Ex Parte Green et al

Patent Trial and Appeal Board

Feb 18, 2015

12201326 (P.T.A.B. Feb. 18, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MITCH GREEN and KEVIN LYNCH
____________________

Appeal 2012-010248
Application 12/201,326
Technology Center 2600
____________________

Before MICHAEL J. STRAUSS, MATTHEW R. CLEMENTS, and
JOHN F. HORVATH, Administrative Patent Judges.

HORVATH, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants seek review of the Examiner’s rejection of claims 1, 3, 4,
6–11, 13, 14, 16–24, 26, 27, 29, 30, and 32–39 under 35 U.S.C. § 134(a).
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

SUMMARY OF THE INVENTION
The invention is directed to identifying reputation and trust
information for software in a computing system. Spec. ¶ 1.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A computer-implemented method comprising:
receiving, at a computer and from a service, status
information corresponding to a software application, the status
information comprising rating information and installation
information, the installation information corresponding to a
number of prior installations, a number of attempted
installations, a number of re-installations, and a number of
updates of the software application;
updating a local cache, retained by the computer, with the
status information received from the service;
generating an identifier for a software application;
using the identifier for the software application to
identify status information; and
presenting a notification when the status information is
identified.

REFERENCES
Brooks
Fors
US 2007/0088741 A1
US 2008/0028390 A1
Apr. 19, 2007
Jan. 31, 2008
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Hulten US 2010/0005291 A1 Jan. 7, 2010

Missing uninstall/isu file. Any advice?, CYBER TECH HELP SUPPORT FORUMS,
CYBERTECHHELP (Apr. 2, 2007), available at http://www.cybertechhelp.com/
forums/showthread.php?p=830888. (hereinafter “CyberTechHelp”).

BF2 won’t patch on Vista, TACTICAL GAMER (July 21, 2007), available at
http://www.tacticalgamer.com/pr-bf2-technical-support-faqs195656-
battlefield-2-wont-patch. (hereinafter “Tactical Gamer”).
1

REJECTIONS
Claims 1, 3, 6, 7, 9–11, 13, 16, 17, 19–24, 26, 29, 30, 32, 33, and 36–
39 stand rejected under 35 U.S.C § 103(a) as unpatentable over Hulten,
Tactical Gamer, and CyberTechHelp. Ans. 5–16.
Claims 4, 14, 27, 34, and 35 stand rejected under 35 U.S.C § 103(a) as
unpatentable over Hulten, Tactical Gamer, CyberTechHelp, and Brooks.
Ans. 16–17.
Claims 8 and 18 stand rejected under 35 U.S.C § 103(a) as
unpatentable over Hulten, Tactical Gamer, CyberTechHelp, and Fors. Ans.
18.
ISSUES AND ANALYSIS
I. Whether the status information recited in claim 1 differs from
Hulten’s status information in a non-obvious way.

Hulten discloses “an application reputation service to assist users with
minimizing their computerized machines’ exposure to and infection from
malware.” Abstract. A user wishing to install an application can query the

1
The Examiner cites the publication of Tactical Gamer as July 21, 2001,
Ans. 4, however the date on the document itself is July 21, 2007.
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service with an application identifier, and the reputation service “returns an
indication (e.g., an overall rating, or a flag) of how safe that application
would be to install and run on the user’s computer.” Id.
The Examiner finds Hulten “teaches the invention substantially as
claimed,” including the steps of receiving status information corresponding
to a software application, updating a local cache with the received status
information, generating a software application identifier, using the identifier
to identify status information, and presenting a notification when the status
information is identified. Ans. 5–6. Appellants do not dispute these
findings. App. Br. 6–10. Rather, Appellants dispute the Examiner’s
findings that Tactical Gamer and CyberTechHelp teach or suggest receiving
status information in the form of installation information (e.g., the number of
application installations or re-installations). Id. Specifically, Appellants
contend the Examiner erred by failing to demonstrate how Tactical Gamer or
CyberTechHelp “teaches or suggests the claimed installation information.”
Id. at 7–8. Appellants further contend the Examiner erred because the
information returned in Hulten is limited to an application’s reputation,
whereas “[t]he status information as claimed . . . includes additional
information, such as rating information and installation information.” Id. at
9. Appellants’ contentions amount to arguing claim 1 is patentable over
Hulten because claim 1 recites receiving status information that includes
rating information and installation information, whereas Hulten teaches
receiving only rating information. We are not persuaded by Appellants’
argument.
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Our reviewing Court has held that “printed matter” (i.e., nonfunctional
descriptive material) recited in a claim cannot lend patentability to an
invention that would have otherwise been unpatentable over the prior art.
In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004). The printed matter
doctrine is used to prevent “the indefinite patenting of known products by
the simple inclusion of novel, yet functionally unrelated limitations.” Id.
And, though our reviewing Court’s “printed matter” line of cases has
historically concerned claims where nonfunctional printed matter (e.g.,
instructions and the like) was added to known products, the Court has found
“no principled reason for limiting their reasoning to that specific factual
context.” King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed.
Cir. 2010).
Thus, the Board has found claims directed to searching a database
storing particular amino acid sequences unpatentable over prior art that
taught searching a database storing different amino acid sequences. Ex parte
Nehls, 88 USPQ2d 1883, 1889 (BPAI 2008) (precedential) (“[T]he nature of
the information being manipulated does not lend patentability to an
otherwise unpatentable computer-implemented product or process.”).
Likewise, the Board found claims directed to displaying a scoreboard over
the broadcasted image of a sporting event unpatentable over prior art that
taught displaying a scoreboard over the broadcasted image of an interview of
contestants in the sporting event. Ex parte Mathias, 84 USPQ2d 1276
(BPAI 2005) (informative), aff’d, 191 Fed. Appx. 959 (Fed. Cir. 2006) (Rule
36). The Board has also found claims directed to providing user access to
wellness-related databases over the Internet unpatentable over prior art that
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taught providing user access to networked databases storing different
information. Ex parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005)
(informative), aff’d, No. 06-1003 (Fed. Cir. June 12, 2006) (Rule 36).
As noted supra, Appellants contend claim 1 is patentable over the
prior art cited by the Examiner because claim 1 recites receiving particular
status information, namely, installation information. But claim 1 does not
recite any use for the installation information received, or indicate how the
installation information is related to or used in conjunction with any of the
other limitations recited in claim 1. For example, claim 1 does not require
using the installation information to determine whether to install or inhibit
installation of an application (e.g., by reciting installing the application when
the ratio of the number of attempted installs to the number of installs is less
than a threshold). Instead, claim 1 recites performing conventional data
operations that are functionally independent of the nature of the received
status information, e.g., caching and identifying the status information.
Therefore, the nature of the received status information recited in claim 1 is
non-functional descriptive material, and cannot lend patentability to an
invention that is otherwise unpatentable over the prior art. See, Ngai, 367
F.3d at 1339. To find otherwise would be to countenance what our
reviewing Court has found objectionable, namely, “the indefinite patenting
of known products by the simple inclusion of novel, yet functionally
unrelated limitations.” Ngai, 367 F.3d at 1339.
It has been repeatedly held that an applicant cannot create a novel
product by attaching printed matter (i.e., non-functional descriptive material)
to it, even if that printed matter itself is new. See, e.g., Ngai. Thus, adding
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instructions to a kit that describe a method of using it does not make the kit
patentable over the same kit with a different set of instructions. However, an
applicant can create a novel product by adding descriptive material that has a
functional relationship with an underlying product substrate. For example,
in In re Miller, printed matter added to the outside of a cup permitted an
otherwise ordinary cup to be used like a measuring cup to half recipes. The
printed matter thus served as a computing or mathematical recipe conversion
device, permitting a cook to perform calculations automatically with no
further thought.
We find the claim before us to be more like the claim in Ngai than
Miller. The fact that the received status information is rating and installation
information, rather than simply rating information, does not change the
functionality of the prior art method. It merely describes a new, non-
functional element for a method that already exists.
To agree with Appellants’ contention that receiving rating and
installation information distinguishes claim 1 over the prior art, would be to
agree that any claim that recited receiving any novel type of non-functional
“information” would be separately patentable over the prior art. This would
require ignoring our reviewing Court’s concerns with repeated patenting.
See King Pharm., Inc. 616 F.3d at 1279 (“The rationale behind this line of
cases is preventing the indefinite patenting of known products by the simple
inclusion of novel, yet functionally unrelated limitations.”) Cf. Ngai, 367
F.3d at 1339 (“If we were to adopt Ngai’s position, anyone could continue
patenting a product indefinitely provided that they add a new instruction
sheet to the product.”). We decline to do so.
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Consequently, we agree with the Examiner that claim 1 is not
patentable over the prior art, which “teaches the invention substantially as
claimed.” Ans. 5–6. Any argued difference between the prior art and the
claimed invention is simply a substitution of one piece of NFDM (rating
information) with another piece of NFDM (rating information and
installation information), which does not change the performance of the
method. We therefore sustain the Examiner’s rejection of claim 1. See
Ngai, 367 F.3d at 1339,
Appellants do not separately argue for the patentability of claims 3, 6,
7, 10, 11, 13, 16, 17, 20–24, 26, 29, 30, 32, 33, 37, and 39. App. Br. 6–14.
Moreover, although Appellants separately group claims 4, 14, 27, 34, and 35
and claims 8 and 18, Appellants do not make separate arguments for the
patentability of these claims. App. Br. 13–14. Consequently, we sustain the
Examiner’s rejections of claims 3, 4, 6–8, 10, 11, 13, 14, 16–18, 20–24, 26,
27, 29, 30, 32–35, 37, and 39 for the same reasons as claim 1.

II. Whether Hulten generates an identifier corresponding to a
software component as recited in claims 9 and 19.

Claim 9 recites the method of claim 1 “wherein generating the
identifier for the software application comprises generating an identifier
corresponding to a software component of the software application . . . .”
Claims App’x. Claim 19 recites a similar limitation. Id.
The Examiner finds Hulten teaches the recited limitation in
paragraphs 31 and 32. Ans. 14. Appellants contend Hulten’s malicious
software detection/rating system operates at the application level rather than
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the software component level, and therefore only teaches generating
application identifiers. App. Br. 10–12. We find Appellants argument
persuasive.
The Examiner relies upon Hulten’s disclosure of “generating an
identifier corresponding to the software application when the software
application is updated on a computer by installation (i.e., addition of) the
software application” to teach or suggest generating an identifier
corresponding to a software component. Ans. 22–23. But, as Appellants
point out, persons of ordinary skill in the art would understand that updating
an application by adding a software component “occurs after the software
application is already installed and not as part of an original installation
process.” App. Br. 12. Moreover, even if updating an application can be
equated with installing an application, we do not see where Hulten teaches
generating an application identifier corresponding to a component of the
application, as recited in claims 9 and 19. For these reasons, we do not
sustain the Examiner’s rejections of claims 9 and 19.

III. Whether it would have been obvious to modify Hulten to use an
application identifier to identify status information in response
to a request to update the application as recited in claims 36
and 38.

Claim 36 recites the method of claim 1, and limits using the software
application identifier recited in claim 1 “in response to a request to update
the software application.” Claims App’x. Claim 38 recites a similar
limitation. Id.
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As noted above, the Examiner finds Hulten teaches using an
application identifier to identify status information, Ans. 5–6, but does not
specifically teach using the identifier in response to a request to update the
application. Id. at 15. Nonetheless, the Examiner finds it would have been
obvious to a person of ordinary skill in the art at the time of Appellants’
invention to modify Hulten “to include [an] updating operation in their
system because by doing so it would improve the user alertness by providing
a user an idea of what others think about updating the application (e.g., see
Tactical gamer, list of the patches installed).” Id.
Appellants argue that Tactical Gamer teaches a list of patches and
build numbers, and that a list of “version and build numbers of software is
different from the claimed ‘using’ or ‘checking’ the identifier for the
software application to identify status information ‘in response to a request
to update the software application’ as recited in claim 36 and 38.” App. Br.
12–13. Consequently, Appellants argue, “there would not have been a
reason to modify Hulten with the teachings of Tactical Gamer to realize
what is claimed.” Id. at 13.
We are not persuaded by Appellants’ argument. We disagree with
Appellants’ contention that the Examiner finds Tactical Gamer’s build and
version numbers correspond to the using and checking application identifier
limitations. Rather, the Examiner finds Tactical Gamer’s thread discussing a
user’s trouble updating software (Tactical Gamer 1 (“BP2 won’t patch on
Vista”)) would have motivated a person of skill in the art at the time of
Appellants’ invention to modify Hulten to identify status information when
software is updated in order to “provid[e] a user an idea of what others think
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about updating the application.” Ans. 15. We agree with this finding, and
therefore affirm the Examiner’s rejections of claims 36 and 38.

DECISION
For the reasons indicated above, the Examiner’s rejections of claims
1, 3, 4, 6–8, 10, 11, 13, 14, 16–18, 20–24, 26, 27, 29, 30, and 32–39 are
affirmed, and the Examiner’s rejections of claims 9 and 19 are reversed.
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-IN-PART

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