Ex Parte Godwin

Board of Patent Appeals and Interferences

Sep 20, 2010

10246969 (B.P.A.I. Sep. 20, 2010)

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.
10/246,969 09/19/2002 Debbie Ann Godwin AUS920020403US1 2212
45993 7590 09/21/2010
IBM CORPORATION (RHF)
C/O ROBERT H. FRANTZ
P. O. BOX 23324
OKLAHOMA CITY, OK 73123
EXAMINER
SHAW, YIN CHEN
ART UNIT PAPER NUMBER
2439
MAIL DATE DELIVERY MODE
09/21/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte DEBBIE ANN GODWIN
________________

Appeal 2010-003941
Application 10/246,969
Technology Center 2400
________________

Before JAMES D. THOMAS, HOWARD B. BLANKENSHIP and
STEPHEN C. SIU, Administrative Patent Judges.

J. THOMAS, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-003941
Application 10/246,969

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 through 27. We have jurisdiction under 35 U.S.C. §
6(b).
We affirm.

Invention
A tool for checking storage management system security settings
which accesses one or more security parameters, compares them to security
policies, rules, and allowable values, and reports noncompliant settings via a
user-readable report. (Abstract, para. 69, lines 1-3; Figs. 3, 4).

Representative Claim
1. A method in a storage management system comprising:
accessing one or more security parameters of said storage
management system;
evaluating said security parameters against a set of security policies,
rules and allowable parameter values; and
indicating in a user-readable report which security parameters fail
to meet said security policies, rules and allowable parameter values.

Prior Art and Examiner’s Rejections
The Examiner relies upon the following references as evidence of
anticipation and unpatentability:

Kaneda 2003/0004981 A1 Jan. 2, 2003
(filed Aug. 30, 2001)

Appeal 2009-003941
Application 10/246,969

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Proctor 6,530,024 B1 Mar. 4, 2003
(filed Nov. 20, 1998)

Lineman 2003/0065942 A1 Apr. 3, 2003
(filed Sept. 28, 2001)

Leong 6,557, 039 B1 Apr. 29, 2003
(filed Nov. 12, 1999)

Claims 1-3, 5-7, 10-12, 14-16, 19-21, and 23-25 stand rejected under
35 U.S.C. § 102(e) as being anticipated by Proctor. All remaining claims
stand rejected under 35 U.S.C. § 103. Proctor is being utilized by the
Examiner along with Lineman to reject dependent claims 4, 13, and 22.
Claims 8, 17, and 26 are rejected over Proctor and Kaneda. Lastly, claims 9,
18, and 27 stand rejected by the Examiner using Proctor and Leong.

Claim Groupings
Within the first stated rejection under 35 U.S.C. § 102, we and
Appellants consider independent claim 1 as representative of the subject
matter of independent claims 1, 10, and 19. No dependent claim is argued
within any rejection before us.

PROSECUTION HISTORY
The above-noted panel issued a remand to the Examiner on August
20, 2008 in appeal 2008-1030. Subsequently, Appellant sought
reinstatement of the appeal through a request for reinstatement filed on
September 21, 2008. A decision on this request was granted on April 1,
2009, that led to the present appeal.

Appeal 2009-003941
Application 10/246,969

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ANALYSIS
We refer to, rely on, and adopt the Examiner’s findings and
conclusions set forth in the Answer. Our discussions here will be limited to
the following points of emphasis.
Proctor’s Abstract indicates that his invention relates to the ability to
define security procedures which can include one or more policies as well as
the detection of security incidents.
The summary of invention at column 2 identifies plural different
definable policies which are developed within topic heading 4 at the bottom
of column 5 of this reference. With respect to the showing in Figure 2, the
definition of security procedures in element 204 is followed in turn by data
analysis section 216 and a security occurrence decision block 220. As
discussed at column 6, lines 53-65, the data analysis step 216 performs an
analysis function as well as a determination function whether any security
breaches have been attempted or have occurred. This indicates to a person
of ordinary skill in the art that an evaluation or compliance or compare
functionality has occurred.
An exemplary showing of audit policy and what comprises it is
illustrated in Figure 3 to which subsequent Figures 4-8 detail the ability of
an administrator/user to establish/change various security parameters or
security settings as needed. These are discussed briefly at the beginning of
column 7 with respect to these figures in conjunction with at least the
detection policy and security policy in the discussions bridging columns 9
and 10.
As relied upon by the Examiner in part, Figure 9 shows various
policies within the corporate environment illustrated in a brief discussion of
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the security assessment capability 922/924 which may be found at column
11, lines 39-53. This portion again indicates an analysis is conducted in this
assessment capability to again determine whether an actual or attempted or
potential security breach has occurred that, likewise, is consistent with the
evaluating functionality of representative independent claim 1 on appeal.
Column 14 begins a discussion of exemplary Figures 13 and 14 which are
said to be exemplary system implementations of Proctor’s invention. We
likewise note, as before, the discussion at column 14, lines 31-45 that a
detection engine 1342 in Figure 13 “evaluates” (in a manner consistent with
the use of that term in independent claim 1 on appeal) collectively events
with respect to the various policies to determine whether a security breach
has occurred. Comparable teachings occur with respect to the detection
mechanism 1434 in Figure 14 that again “evaluates” events to determine
whether a security occurrence or incident has occurred as briefly indicated at
column 16, lines 19-21.
With this background in mind, Appellant’s arguments that the
evaluating clause of representative independent claim 1 on appeal has not
been met within 35 U.S.C. §102 are not persuasive of patentability. We
consider Appellant’s remarks beginning at page 4 of the principal brief on
appeal as essentially inviting us to read disclosed but unclaimed limitations
into representative claim 1 on appeal, wherein an essentially similar
approach is followed in Reply Brief.
Contrary to what is indicated in the middle of page 5 of the principal
brief on appeal, security parameters are what have been claimed in
representative independent claim 1 and not security settings.
Notwithstanding this, the showings within Figures 3-8 indicate that security
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settings/parameters are adjustable within the context of the audit policy
teachings in Proctor. It is worthy of note here that the policy updates
capability 928 in Figure 9 illustrates that adjustable policy parameters are
also within the significant teachings of Proctor. This capability of
updating/adjusting is best depicted in Proctor’s Figure 12 as to various
policies. The comparative figure of Proctor’s Figure 9 alongside a depiction
of aspects of Appellant’s disclosed invention at page 7 of the principal Brief
on appeal invites us to improperly compare this portion of the Appellant’s
disclosed invention with a limited view of the teachings of Proctor.
Representative independent claim 1 also does not recite any ability to
automatically change the thresholds in any detection policy, contrary to the
position at the top of page 8 of the principal brief on appeal.
By the use of such broad terms as reflected in representative
independent claim 1 on appeal that are argued before us, the claims do not
exclude the noted teachings of Proctor that clearly apply to the disputed
recitations.
CONCLUSIONS and DECISION
Appellant has not shown that the Examiner erred in finding that
Proctor anticipates the subject matter of representative independent claim 1
on appeal. Therefore, we affirm the Examiner’s rejections under 35 U.S.C.
§§ 102 and 103 of various claims on appeal.

Appeal 2009-003941
Application 10/246,969

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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

Erc

IBM CORPORATION (RHF)
C/O ROBERT H. FRANTZ
P. O. BOX 23324
OKLAHOMA CITY, OK 73123