`
`UNITED STATES DEPARTl\但~NT OF COMMERCE
`United States Patent and Trademark Office
`Address: COl\品1ISSIONERFOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`APPLICATIONNO
`
`FILINGDATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO. I CONFIRMATION NO
`
`90/013,017
`
`10/0712013
`
`7058822
`
`FINREXM0006
`
`6388
`
`12/30/2015
`7590
`115222
`Bey & Cotropia PLLC (Finjan Inc.)
`Dawn-Marie Bey
`213 Bayly Court
`Richmond, V A 23229
`
`EXAMINER
`
`BASEHOAR, ADAM L
`
`ARTUNIT
`
`PAPERNUMBER
`
`3992
`
`MAILDATE
`
`DELIVERY MODE
`
`12/30/2015
`
`PAPER
`
`Please find below andlor 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 TRADEMARKOFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Expαrte FINJAN, INC.
`Appellant
`
`Appea12015-006304
`Reexamination Control 90/013,017
`Patent 7,058,822 B2
`Technology Center 3900
`
`Before STEPHEN C. SIU, JEREMY J. CURCURI, and
`IRVIN E. BRANCH, Administrαtive Pαtent Judges.
`
`Opinion for the board filed by Administrαtive Pαtent Judge CURCURI.
`
`Opinion dissenting-in-part filed by Administrαtive Pαtent Judge BRANCH.
`
`CURCURI, Administrαtive Pαtent Judge.
`
`DECISION ON APPEAL
`
`Patent 7,058,822 B2 (Edery et al.) is under reexamination. Appellant
`appeals under 35 U.S.C. SS 134(b) and 306丘omthe Examiner's rejection of
`claims 1-8, 16ー27,and 36-40. Final Act. 2. We have jurisdiction under
`35 U.S.C. SS 134(b) and 306, and we heard oral argument in the appeal on
`
`November 3,2015.
`
`Claims 4-6, 8, 16ー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.
`
`
`
`Appea12015-006304
`Reexamination Control 90/013,017
`Patent 7,058,822 B2
`
`Claim 7 is rejected under 35 U.S.C. S 103(a) as obvious over Ji. Pinal
`
`Act. 9-10.
`Claims 1-3 are rejected under 35 U.S.C. S 103(a) as obvious over Ji
`
`and Liu (6,058,482; issued May 2, 2000). Ans. 17-22.
`Claims 4-8, 16ー27,37,and 40 are r吋ectedunder 35 U.S.C. S 103(a)
`
`as obvious over Ji and Liu. Ans. 22-27.
`Claims 4-8, 16ー27,37,and 40 are r吋ectedunder 35 U.S.C. S 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. S 305 as enlarging
`
`the scope ofthe claims. Pinal Act. 19-20.
`
`We affirm-in-part.
`
`STATEMENT OP THE CASE
`
`Appe11ant' s invention relates to“protecting network -connectable
`
`devices 丘omundesirable downloadable operation." Edery, col. 1, 11. 28-29.
`
`Claim 4 is i11ustrative:
`
`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, ifthe downloadable-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-
`
`2
`
`
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`Appea12015-006304
`Reexamination Control 90/013,017
`Patent 7,058,822 B2
`
`information, and causing the sandboxed package to be
`communicated to the at least one information-destination.
`
`ANALYSIS
`
`THE ANTIC1PATION REJECTION OF CLA1MS 4-6, 8,16ー27,37,AND 40 BY J1
`
`The Examiner finds Ji discloses a111imitations 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 downloadable-information includes executable
`
`code." Ans. 3 (citing Ji, co1. 3, 11. 23-25; co1. 4, 1. 66---c01. 5, 1. 4). The
`
`Examiner finds Ji's JAR file corresponds to the recited sandboxed package.
`
`Ans.4-5 (citing Ji, co1. 6, 11. 38--42; co1. 7, 11. 13-28; co1. 8, 11. 4-10).
`
`Appe11ant presents the fo11owing principal arguments:
`
`i.
`
`Ji does not disclose the recited (claim 4)“determining whether
`
`the downloadable-information includes executable code" because “Ji then
`
`scans only Qownloaded applet~ to look for malicious applet instructions; not
`
`to determine ifthe downloaded applet contains executable code." App. Br.
`
`16;seeαlso App. Br. 17 (“[T]here are numerous ways that Ji can distinguish
`
`downloaded applets丘omnon-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 ski11 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
`
`3
`
`
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`Appea12015-006304
`Reexamination Control 90/013,017
`Patent 7,058,822 B2
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`Downloadable. Furthermore, Ji only operates on applets and
`does not scan non-applets.
`
`Declaration of Dr. N enad Medvidovic可22;seeαlsoid. at可可 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 ofDr. Nenad Medvidovic可27.
`
`In response, the Examiner further explains
`
`It is not relevant to patentability whether Ji“passivelyassumes"
`or skeptically analyzes; the claim broadly requires determining.
`Since Ji' s system takes a first action for downloadable-
`information including executable code (i.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 e汀 orin the Examiner's finding that Ji discloses
`
`the recited (claim 4)“determining whether the downloadable-information
`
`includes executable code."
`
`Ji (col. 3, ll. 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, l. 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
`
`4
`
`
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`Appea12015-006304
`Reexamination Control 90/013,017
`Patent 7,058,822 B2
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`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 altemative 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 Appe11ant that the
`
`lack of an applet tag does not determine that executable code is not included
`
`in the downloadable-information. See Declaration ofDr. Nenad Medvidovic
`
`可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.
`
`Appe11ant has also shown e汀 orin the Examiner's finding that Ji
`
`discloses the recited (claim 4)“forming a sandboxed package including the
`
`mobile protection code and the downloadable-information." The e汀 orm
`
`this finding hinges on the meaning of the term“sandbox."
`
`Ji (co1. 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 (co1. 7, 11. 13
`
`5
`
`
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`Reexamination Control 90/013,017
`Patent 7,058,822 B2
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`28) discloses prefetching dependency class files and instrumenting them
`
`once. Ji (co1. 8,11.4-10) discloses creating a new JAR 仙 台omthe
`
`instrumented class files and the monitoring package, and transfer thereof to
`
`the client machine.
`
`Appe11ant's Specification discloses:“The sandboxed package can
`
`also include a corresponding Downloadable and can provide for initiating
`
`the Downloadable in a protective 'sandbox'." Edery, co1. 3, 11. 15-18.
`
`Appe11ant's Specification discloses:“An MPC and applicable policies can
`
`also, for example, precede each executable, such that each executable wi11 be
`
`separately sandboxed in the same or a different manner according to
`
`MPC/policy configuration (see above) upon inflation and insta11ation."
`
`Edery, co1. 13, 11. 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丘omaccessing system resources.
`Confinement to the sandbox prevents downloaded applets丘om
`ca町 yingout potentia11y 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 丘omaccessing system resources. This interpretation is both
`
`consistent with Appe11ant's Specification and with a plain meaning ofthe
`
`term in the computer context. Thus, the recited (claim 4)“forming a
`
`sandboxed package including the mobile protection code and the
`
`6
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`Appea12015-006304
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`Patent 7,058,822 B2
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`downloadable-information" requires the downloadable-information to be
`
`inside an area in which executable code is initiated, confined, and prevented
`
`丘omaccessing 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丘omaccessing system resources. With
`
`regard to Ji' s instrumentation, Ji instruments instructions. See Ji, Abstract.
`
`Thus, although Ji may have pαrticulαr instructions that are instrumented, the
`
`instrumentation is also not a sandboxed package because the instrumentation
`
`also does not cause Ji 'sα~plet to be inside an area in which the applet's
`
`executable code is initiated, confined, and prevented丘omaccessing system
`
`resources. Therefore, Ji does not disclose the recited forming a sandboxed
`
`package.
`
`We, therefore, do not sustain the Examiner' s rejection of claim 4, or
`
`of claims 5, 6, and 8, which depend丘omclaim 4.
`
`Similarly, we also do not sustain the Examiner'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-information destination," or of claims 17-27,
`
`which depend丘omclaim 16.
`
`Similarly, we also do not sustain the Examiner's rejection of
`
`independent claim 37, which recites "determining whether the
`
`7
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`Reexamination Control 90/013,017
`Patent 7,058,822 B2
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`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 OBV10USNESS REJECTION OF CLAIM 7 OVER J1
`
`The Examiner finds Ji teaches a111imitations of claim 7. Pinal Act. 9
`
`10. Claim 7 depends丘omclaim 4. Thus, we do not sustain the Examiner's
`
`rejection of claim 7 for reasons discussed above with respect to claim 4.
`
`THE OBV10USNESS REJECTION OF CLA1MS 1-3 OVER J1 AND L1U
`
`The Examiner finds Ji and Liu teach a111imitations of claims 1-3.
`
`Ans. 17-22; seeαlso 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, 11. 7
`
`18; col. 4, l. 62ー∞l.5, l. 6; col. 6, 11. 19-57).
`
`Appe11ant presents the fo11owing 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.
`
`8
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`Patent 7,058,822 B2
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`ii. There is no motivation to combine Ji and Liu to arrive at the
`
`claimed invention. See App. Br. 27-29.
`
`Appe11ant has shown e汀 orin the Examiner's finding that Liu
`
`discloses the recited (claim 1)“determining whether the downloadable-
`
`information includes executable code."
`
`Our analysis ofLiu is similar to our analysis of Ji. To the extent Liu
`
`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 Examiner's rejection of claim 1, or
`
`of claims 2 and 3, which depend丘omclaim 1.
`
`THE OBV10USNESS REJECTION OF CLAIMS 4-8, 16-ー27,37,AND 40
`
`OVER J1 AND L1U
`
`The Examiner finds Ji and Liu teach a111imitations of claims 4-8, 16-
`
`27, 37, and 40. Ans. 22-27; seeαlso 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).
`
`Appe11ant presents the fo11owing principal arguments:
`
`i.
`
`Ji does not disclose the recited (claim 4)“determining whether
`
`the downloadable-information includes executable code." App. Br. 31.
`
`9
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`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 ofthe JVM
`
`within the client browser. See App. Br. 31-32; seeαlso Declaration of Dr.
`
`N enad Medvidovic可39.
`
`iii. There is no motivation to combine Ji and Liu to arrive at the
`
`claimed invention. See App. Br. 32. Appe11ant has shown e汀 orin the
`
`Examiner'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.
`
`Appe11ant has also show e汀 orin 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.
`
`19--41) 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丘omaccessing system resources.
`
`Liu's Java sandbox is part ofthe JVM within the client browser.
`
`Further, Liu's Java sandbox is an area in which executable code is initiated,
`
`confined, and prevented丘omaccessing 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
`
`ハリ
`11
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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 Examiner' s rejection of claim 4, or
`
`of claims 5, 6, and 8, which depend丘omclaim 4.
`
`Similarly, we also do not sustain the Examiner'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-information destination," or of claims 17-27,
`
`which depend丘omclaim 16.
`
`Similarly, we also do not sustain the Examiner'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 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."
`
`11
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`THE OBV10USNESS REJECTION OF CLAIMS 4-8, 16-ー27,37,AND 40
`
`OVER J1 AND GOLAN
`
`The Examiner finds Ji and Golan teach a111imitations of claims 4-8,
`
`16ー27,37, and 40. Ans. 27-33; seeαlso 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, 11.51---61). The Examiner finds Golan's security
`
`monitor' s secure sandbox discloses the recited sandboxed package. Ans. 28
`
`(citing Golan, col. 4, l. 62-∞l. 5, l. 14).
`
`Appe11ant presents the fo11owing 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 ca11s. App. Br. 35-36.
`
`11. “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 ofFIGS. 3 and 4 ofthe present specification." App. Br. 36.
`
`iii. There is no motivation to combine Ji and Golan to arrive at the
`
`claimed invention. See App. Br. 36ー37.Appe11ant has shown e汀 orin the
`
`Examiner'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
`
`12
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`security and functions to halt the component' s execution and issue a waming
`
`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-information. 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 e汀 orin 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, l.
`
`62ー∞l.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)“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丘omaccessing 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.
`
`13
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`We, therefore, do not sustain the Examiner' s rejection of claim 4, or
`
`of claims 5, 6, and 8, which depend丘omclaim 4.
`
`Similarly, we also do not sustain the Examiner'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-information destination," or of claims 17-27,
`
`which depend丘omclaim 16.
`
`Similarly, we also do not sustain the Examiner'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 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 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. Pinal Act. 19-20.
`
`14
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`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.
`
`The Examiner' s decision r吋ectingclaims 1-8, 16ー27,37,and 40 is
`
`DECISION
`
`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 govemed by 37 C.F.R. S 1.550(c). See 37 C.F.R.
`
`。41.50(t).
`
`AFFIRMED-IN-P AR T
`
`ACP
`
`15
`
`
`
`UNITED STATES PATENT AND TRADEMARKOFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Expαrte FINJAN, INC.
`Appellant
`
`Appea12015-006304
`Reexamination Control 90/013,017
`Patent 7,058,822 B2
`Technology Center 3900
`
`Before STEPHEN C. SIU, JEREMY J. CURCURI, and
`IRVIN E. BRANCH, Administrαtive Pαtent Judges.
`
`BRANCH, Administrαtive Pαtent Judge, dissenting-in-part.
`
`1 agree with andjoin the majority's decision that the Examiner's
`
`rejection of claims 36, 38, and 39 should be affirmed. 1 also agree with the
`
`majority's ultimate decision that the Examiner's 吋 ectionof claims 4-8, 16-
`
`27, 37, and 40 should be reversed, although 1 do not fully agree with the
`
`majority's reasoning. Specifically, as 1 explain hereinafter, 1 do not agree
`
`with the majority's reasoning with respect to the “determining whether"
`
`limitation of certain claims at issue. While 1 otherwise agree with the
`
`majority's reasoning because ofthe“sandbox" limitations, our disagreement
`
`over“determining whether" compels me to dissent as to the majority's
`
`decision that the Examiner' s rejection of claims 1-3 must be reversed. 1
`
`
`
`Appea12015-006304
`Reexamination Control 90/013,017
`Patent 7,058,822 B2
`
`would, instead, affirm the Examiner's decision that claims 1-3 are obvious
`
`over Ji and Liu.
`
`The majority finds that“[i]n order to disclose determining whether the
`
`downloadable-information includes executable code, Ji must disclose
`
`distinguishing between two altemative possibilities: executable code is
`
`included in the downloadable-information, and executable code is not
`
`included in the downloadable-information." 1 disagree. Instead, for either
`
`obviousness or anticipation with respect to the limitation at issue, a prior art
`
`reference “determin[ing] some cases where executable code is included in
`
`the downloadable-information," as the majority finds to be the case, is
`
`sufficient for “determine whether" downloadable-information includes
`
`executable code.
`
`Accordingly, 1 respectfully dissent-in-part.
`
`Appellant:
`
`Bey & Cotropia PLLC (Fi吋anInc.)
`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