Ex Parte Bardsley et al

Patent Trial and Appeal Board

May 14, 2014

12116256 (P.T.A.B. May. 14, 2014)

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 INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/116,256 05/07/2008 Jeffrey S. Bardsley 10033.925600 6719
31894 7590 05/14/2014
OKAMOTO & BENEDICTO, LLP
P.O. BOX 641330
SAN JOSE, CA 95164
EXAMINER
TOLENTINO, RODERICK
ART UNIT PAPER NUMBER
2439
MAIL DATE DELIVERY MODE
05/14/2014 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 JEFFREY S. BARDSLEY,
ASHLEY A. BROCK, CHARLES K. DAVIS III,
NATHANIEL W. KIM, JOHN J. MCKENNA,
and CARLOS F. VILLEGAS
______________

Appeal 2011-013305
Application 12/116,256
Technology Center 2400
____________

Before JEAN R. HOMERE, JOHNNY A. KUMAR, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Final Rejection of
claims 1-17. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
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Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Appeal Brief (“App. Br.”) filed March 31, 2011, the Answer
(“Ans.”) mailed June 17, 2011, and the Reply Brief (“Reply Br.”) filed
August 3, 2011, for the respective details. We have considered in this
decision only those arguments Appellants actually raised in the Briefs. Any
other arguments Appellants could have made but chose not to make in the
Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
Claim 1 is representative of the invention and reads as follows:
1. A method of administering a countermeasure for a
computer security threat to a computer system, comprising:
receiving at a computer an identification of at least one
operating system that is affected by a computer security threat,
an identification of an operating system release level for the
operating system type and an identification of one or more
possible countermeasures for an operating system type and an
operating system release level; and
processing at said computer one or more of the identified
countermeasures that corresponds to the operating system and
operating system release level of said computer.

The Examiner’s Rejections
The Examiner rejected claims 1-4, 7-14, and 17 under 35 U.S.C.
§ 103(a) as being unpatentable over Flowers (US 7,073,198 B1, Jul. 4, 2006)
and Dahlstrom (US 2004/0006704 A1, Jan. 8, 2004). Ans. 4-9.
The Examiner rejected claims 5, 6, 15, and 16 under 35 U.S.C.
§ 103(a) as being unpatentable over Flowers, Dahlstrom, and Kitamoto
(US 2003/0023340 A1, Jan. 30, 2003). Ans. 9-10.

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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 claims 1-17 that has been argued by the Appellants.
App. Br. 5-8; Reply Br. 2-4.
We disagree with Appellants’ conclusions. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons set forth by the Examiner in
the Examiner’s Answer in response to Appellants’ Appeal Brief. Ans. 4-13.
We concur with the conclusions reached by the Examiner. We highlight and
address specific findings and arguments for emphasis as follows.
Dispositive Issue: Did the Examiner err in finding that the combined
teachings of Flowers and Dahlstrom teach and/or suggest “processing at said
computer one or more of the identified countermeasures that corresponds to
the operating system and operating system release level of said computer”
(hereinafter “processing step”), as set forth in claim 1?
The Examiner found that:
The “processing step” has been interpreted to be the
handling the countermeasures that correspond to a specific
operating system, this data being supplied by the “receiving
step” above. The term ‘processing’ can mean many things,
especially in the technology of computers. Based on the
arguments by the appellant, the appellant is arguing that the
processing is made at the same computer that received the
threat/vulnerability and the operating system identification.
The examiner agrees with this argument, however, the
interpretation is where examiner and appellant differ. The term
‘processing’ is defined as a series of actions, changes, or
functions bringing about a result. Now in Dahlstrom on
Paragraphs 0040 and 0042, Dahlstrom shows how the
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vulnerability of a remote client/host will be processed yielding
a countermeasure that is the best fix to be made available back
to the remote client/host. The appellant’s arguments is unclear
but seems that they are trying to say that the countermeasures
are ‘executed’ on the remote client/host. However, again that
is not what the claim language states. The claim merely says
that the countermeasures corresponding to the an operating
system are processed at the computer. In this case when
Dahlstrom identifies the vulnerability and processes the data to
find the best fix for the vulnerability, is reading the claim
language regarding the “processing step.”
Ans. 12-13 (emphasis ours).
We see no error in the Examiner’s finding that the combination of
Flowers and Dahlstrom teaches or suggests every recited element of
representative claim 1.1 Ans. 10-13. In particular, with regard to the
“processing step” feature, Appellants have not given any special meaning to
the term “processing,” and thus we find reasonable and adopt the
Examiner’s definition of “processing” as “a series of actions, changes, or
functions bringing about a result.” Ans. 12. Here, the Examiner has shown
that Dahlstrom teaches identifying the vulnerability and processing the data
to find the best fix for the vulnerability. In other words, the Examiner has
found the term “processing” to encompass “identifying the vulnerability and
processing the data.” Ans. 12-13. Consistent with the Examiner’s stated
position and based on the broadest reasonable interpretation consistent with
the usual and customary meaning, Dahlstrom’s identifying the vulnerability
and processing the data to find the best fix for the vulnerability meets the
claim language. Appellants have not presented sufficient evidence to

1 Separate patentability is not argued for claims 2-6. App. Br. 6, 7.
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persuade us that the Examiner’s interpretation of the processing step is in
error.
Regarding Appellants’ argument that in Flowers and Dahlstrom “the
receiving and processing steps would thus be performed in different
computers” (App. Br. 6), Appellants’ argument is not commensurate with
the scope of claim 1, because claim 1 does not preclude such a reading of the
processing step.
Appellants provided additional arguments with respect to the
patentability of claims 7-17 (App. Br. 7-8; Reply Br. 4). The Examiner has
rebutted each of those arguments in the Answer by a preponderance of the
evidence (Ans. 10-13). Therefore, we agree with the Examiner’s findings
and underlying reasoning and adopt them as our own. Consequently, we
conclude there is no reversible error in the Examiner’s rejections of claims
1-17.

DECISION
The Examiner did not err in rejecting claims 1-4, 7-14, and 17 under
35 U.S.C. § 103(a) as being unpatentable over Flowers and Dahlstrom.
The Examiner did not err in rejecting claims 5, 6, 15, and 16 under
35 U.S.C. § 103(a) as being unpatentable over Flowers, Dahlstrom, and
Kitamoto.
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)(v).

AFFIRMED

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