Ex Parte DiRico

Board of Patent Appeals and Interferences

Nov 30, 2011

10222602 (B.P.A.I. Nov. 30, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte NICHOLAS J. DIRICO
____________

Appeal 2009-009924
Application 10/222,602
Technology Center 2100
____________

Before HOWARD B. BLANKENSHIP, ST. JOHN COURTENAY III, and
DEBRA K. STEPHENS, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-7 and 12-18, which are all the claims pending in this
application. Claims 8-11 and 19-20 were cancelled during prosecution. We
have jurisdiction under 35 U.S.C. § 6(b).
We Affirm.

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Invention
Appellant’s invention relates generally to the performance of patch
installations on target systems. More particularly, the invention on appeal is
directed to pre-verification and sorting of patches before applying the
patches to target systems. (Spec. 1, ll. 12-14).

Representative Claim

1. In an electronic device that is interfaced with a network to
which other devices are interfaced, a method, comprising the steps of:

verifying that it is permissible to install a selected software
patch on a selected plurality of the devices that are interfaced with the
network;

providing the selected software patch that is to be installed on a
selected plurality of the devices that are interfaced with the network;

determining whether there are any additional software patches
that are required software patches that need to be installed prior to
installation of the selected software patch; and

simultaneously installing the selected software patch and any
required software patches on the selected devices in parallel.

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Rejections 1
1. Claims 1, 5-7, 12, and 16-18 stand rejected under 35 U.S.C.
§103(a) as being unpatentable over the combination of Stupek
(US 5,586,304, Dec. 17, 1996), Denby (US 6,976,062 B1, Dec.
13, 2005) and Blanding (US 2006/0265708 A1, Nov. 23, 2006).
2. Claims 1, 3-7, 12, and 14-18 stand rejected under 35 U.S.C.
§103(a) as being unpatentable over the combination of Smith
(US 6,477,703 B1, Nov. 5, 2002), Denby, and Blanding.
3. Claims 2 and 13 stand rejected under 35 U.S.C. §103(a) as
being unpatentable over the combination of Stupek, Denby,
Blanding, and Bourke-Dunphy (US 2002/0133814 A1, Sep. 19,
2002).
4. Claims 3, 4, 14, and 15 stand rejected under 35 U.S.C. §103(a)
as being unpatentable over the combination of Stupek, Denby,
Blanding, and Smith.
5. Claims 2 and 13 stand rejected under 35 U.S.C. §103(a) as
being unpatentable over the combination of Smith, Denby,
Blanding, and Bourke-Dunphy.
6. Claims 1-5, 7, 12-16, and 18 stand provisionally rejected on the
judicially created doctrine of obviousness-type double patenting
over claims 4-5, 7, 9-10, and 17-18 of US Patent No. 7,823,148
(App. No. 10/222,346).

1 The Examiner also set forth two additional provisional obviousness-type
double-patenting rejections of claims 1-7 and 12-18 over co-pending
Application No. 10/222,324, which was abandoned on Jul. 18, 2008.
Therefore, we dismiss these two provisional obviousness-type double-
patenting rejections as moot .
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7. Claims 6 and 17 stand provisionally rejected on the judicially
created doctrine of obviousness-type double patenting over
claim 9 of US Patent No. 7,823,148 (App. No. 10/222,346) in
view of Blanding and Smith.

First-Stated Rejection –Combinability of the references
ISSUE
Under §103, did the Examiner err in combining the Denby,
Stupek, and Blanding references?

ANALYSIS
We begin our analysis by considering the threshold issue of whether
the Examiner erred in combining the Stupek, Denby, and Blanding
references. We observe that Appellant focuses on the tertiary Blanding
reference in contending the references have been improperly combined.
(App. Br. 12-14). Appellant also contends that the Examiner’s reasoning is
so broad and vague that it could apply to almost any two references in the
computer arts. (App. Br. 12; Reply Br. 4-5)
However, the Supreme Court guides that the conclusion of
obviousness can be based on the interrelated teachings of multiple patents,
the effects of demands known to the design community or present in the
marketplace, and the background knowledge possessed by a person having
ordinary skill in the art, and an obviousness “analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
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person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007).
Here, it is our view that an artisan possessing common sense and
creativity at the time of the invention would have been familiar with various
methods of software installation and maintenance. Moreover, the Supreme
Court guides that the “combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results,” KSR 550 U.S. at 401. This reasoning is applicable here.
To the extent that Appellant may be advancing a “teaching away”
argument with respect to Blanding (App. Br. 13), we note that “the prior art's
mere disclosure of more than one alternative does not constitute a teaching
away from any of these alternatives because such disclosure does not
criticize, discredit, or otherwise discourage the solution claimed …” In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (emphasis added)
We further observe that Appellant has not rebutted the Examiner’s
legal conclusion of obviousness by showing that the claimed combination of
familiar elements produces any new function. Appellant has not provided
any factual evidence of secondary considerations, such as unexpected or
unpredictable results, commercial success, or long felt but unmet need.
Therefore, we find Appellant’s arguments unavailing regarding the
combinability of the Stupek, Denby, and Blanding references for essentially
the same reasons proffered by the Examiner in the Answer (pp. 4-5), and as
further discussed above. Accordingly, we find Appellant has not shown the
Examiner erred by improperly combining the cited references under § 103.

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First-Stated Rejection - claims 1, 7, 12, and 18 (limitations)
ISSUE
Based upon our review of the administrative record, we have
determined that the following issue is dispositive in this appeal regarding
representative claim 1: 2
Under §103, did the Examiner err in finding that the
combination of Stupek, Denby, and Blanding would have
taught or suggested “verifying that it is permissible to
install a selected software patch on a selected plurality of
the devices that are interfaced with the network,” within
the meaning of representative claim 1?

FINDINGS OF FACT
1. Appellant’s Specification describes a patch module 10
that validates the target devices as suitable to receive the
software patches. The validation process analyzes a
plurality of attributes related to the target device. (Spec.
3, l. 36 – pg. 4, l. 3).

2. Blanding teaches an application typically is assigned to a
group of users (or group of machines) when it is deemed
mandatory for that group to have that application, while
published applications are those that are made optionally
available to users who may benefit therefrom. (Para.
[0029])(emphasis added)

Additional findings of fact appear below.

2 Based on Appellant’s arguments (App. Br. 10), we select claim 1 as
representative of the group of claims including claims 1, 7, 12, and 18 for
the first-stated rejection. See 37 C.F.R. § 41.37(c)(1)(vii).
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ANALYSIS
Appellant contends that the cited references, notably Blanding, do not
verify that it is permissible to install a selected software patch on a selected
plurality of devices. Instead, according to Appellant, Blanding clearly
teaches upgrades that involve determining which applications to apply to a
user or machine on a single machine/user case basis. (App. Br. 11, Reply
Br. 3-4). We disagree for the reasons discussed infra.
We begin our analysis with claim construction. We consider the
scope of the disputed limitation: “verifying that it is permissible to install a
selected software patch . . . .” (Claim 1; see commensurate language recited
in independent claim 12).
During ex parte prosecution, the Patent & Trademark Office (PTO)
determines the scope of the claims by giving the language “the broadest
reasonable construction ‘in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” Phillips v. AWH Corp., 415
F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (quoting In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)).
Here, Appellant’s Specification does not define the term “verify.”
Instead, Appellant’s Specification merely gives examples of “validating,”
such as determining if the target devices are suitable for receiving software
patches. (FF 1). Appellant’s Specification also discloses that the validation
process analyzes a plurality of attributes related to the target device. (Id.).
Therefore, we conclude that a broad but reasonable interpretation of the
claimed “verifying” encompasses a process that serves to confirm that one or
more target devices can receive software patches.
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In light of our claim construction, we agree with the Examiner’s
findings with respect to Blanding. (Ans. 5, 19). Notably, Blanding teaches
that an application is assigned to a group of users (having an associated
plurality of selected devices) when it is deemed mandatory (“verifying”) for
the group to have the application. (FF 2). Thus, we find Blanding at least
suggests verifying that it is permissible (deemed mandatory) for the selected
plurality of devices interfaced with the network to receive the selected
software patch (an application upgrade as taught by Stupek-FF 3 infra).
Based upon our review of the record, we also agree with the Examiner’s
findings with respect to the Stupek and Denby references. (Ans. 4).
On this record, we find Appellant’s arguments unpersuasive of
Examiner error regarding both the combinability of the cited references and
the disputed limitation of verifying that it is permissible to install a selected
software patch on a selected plurality of the devices that are interfaced with
the network,” within the meaning of representative claim 1.
Accordingly, we sustain the first-stated rejection of claim 1 and
claims 7, 12, and 18 that fall therewith over the combination of Stupek,
Denby, and Blanding. See 37 C.F.R. § 41.37(c)(1)(vii).

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First-Stated Rejection - claims 5, 6, 16, and 17 (limitations)
ISSUE
Based upon our review of the administrative record, we have
determined that the following issue is dispositive in this appeal regarding
representative claim 5: 3
Under §103, did the Examiner err in finding that the cited references
would have taught or suggested checking if said selected software patch is
made obsolete by a software patch presently on one of the selected devices,
within the meaning of representative claim 5?

FINDING OF FACTS
3. Stupek teaches determining whether or not the upgrade package
represents a true upgrade for the existing network resource by
comparing the version number of the upgrade package with the
version number of the corresponding network resource. (Col. 4,
ll. 8-12).
ANALYSIS
Appellant contends that the cited portions of Stupek relied upon by
the Examiner (Col. 4, ll. 5-12) merely describe determining whether or not
the version number of the upgrade package matches the version number of
the corresponding network resource, as a means to ascertain whether or not
the upgrade package represents a true upgrade for the existing network
resource. Appellant further argues that Stupek goes on to describe that if the
upgraded and current versions of the network resource do not match, the

3 Based on Appellant’s arguments (App. Br. 14-15), we select claim 5 as
representative of the group of claims including claims 5, 6, 16, and 17 for
the first-stated rejection. See 37 C.F.R. § 41.37(c)(1)(vii).
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upgrade advisor 11 uses additional information to analyze the level of
severity of the upgrade, i.e., to determine the importance of the upgrade to
the efficient operation of the server. (App. Br. 15). Appellant contends that
there is nothing in this passage about determining whether the package is an
older version, nor whether it is obsolete, as recited in claim 5. (Id.).
However, for the reasons discussed below, we find that the cited
references strongly suggest “checking if the selected software patch is made
obsolete by a software patch presently on one of the selected devices.”
(Claim 5). In particular, we agree with the Examiner’s finding that Stupek
suggests checking whether the selected package is an older version. (Ans.
20-21). As discussed above, Stupek discloses determining whether or not the
upgrade package represents a true upgrade for the existing network resource
by comparing the version number of the upgrade package against the version
number of the corresponding network resource. (FF 3).
Given this teaching (FF 3), we find Stupek makes a determination as
to whether the upgrade package is an older version, thereby checking if the
upgrade (selected) package is obsolete if the upgrade is not a “true” upgrade.
Thus, we find Stupek checks whether the selected package is an older
version, i.e., made obsolete by, the package existing on the resource. (Id.).
Appellant additionally argues that “[t]here is nothing in Stupek that
teaches that if they (version numbers) do not match, the package is an older
version and the selected package is made obsolete.” (Reply Br. 7).
Although we agree that Stupek does not explicitly teach that the
package is older if the version numbers do not match, it is our view that
there is a strong suggestion that when the version numbers do not match, this
indicates that one version is older than the other, as an ordinarily skilled
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artisan would have known to associate earlier version numbers with older
software packages. (See FF3). Therefore, we do not find Appellant’s
argument convincing.
On this record, we find the Examiner did not err in finding that the
cited references would have taught or suggested checking if said selected
software patch is made obsolete by a software patch presently on one of the
selected devices, within the meaning of representative claim 5. Accordingly
we sustain the Examiner’s rejection of claim representative 5, as well as
claims 6, 16, and 17 which fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii).

Second-Stated Rejection
Claims 1, 3-7, 12, and 14-18
ANALYSIS
The Examiner rejected claims 1, 3-7, 12, and 14-18 as unpatentable
over Smith, Denby, and Blanding. In urging the patentability of these
claims, Appellant essentially repeats the arguments made above in the first-
stated rejection regarding the combinability of the references and the
limitation of verifying that it is permissible to install a selected software
patch on a selected plurality of the devices that are interfaced with the
network. (Claim 1). (See App. Br. 16-17).
The Examiner again relies on Blanding to teach or suggest this
disputed limitation. (See Ans. 21). We also find the Examiner’s reference
to Stupek instead of Smith (on page 6 of the Final Office Action) is an
obvious typographical error that was corrected in the Answer. (Ans. 8).
Accordingly, we sustain the second-stated rejection for the same reasons
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discussed above regarding the first-stated rejection with respect to the
common Denby and Blanding references relied on by the Examiner.

Third and Fourth-Stated Rejections
ANALYSIS
Appellant urges the patentability of claims 2-4 and 13-15 based on
essentially the same arguments previously presented for independent claims
1 and 12, as discussed above regarding the first-stated rejection. (App. Br.
17). However, we did not find these arguments persuasive. Therefore, for
the same reasons discussed above, we sustain the third and fourth-stated
rejections of claims 2-4 and 13-15.

Fifth-Stated Rejection
Appellant urges the patentability of claims 2 and 13 based on
essentially the same arguments previously presented for claims 1 and 12
discussed above regarding the second-stated rejection. (App. Br. 17).
However, we did not find these arguments persuasive. Therefore, for the
same reasons discussed above, we sustain the Examiner’s fifth-stated
rejection of claims 2 and 13.

Sixth- stated Rejection
Claims 1-5, 7, 12-16 and 18 were provisionally rejected under the
judicially created doctrine of obviousness-type double patenting as being
unpatentable over claims 4-5, 7, 9-10, and 17-18 of co-pending application
10/222,346 in view of Blanding.
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An inspection of PTO records reveals that Application No.
10/222,346 issued as U.S. Patent No. 7,823,148 on Oct. 26, 2010.
Therefore, the Examiner’s obviousness-type double-patenting rejection of
claims 1-5, 7, 12-16, and 18 is no longer provisional. Appellant avers that
he “traverse[s] this rejection for at least the reason that the Examiner[’s]
reliance on Blanding is misplaced as shown above in regard to the prior art
rejections.” (App. Br. 19, first paragraph).
However, we find Appellant’s arguments unpersuasive of error
regarding the Examiner’s reliance on Blanding for the same reasons
previously discussed above. Accordingly, we sustain the obviousness-type
double patenting rejection of claims 1-5, 7, 12-16, and 18.

Seventh-stated Rejection
Claims 6 and 17 were provisionally rejected under the judicially
created doctrine of obviousness-type double patenting as being unpatentable
over claim 9 of co-pending application 10/222,346 in view of Blanding and
Smith. Since Application No. 10/222,346 has issued as U.S. Patent No.
7,823,148, the Examiner’s obviousness-type double-patenting rejection of
claims 6 and 17 is no longer provisional.
Appellant avers that he “traverse[s] this rejection for at least the
reason that the Examiner[’s] reliance on Blanding and Smith is misplaced as
shown above in regard to the prior art rejections.” (App. Br. 19).
However, we find Appellant’s arguments unpersuasive of error
regarding the Examiner’s reliance on Blanding and Smith for the same
reasons previously discussed above. Accordingly, we sustain the
obviousness-type double patenting rejection of claims 6 and 17.
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DECISION
We affirm the § 103 rejections of claims 1-7 and 12-18.
We affirm the obviousness-type double patenting rejections of claims
1-7 and 12-18.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
ORDER
AFFIRMED

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