Ex Parte Ballard et al

Patent Trial and Appeal Board

Sep 19, 2012

10185332 (P.T.A.B. Sep. 19, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/185,332 06/27/2002 Barbara A. Ballard ROC920020076US1 6267
46797 7590 09/20/2012
IBM CORPORATION, INTELLECTUAL PROPERTY LAW
DEPT 917, BLDG. 006-1
3605 HIGHWAY 52 NORTH
ROCHESTER, MN 55901-7829
EXAMINER
MITCHELL, JASON D
ART UNIT PAPER NUMBER
2199
MAIL DATE DELIVERY MODE
09/20/2012 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 BARBARA A. BALLARD, GEORGE F. DESTEFANO,
RONALD J. HAUGEN, GREGORY R. HINTERMEISTER, BRIAN R.
LUCIER, DIANE E. OLSON, ELLEN B. STREIFEL, GARY JOHN
VANSELOW, and JEFFREY D. WALDBILLIG
____________________

Appeal 2010-003938
Application 10/185,332
Technology Center 2100
____________________

Before ROBERT E. NAPPI, DAVID M. KOHUT, and
JUSTIN BUSCH, Administrative Patent Judges.

BUSCH, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-003938
Application 10/185,332

2
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3-9, 12, 14-20, 23-25, and 27.1 We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.

Introduction
According to Appellants, the invention relates to managing software
fixes for software products in a computer system. Spec. ¶ 1.

STATEMENT OF THE CASE2

Exemplary Claim
Claim 1 is an exemplary claim and is reproduced below:
1. A method of managing software fixes for a software
product in a computer system, comprising:
for each of a plurality of software fixes for a corresponding
software product, determining whether the corresponding software
product is installed on the computer system;
if the corresponding software product is installed, then
determining whether each of the plurality of software fixes is installed
in the computer system;
if each of the plurality of software fixes is installed, then setting
a status value to reflect that the plurality of software fixes is installed;
and

1 Claims 2 and 13 were previously cancelled and claims 10, 11, 21, 22, and
26 are not appealed.
2 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed December 14, 2006) and Reply Brief (“Reply Br.,” filed May 21,
2007), and the Examiner’s Answer (“Ans.,” mailed March 21, 2007).
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if any one of the plurality of software fixes is not installed, then
setting the status value to reflect that the plurality of software fixes is
not installed.

References
Cheng 6,151,643 Nov. 21, 2000
(Filing Date: June 7, 1996)
Donohue 6,202,207 B1 Mar. 13, 2001
(Filing Date: Aug. 19, 1998)

Rejections
Claims 1, 3-7, 12, 14-18, and 24 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Cheng. Ans. 3-6.
Claims 9, 20, 23, 25, and 27 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Donohue. Ans. 6-8.
Claims 8 and 19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cheng and Donohue. Ans. 8-9.

ISSUES3
35 U.S.C. § 102(b) (Cheng): claims 1, 3-7, 12, 14-18, and 24
Appellants argue that Cheng does not disclose the limitations of
independent claim 1 because: (1) Cheng teaches identifying installed

3 Should this matter undergo further prosecution, the Examiner may want to
consider whether claims 12 and 14-20 are directed to patentable subject
matter in view of the fact that the claims are not limited to “non-transitory”
media. Spec. ¶ 72 (Appellants’ definition of “signal-bearing media” includes
“wireless communications”). Additionally, the Examiner may want to
consider whether claims 23 and 27 are directed to patentable subject matter.
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software products prior to determining if there is a fix for that product; and
(2) Cheng’s update database on a service provider’s computer includes
tables identifying which updates should be installed for identified products
and that the tables would be ineffective if the values in the table were
changed. App. Br. 10-13.

Issue: Has the Examiner erred in finding that Cheng discloses “for
each of a plurality of software fixes for a corresponding software product,
determining whether the corresponding software product is installed on the
computer system” and “setting the status value to reflect that the plurality of
software fixes is not installed” as recited in claim 1?

35 U.S.C. § 102(b) (Donohue): claims 9, 20, 23, 25, and 27
Appellants argue that Donohue is directed to dependencies between
different products as opposed to related sets of software fixes. App. Br. 14.

Issue: Has the Examiner erred in finding that Donohue discloses
“retrieving a data structure identifying the related of plurality of software
fixes” as recited in claim 9?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner has erred. Further, we have reviewed the
Examiner’s response to each of the arguments and Appellants’ Reply Brief.
We agree with the Examiner.
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With respect to claim 1, Appellants argue that the “for each” language
requires that the product is determined “on the basis of a given software fix.”
App. Br. 11. Appellants assert that, “[s]tated differently, the given software
fix is used as a key to identify/discover the corresponding software
product.” Id. (emphasis added). However, we agree with the Examiner that
the broadest reasonable interpretation of the claim language in claim 1 is
broader than what Appellants argue. Thus, we find that claim 1 does not
require that the determining step is done “on the basis” of or “using” a fix or
that the “fix is used as a key to identify/discover the corresponding software
product.” App. Br. 11-12. Appellants never positively recite identifying the
fixes or using identified fixes as a basis for determining the product. As
explained by the Examiner, at least in the case where the fixes are all related
to one product (e.g., Adobe® Acrobat®) that exists on a client computer,
“once Cheng has performed the determination step [determining that
Adobe® Acrobat® is installed], it is performed for each of the fixes, which
Cheng already knows exist[s] for that product.” Ans. 10-11. While
Appellants’ disclosed invention, if “stated differently,” may not read on the
disclosure of Cheng, we find that the broadest reasonable interpretation of
the present claims is disclosed by Cheng.
Independent claims 12 and 24 contain similar limitations to those in
claim 1 and Appellants make no further arguments with respect to claims 12
and 24. Therefore, we agree with the Examiner that claims 12 and 24 are
anticipated by Cheng for the same reasons as provided above with respect to
claim 1. The rejections of dependent claims 3-7 and 8 and dependent claims
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14-18, 19, and 24, which depend from independent claims 1 and 12,
respectively, were not argued separately from independent claims 1 and 12,
and therefore fall with the rejection of claims 1 and 12.
Regarding claim 9, Appellants argue that the system of Donohue is an
iterative software update process, which begins by identifying updates for a
first software program and then iteratively checks for pre-requisite programs
for each program identified until the first program and all of the identified
pre-requisites are updated. App. Br. 13-14. Appellants further assert that
“the claim element at issue recites two sets of software fixes: the plurality of
software fixes, and the related plurality of software fixes” and that Donohue
describes “dependencies between different products, not to related sets of
software fixes.” Id. at 14. The Examiner finds that Donohue discloses
identifying at least a second program that needs to be updated when
updating a first program and that the communication of the related updates
meets the limitation claimed. Ans. 12-13. Under a broadest reasonable
interpretation of a “related plurality of software fixes,” the update
requirements of related products as disclosed in Donohue (col. ll. 19-29)
meet the claimed limitation. It is true that claim 9 identifies two pluralities of
fixes, but Donohue also discloses two or more pluralities of fixes in that it
identifies updates (fixes) related to the first product as well as updates
related to the products with which the first product has dependencies.
Therefore, the communication of related software product updates meets the
limitation in claim 9 of “retrieving a data structure identifying the related
plurality of software fixes” and, thus, we agree with the Examiner that
Donohue discloses all of the limitations of claim 9.
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Appellants assert the same arguments with respect to independent
claims 20, 23,4 and 25, each of which contains similar limitations to those in
claim 9. Therefore, we agree with the Examiner that claims 20, 23, and 25
are anticipated by Donohue for the same reasons as provided above with
respect to claim 9. Dependent claim 27, which depends from independent
claim 23, was not argued separately from independent claim 23; claim 27
therefore falls with the rejection of claim 23.

DECISION
The Examiner’s rejection of claims 1, 3-7, 12, 14-18, and 24 under 35
U.S.C. § 102(b) as being anticipated by Cheng is affirmed.
The Examiner’s rejection of claims 9, 20, 23, 25, and 27 under 35
U.S.C. § 102(b) as being anticipated by Donohue is affirmed.
The Examiner’s rejection of claims 8 and 19 under 35 U.S.C. § 103(a)
as being obvious in view of Cheng and Donohue is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

4 Appellants initially argued that claim 23 includes limitations not present in
claims 9-11. App. Br. 14-15. The Examiner has more clearly mapped the
elements of Donohue to claim 23. Ans. 8. Appellants have made no further
argument regarding the Examiner’s clarified mapping in the Reply Brief.
Therefore, claim 23 falls with claim 9 as claim 23 contains limitations
commensurate with claim 9.
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