Ex Parte Jha et al

Patent Trial and Appeal Board

Jun 30, 2016

11618712 (P.T.A.B. Jun. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111618,712 12/29/2006 Sanjeev Jha
61543 7590 07/05/2016
HOFFMAN WARNICK LLC
540 Broadway
4th Floor
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
CA1v1920060152US1 6211
EXAMINER
ZHEN,WEIY
ALBANY, NY 12207 ART UNIT PAPER NUMBER
2191
NOTIFICATION DATE DELIVERY MODE
07/05/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
PTOCommunications@hoffmanwarnick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte SANJEEV JHA, MATTHEW P. JARVIS, andDONNYR. ROTA
Appeal2013-005477
Application No. 11/618,7121
Technology Center 2100
Before MARC S. HOFF, BRETT C. MARTIN, and SCOTT B. HOWARD,
Administrative Patent Judges.
HOFF, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 1--4, 6-11, 13, 14, 21, and 22. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
Appellants' invention is a patch management automation tool that
provides a common framework to determine if computers are patched and
automatically applies software patches as required. A server component
collects data, downloads vendor patches, and generates a list of patches that
1 The real party in interest is International Business Machines Corp.
Appeal2013-005477
Application No. 11/618,712
are missing, applied late, or satisfied. The server then sends the client a list
of patches to be installed as needed. The server receives installation status
from the client, reports it to the web, and sends the user email. The client
receives the patch list, downloads and installs patches, and reports status
back to the server. See Abstract.
Claim 1 is exemplary of the claims on appeal:
1. A tool for use in a system having at least one server, at
least one client, and databases including internal databases and
vendor web sites, the databases having vendor patches, the tool
for monitoring and managing patches on clients to determine if
clients are patched and automatically applying patches in
response to determining the patches are required, the tool
compnsmg:
a server component located on the server; and
a client component located on the client and separated
from the server, the server component performing actions
including:
collecting data reported by clients;
collecting patch data from the databases, the patch data
in the form of an XML data file;
downloading vendor patches in response to determining
that the vendor patches are not present at the server;
evaluating compliance from the client;
sending each client a list of patches to be automatically
installed in response to receiving a query from each client for
any automatically installed patches on a daily basis; and
updating at least one of the vendor websites to indicate
the list of patches not yet installed on the client;
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wherein the evaluating of the compliance from the client
includes comparing the patch data in the XML data file with
machine data from the client;
the client component performing actions including:
gathering the machine data and sending the machine data
to the server component;
receiving from the server component the list of patches to
be automatically installed;
downloading and installing the patches listed in the list of
patches; and
sending an installation status to the server,
wherein the server component, in response to the client
component sending the installation status, performs actions
including:
rece1vmg the installation status from the client
component;
reporting the installation status onto at least one of
the vendor websites; and
sending the client an email including the installation
status.
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Fitzgerald US 2002/0049810 Al Apr. 25, 2002
Wittel US 2003/0195951 Al Oct. 16, 2003
Banks US 2005/0144591 Al June 30, 2005
Shahindoust US 2005/0216906 Al Sept. 29, 2005
Kang US 2006/0037013 Al Feb. 16,2006
Patel US 7,007,274 Bl Feb.28,2006
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Appeal2013-005477
Application No. 11/618,712
Cain
Burugapalli
Vincent
Mc Culler
US 2006/0080656 Al
US 2006/0130047 Al
US 2006/0212865 Al
US 2006/0242157 Al
Apr. 13, 2006
June 15, 2006
Sept. 21, 2006
Oct. 26, 2006
Claims 1--4, 6, 8-11, and 13 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Shahindoust, Vincent, Cain, Wittel, Fitzgerald,
McCuller, and Patel.
Claims 7 and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shahindoust, Vincent, Cain, Wittel, Fitzgerald, McCuller,
Patel, and Banks.
Claim 21 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shahindoust, Vincent, Cain, Wittel, Fitzgerald,
Burugapalli, Kang, and Patel.
Claim 22 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shahindoust, Vincent, Cain, Wittel, Fitzgerald, Kang, and
Patel.
Throughout this decision, we make reference to the Appeal Brief
("App. Br.," filed Apr. 3, 2012), the Reply Brief ("Reply Br.," filed Mar. 18,
2013), and the Examiner's Answer ("Ans.," mailed Jan. 17, 2013) for their
respective details.
ISSUES
Appellants argue that Patel fails to disclose the client component
sending installation status to the server, and the server component, in
response, performing actions including receiving the installation status.
App. Br. 11. In Appellants' view, Patel discloses only a web based server,
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provided with a data retriever, for retrieving data from one or more of
[Patel's] workstations. See App. Br. 11; Patel col. 5:10-12.
Appellants further contend that the combination of references,
particularly Shahindoust and Fitzgerald, fails to disclose the server
component performing actions including "downloading vendor patches in
response to determining that the vendor patches are not present at the
server." App. Br. 12. Appellants contend that Fitzgerald's disclosure of
downloading patches to a computer, in response to a determination that the
patches are not present on the computer, does not equate to a server
component downloading patches determined not to be present at the server.
App. Br. 13.
Appellants assert that the Examiner erred in relying on Wittel to
suggest that functions "discussed as being performed on the client side or
server side could be performed on any one or more computing devices,"
because components in other references such as Shahindoust and Fitzgerald
are configured to perform distinct tasks. App. Br. 14.
Appellants argue that it would not have been obvious to combine the
seven references relied upon by the Examiner "because of the discontinuity
between references" and because the references "are not so obviously
connected to be considered analogous art by one skilled in the art." App. Br.
15-16.
Appellants' contentions present us with the following issues:
1. Does Patel disclose the client component sending an installation
status to the server, wherein the server component, in response, performs
actions including receiving the installation status from the client component?
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Application No. 11/618,712
2. Does the combination of references, in particular Shahindoust and
Fitzgerald, disclose or suggest the server component downloading vendor
patches in response to determining that the vendor patches are not present at
the server?
3. Does the combination of references disclose or suggest evaluating
compliance from the client?
4. Does the combination of references employed by the Examiner
constitute analogous art?
PRINCIPLES OF LAW
According to the Federal Circuit:
The analogous-art test requires that the Board show that a
reference is either in the field of the applicant's endeavor or is
reasonably pertinent to the problem with which the inventor was
concerned in order to rely on that reference as a basis for
rejection. References are selected as being reasonably pertinent
to the problem based on the judgment of a person having
ordinary skill in the art.
In re Kahn, 441 F.3d 977, 986-87 (Fed. Cir. 2006).
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Keller,
642 F.2d 413, 425 (CCPA 1981). The test of obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference, nor is it that the claimed invention must
be expressly suggested in any one or all of the references. Rather, the test is
what the combined teachings of the references would have suggested to
those of ordinary skill in the art. Id. at 425.
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ANALYSIS
CLAIMS 1--4, 6, 8-11, AND 13
1. "SENDING INSTALLATION STATUS"
Appellants argue that Patel's "web based server ... provided with a
data retriever ... for retrieving data from one or more of the P ACS
workstations" fails to disclose or suggest a client component that downloads
and installs patches, and subsequently sends installation status information
to a server component. App. Br. 11. We find Appellants' argument to be
unpersuasive.
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Application No. 11/618,712
Figure 2 of Appellants' invention is a depiction of the component
flow diagram. Client machines 204 download and install patches from
server 206, and send installation results (indicated at circle #7 in the Figure)
to the server.
We agree with the Examiner that Patel discloses a client sending
installation status to the server and the server receiving that installation
status. See Ans. 29-30.
Figure 2 of Patel is a block diagram of its picture archiving
communication system. Remote terminal 202 makes available a software
patch for downloading to workstations 210. The remote user instructs web-
based server 206 to install the software on the workstations. Patel col. 4:8-
10, 14--16. "Once the installation is complete, the apparatus 200 may be
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configured such that the web-based server 206 may send a message to the
remote terminal 202, indicating whether the software installation was
successful." Patel col. 4:33-36.
We find that even if Patel does not explicitly disclose a workstation
sending installation status information to server 206, it is inherent in Patel
that a workstation must communicate to server 206 that installation of
software on that workstation was successful, as a precondition to server 206
sending said "success" message to remote terminal 202. Server 206's only
possible source of information regarding whether software installation on a
workstation was successful is the target workstation.
2. "DOWNLOADING VENDOR PATCHES"
We are not persuaded by Appellants' argument that the rejection is
deficient because Shahindoust, individually, does not teach that the server
checks to see if the server already contains the update. See App. Br. 13. An
attack on an individual reference is not persuasive to establish Examiner
error when the rejection is based upon a combination of references. Keller,
642 F.2d at 425. Rather, we agree with the Examiner's finding that the
combination of references, particularly Shahindoust and Fitzgerald, taken
together suggests the claimed invention. The Examiner relies on
Shahindoust for its teaching of downloading vendor patches. Ans. 31;
Shahindoust i-f 7. The Examiner then relies on Fitzgerald for its teaching that
patches are downloaded in response to a determination that the patches are
not present at the server. Ans. 32. Fitzgerald discloses that a "Need" list
may be generated by comparing an "Already Have" list of resources that a
desktop already has with a "Should Have" list of resources that a desktop
should have. Fitzgerald i-fi-125, 26. We are similarly unpersuaded that
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Application No. 11/618,712
Fitzgerald's teaching of "downloading patches directly to a computer" does
not equate to the claimed server component downloading vendor patches.
App. Br. 13. Shahindoust, rather than Fitzgerald, is relied upon for its
disclosure of "a server adapted to receive software updates from a plurality
of sources." Shahindoust i-f 7.
3. "EVALUATING COMPLIANCE"
We are not persuaded by Appellants' arguments concerning Wittel' s
teachings. Even assuming, arguendo, the correctness of Appellants'
contention that it would not have been obvious to reassign functions from a
server to a client, or vice versa (App. Br. 9-10), we find that Wittel's
teachings are cumulative to the teachings of the other references. The
Examiner relies on Wittel for its disclosure of "evaluating compliance from
the client." Ans. 32. In the claims, the client is the entity to which vendor
patches are downloaded and installed. The claims further recite "wherein
the evaluating of the compliance from the client includes comparing the
patch data in the XML data file with machine data from the client." The
Examiner finds, and Appellants do not contest, that Cain discloses such
evaluation by comparing patch data in the XML data file with machine data
from the client. "SMS 2003 clients compare what has been installed ...
against the list of available software updates contained" in the XML data file
"downloaded from the Microsoft Update Web site." Ans. 8; Cain i-f 158. As
such, the teachings of Wittel are merely cumulative to those of Cain, as well
as Shahindoust and Fitzgerald. Appellants' argument concerning the
Examiner's use of Wittel is mooted by the presence of Cain in the rejection.
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4.ANALOGOUSARTARGUMENT
We are not persuaded by Appellants' attempt to argue that the
references used by the Examiner in rejecting the claims are not analogous to
one another. See App. Br. 15-16. The analogous-art test requires that the
Board show that a reference is either in the field of the applicant's endeavor,
or is reasonably pertinent to the problem with which the inventor was
concerned, in order to rely on that reference as a basis for rejection. Kahn,
441 F.3d at 986-87. Appellants' contentions that there is "discontinuity
between references," or that the references are not "obviously connected," is
not germane to this determination. See App. Br. 15-16. The Examiner fully
explains his finding that all of the references involved in the rejection are in
the field of the applicant's endeavor, i.e., software updating. See Ans. 36-
38. We agree with the Examiner, and adopt the Examiner's reasoning as our
own. To the extent that Appellants are arguing that the rejections contain an
excessive number of references, we agree with the Examiner that the number
of references relied upon, without more, does not weigh against the
obviousness of the claimed invention. See In re Gorman, 933 F.2d 982
(Fed. Cir. 1991).
We thus conclude that the Examiner did not err in combining
Shahindoust, Vincent, Cain, Wittel, Fitzgerald, McCuller, and Patel to
achieve the invention recited in claims 1--4, 6, 8-11, and 13. We sustain the
Examiner's§ 103 rejection.
CLAIMS 7 AND 14
Appellants rely on the arguments for patentability made with respect
to claim 1, and argue that Banks fails to remedy the shortcomings of the
other references applied against claim 1. App. Br. 18. Because we conclude
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that the rejection of claim 1 is not erroneous, we sustain the§ 103 rejection
of claims 7 and 14, for the reasons given supra with respect to the § 103
rejection of claim 1.
CLAIM21
Appellants rely on the arguments for patentability made with respect
to claim 1, and argue that Burugapalli and Kang to remedy the shortcomings
of the other references applied against claim 1. App. Br. 18. Because we
conclude that the rejection of claim 1 is not erroneous, we sustain the § 103
rejection of claim 21, for the reasons given supra with respect to the § 103
rejection of claim 1.
CLAIM22
Appellants rely on the arguments for patentability made with respect
to claim 1, and argue that Kang fails to remedy the shortcomings of the other
references applied against claim 1. App. Br. 18. Because we conclude that
the rejection of claim 1 is not erroneous, we sustain the§ 103 rejection of
claim 22, for the reasons given supra with respect to the § 103 rejection of
claim 1.
CONCLUSIONS
1. Patel discloses the client component sending an installation status
to the server, wherein the server component, in response, performs actions
including receiving the installation status from the client component.
2. The combination of references, in particular Shahindoust and
Fitzgerald, suggests the server component downloading vendor patches in
response to determining that the vendor patches are not present at the server.
3. The combination of references discloses evaluating compliance
from the client.
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4. The combination of references employed by the Examiner
constitutes analogous art.
DECISION
The Examiner's rejection of claims 1--4, 6-11, 13, 14, 21, and 22 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)(l )(iv).
AFFIRMED
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