`regard to Ji’s instrumentation, Ji instruments instructions. See Ji, Abstract.
`
`Thus, although Ji may have particular instructions that are instrumented, the
`
`instrumentation is also not a sandboxed package because the instrumentation
`
`also does not cause Ji ’s applet to be inside an area in which the applet’s
`
`executable code is initiated, confined, and prevented from accessing system
`
`resources. Therefore, Ji does not disclose the recited forming a sandboxed
`
`package.
`
`We, therefore, do not sustain the Exa1niner’s rejection of claim 4, or
`
`of claims 5, 6, and 8, which depend from claim 4.
`
`Similarly, we also do not sustain the Exa1niner’s rejection of
`
`independent claim 16, which recites “wherein the causing is accomplished
`
`by forming a sandboxed package including the mobile protection code and
`
`the downloadable—information, and causing the sandboxed package to be
`
`delivered to the downloadable—infor1nation destination,” or of claims 17-27,
`
`which depend from claim 16.
`
`Similarly, we also do not sustain the Exa1niner’s rejection of
`
`independent claim 37, which recites “determining whether the
`
`
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`Appeal 201 5—OO6304
`Reexamination Control 90/O l 3 ,0 l 7
`
`Patent 7,058,822 B2
`
`downloadable-information includes executable code,” and further recites
`
`“forming a sandbox package including the MPC and the downloadable-
`
`information.”
`
`Similarly, we also do not sustain the Examiner’s rejection of
`
`independent claim 40, which recites “determining by a content inspection
`
`engine associated with the server whether the downloadable-information
`
`includes executable code,” and further recites “forming by a packaging
`
`engine a sandboxed package including the mobile protection code and the
`
`downloadable-information.”
`
`THE OBVIOUSNESS REJECTION OF CLAIM 7 OVER J1
`
`The Examiner finds Ji teaches all limitations of claim 7. Final Act. 9-
`
`10. Claim 7 depends from claim 4. Tl111s, we do not sustain the Examiner’s
`
`rejection of claim 7 for reasons discussed above with respect to claim 4.
`
`THE OBVIOUSNESS REJECTION OF CLAIMS 1-3 OVER J1 AND LIU
`
`The Examiner finds Ji and Liu teach all limitations of claims 1-3.
`
`Ans. l7-22; see also Ans. 46-55. The Examiner finds Liu’s detecting applet
`
`tags discloses the recited (claim 1) “determining whether the downloadable-
`
`information includes executable code.” Ans. 19-20 (citing Liu, col. 3, ll. 7-
`
`18; col. 4, l. 62wol. 5, 1. 6; col. 6, 11. 19-57).
`
`Appellant presents the following principal arguments:
`
`i.
`
`Liu does not teach the recited (claim 1) “determining whether
`
`the downloadable-information includes executable code” because Liu
`
`generates web pages with modified class names. See App. Br. 22-27.
`
`
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`Appeal 201 5—OO6304
`Reexamination Control 90/O 1 3 ,0 l 7
`
`Patent 7,058,822 B2
`
`ii.
`
`There is no motivation to combine Ji and Liu to arrive at the
`
`claimed invention. See App. Br. 27-29.
`
`Appellant has shown error in the Examiner’s finding that Liu
`
`discloses the recited (claim 1) “determining whether the downloadable-
`
`information includes executable code.”
`
`O11r analysis of Li11 is similar to o11r analysis of Ji. To the extent Li11
`
`does detect applet tags, the lack of an applet tag does not determine that
`
`executable code is not included in the downloadable-information. Thus, at
`
`best, Liu determines, in some cases, when executable code is included in the
`
`downloadable-information, but does not adequately determine when
`
`executable code is not included in the downloadable information. Therefore,
`
`Liu does not disclose the recited determining whether the downloadable-
`
`information includes executable code.
`
`We, therefore, do not sustain the Exa1niner’s rejection of claim 1, or
`
`of claims 2 and 3, which depend from claim 1.
`
`THE OBVIOUSNESS REJECTION OF CLAIMS 4-8, 16-27, 37, AND 40
`
`OVER J1 AND LIU
`
`The Examiner finds Ji and Liu teach all limitations of claims 4-8, 16-
`
`27, 37, and 40. Ans. 22-27; see also Ans. 55-57. The Examiner finds Liu’s
`
`Java architecture including the Java sandbox discloses the recited sandboxed
`
`package. Ans. 22-23 (citing Liu, col. 2, 11. 19-41).
`
`Appellant presents the following principal arguments:
`
`i.
`
`Ji does not disclose the recited (claim 4) “determining whether
`
`the downloadable-information includes executable code.” App. Br. 31.
`
`
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`Reexamination Control 90/O 1 3 ,0 l 7
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`Patent 7,058,822 B2
`
`ii.
`
`Liu does not disclose the recited (claim 4) “forming a
`
`sandboxed package including the mobile protection code and the
`
`downloadable-information” because Liu’s Java sandbox is part of the JVM
`
`within the client browser. See App. Br. 31-32; see also Declaration of Dr.
`
`Nenad Medvidovic 1] 39.
`
`iii.
`
`There is no motivation to combine Ji and Li11 to arrive at the
`
`claimed invention. See App. Br. 32. Appellant has shown error in the
`
`Exa1niner’s finding that Ji teaches the recited (claim 4) “determining
`
`whether the downloadable—information includes executable code” for
`
`reasons given above when addressing the anticipation rejection based on Ji.
`
`Appellant has also show error in the Examiner’s finding that Liu
`
`teaches the recited (claim 4) “forming a sandboxed package including the
`
`mobile protection code and the downloadable—information.” Liu (col. 2, 11.
`
`19411) discloses the Java sandbox and Java bytecode verifier.
`
`For reasons given above when addressing the anticipation rejection
`
`based on Ji, the recited (claim 4) “forming a sandboxed package including
`
`the mobile protection code and the downloadable-information” requires the
`
`downloadable—information to be inside an area in which executable code is
`
`initiated, confined, and prevented from accessing system resources.
`
`Liu’s Java sandbox is part of the JVM within the client browser.
`
`Further, Liu’s Java sandbox is an area in which executable code is initiated,
`
`confined, and prevented from accessing system resources. However, Liu’s
`
`Java sandbox is not formed as a package including the downloadable-
`
`information because the Java sandbox is part of the JVM within the client
`
`
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`Appeal 201 5—OO6304
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`Patent 7,058,822 B2
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`browser. See Liu, col. 2, 11. 19-41. Therefore, Liu does not disclose the
`
`recited forming a sandboxed package.
`
`We, therefore, do not sustain the Exa1niner’s rejection of claim 4, or
`
`of claims 5, 6, and 8, which depend from claim 4.
`
`Similarly, we also do not sustain the Examiner’s rejection of
`
`independent claim 16, Wl1icl1 recites “wherein the ca11sing is accomplished
`
`by forming a sandboxed package including the mobile protection code and
`
`the downloadable-information, and causing the sandboxed package to be
`
`delivered to the downloadable—infor1nation destination,” or of claims 17-27,
`
`which depend from claim 16.
`
`Similarly, we also do not sustain the Exa1niner’s rejection of
`
`independent claim 37, which recites “determining whether the
`
`downloadable—infor1nation includes executable code,” and further recites
`
`“forming a sandbox package including the MPC and the downloadable—
`
`information.”
`
`Similarly, we also do not sustain the Exa1niner’s rejection of
`
`independent claim 40, which recites “determining by a content inspection
`
`engine associated with the server whether the downloadable—inforrnation
`
`includes executable code,” and fiirther recites “forming by a packaging
`
`engine a sandboxed package including the mobile protection code and the
`
`downloadable—information.”
`
`
`
`Appeal 201 5—OO6304
`Reexamination Control 90/O 1 3 ,0 l 7
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`Patent 7,058,822 B2
`
`THE OBVIOUSNESS REJECTION or CLAIMS 4-8, 16-27 , 37 , AND 40
`
`OVER J1 AND GoLAN
`
`The Examiner finds Ji and Golan teach all limitations of claims 4-8,
`
`16-27, 37, and 40. Ans. 27-33; see also Ans. 57-59. The Examiner finds
`
`Golan’s security monitor discloses the recited (claim 4) “determining
`
`whether the downloadable—information includes executable code.” Ans. 27
`
`(citing Golan, col. 4, ll. 5l%l). The Examiner finds Golan’s security
`
`monitor’s secure sandbox discloses the recited sandboxed package. Ans. 28
`
`(citing Golan, col. 4, 1. 62-001. 5, l. 14).
`
`Appellant presents the following principal arguments:
`
`i.
`
`Golan does not disclose the recited (claim 4) “determining
`
`whether the downloadable—information includes executable code” because
`
`Golan monitors the behavior of already downloaded and executing code to
`
`intercept and redirect API calls. App. Br. 35-36.
`
`ii.
`
`“Golan’s security monitor is also not a sandboxed package
`
`because the claimed package is structured so that the mobile protection code
`
`is executed prior to executing the downloadable, as illustrated in elements
`
`340 - 343 of FIGS. 3 and 4 of the present specification.” App. Br. 36.
`
`iii.
`
`There is no motivation to combine Ji and Golan to arrive at the
`
`claimed invention. See App. Br. 3&37. Appellant has shown error in the
`
`Exa1niner’s finding that Golan teaches the recited (claim 4) “determining
`
`whether the downloadable—information includes executable code.”
`
`Our analysis of Golan is similar to our analysis of Ji and Liu. Golan
`
`(col. 4, 11. 58-61) discloses: “The security monitor detects when a
`
`downloaded software component attempts to commit an action that breaches
`
`
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`security and functions to halt the component’s execution and issue a warning
`
`to the user.” To the extent Golan does detect actions that breach security;
`
`the lack of such an action does not determine that executable code is not
`
`included in the downloadable-inforrnation. Thus, at best, Golan determines,
`
`in some cases, when executable code is included in the downloadable-
`
`information, but does not adequately determine when executable code is not
`
`included in the downloadable information. Therefore, Golan does not
`
`disclose the recited determining whether the downloadable-information
`
`includes executable code.
`
`Appellant has also shown error in the Examiner’s finding that Golan
`
`teaches the recited (claim 4) “forming a sandboxed package including the
`
`mobile protection code and the downloadable—information.” Golan (col. 4, 1.
`
`62-001. 5, l. 14) discloses the secure sandbox and security monitor, with the
`
`security monitor filtering the API.
`
`For reasons given above when addressing the anticipation rejection
`
`based on Ji, the recited (claim 4) “fomiing a sandboxed package including
`
`the mobile protection code and the downloadable-information” requires the
`
`downloadable-information to be inside an area in which executable code is
`
`initiated, confined, and prevented from accessing system resources.
`
`Golan’s sandbox is an area in which executable code is initiated,
`
`confined, and prevented from accessing system resources. However,
`
`Golan’s sandbox is not formed as a package including the downloadable-
`
`information. See Golan, Fig. 1. Therefore, Golan does not disclose the
`
`recited forming a sandboxed package.
`
`
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`We, therefore, do not sustain the Exa1niner’s rejection of claim 4, or
`
`of claims 5, 6, and 8, which depend from claim 4.
`
`Similarly, we also do not sustain the Exa1niner’s rejection of
`
`independent claim 16, which recites “wherein the causing is accomplished
`
`by forming a sandboxed package including the mobile protection code and
`
`the downloadable—information, and causing the sandboxed package to be
`
`delivered to the downloadable—infor1nation destination,” or of claims l7—27,
`
`which depend from claim 16.
`
`Similarly, we also do not sustain the Exa1niner’s rejection of
`
`independent claim 37, which recites “determining whether the
`
`downloadable-information includes executable code,” and further recites
`
`“forming a sandbox package including the MPC and the downloadable—
`
`information.”
`
`Similarly, we also do not sustain the Exa1niner’s rejection of
`
`independent claim 40, which recites “determining by a content inspection
`
`engine associated with the server whether the downloadable—inforrnation
`
`includes executable code,” and further recites “forming by a packaging
`
`engine a sandboxed package including the mobile protection code and the
`
`downloadable—informati on.”
`
`THE REJECTION OF CLAIMS 36, 38, AND 39 As
`
`ENLARGING THE SCOPE OF THE CLAIMS
`
`The Examiner rejected claims 36, 38, and 39 as enlarging the scope of
`
`the claims. Final Act. 19-20.
`
`
`
`Appeal 201 5—OO6304
`Reexamination Control 90/O l 3 ,0 l 7
`
`Patent 7,058,822 B2
`
`Appellant does not present any arguments regarding this rejection.
`
`See App. Br. 39-43; Reply Br. 24.
`
`We, therefore, sustain the Examiner’s rejection of claims 36, 38, and
`
`39.
`
`DECISION
`
`The Examiner’s decision rejecting claims l—8, l&27, 37, and 40 is
`
`reversed.
`
`The Examiner’s decision rejecting claims 36, 38, and 39 is affirmed.
`
`Extensions of time for taking any subsequent action in connection
`
`with this appeal are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R.
`
`§ 41.500‘).
`
`AFFIRMED—lN—PART
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Ex parte FINJAN, INC.
`Appellant
`
`Appeal 20l5—006304
`Reexamination Control 90/0 1 3 ,0 l 7
`
`Patent 7,058,822 B2
`
`Technology Center 3900
`
`Before STEPHEN C. SIU, JEREMY J. CURCURI, and
`
`IRVIN E. BRANCH, Administrative Patent Judges.
`
`BRANCH, Administrative Patent Judge, dissenting—in—part.
`
`I agree with and join the maj ority’s decision that the Examiner’s
`
`rejection of claims 36, 38, and 39 should be affirmed.
`
`I also agree with the
`
`maj ority’s ultimate decision that the Examiner’s rejection of claims 4—8,
`
`l6—
`
`27, 37, and 40 should be reversed, although I do not fully agree with the
`
`maj ority’s reasoning. Specifically, as I explain hereinafter, I do not agree
`
`with the maj ority’s reasoning with respect to the “determining whether”
`
`limitation of certain claims at issue. While I otherwise agree with the
`
`maj ority’s reasoning because of the “sandbox” limitations, our disagreement
`
`over “determining whether” compels me to dissent as to the maj ority’s
`
`decision that the Examiner’s rejection of claims 1-3 must be reversed.
`
`I
`
`Patent Owner Finjan, Inc. - Ex. 2007, p. 17
`
`
`
`Appeal 2015—006304
`Reexamination Control 90/013,017
`
`Patent 7,058,822 B2
`
`would, instead, affirm the Examiner’s decision that claims 1-3 are obvious
`
`over Ii and Liu.
`
`The majority finds that “[i]n order to disclose detennining whether the
`
`downloadable—information includes executable code, Ji must disclose
`
`distinguishing between two alternative possibilities: executable code is
`
`included in the downloadable—infonnation, and executable code is not
`
`included in the downloadable—information.” I disagree. Instead, for either
`
`obviousness or anticipation with respect to the limitation at issue, a prior art
`
`reference “detennin[ing] some cases where executable code is included in
`
`the downloadable—information,” as the majority finds to be the case, is
`
`sufficient for “detennine whether” downloadable—information includes
`
`executable code.
`
`Accordingly, I respectfully dissent—in—part.
`
`Appellant:
`
`Bey & Cotropia PLLC (Finj an Inc.)
`Dawn—Marie Bey
`213 Bayly Court
`Richmond VA 23229
`
`Third—party requestor:
`
`Ryan W. Cobb, DLA PIPER LLP (US)
`401 B Street
`
`Suite 1700
`
`San Diego, CA 92101
`
`17
`
`Patent Owner Finjan, Inc. - Ex. 2007, p. 18
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