Ex Parte Kelley et al

Board of Patent Appeals and Interferences

Jul 12, 2006

09964029 (B.P.A.I. Jul. 12, 2006)

The opinion in support of the decision being entered today was not w
for publication and is
ritten
not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARCEY L. KELLEY, LAURI A. DOBBS,
TONY BARTOLETTI, and SCOTT D. ELKO
____________

Appeal No. 2006-1707
Application No. 09/964,0291
____________

ON BRIEF
____________

Before HAIRSTON, SAADAT, and HOMERE, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s final rejection of claim 6. Claims 1-5 and 7-17 have
been canceled.
We affirm.
BACKGROUND

1 Application for patent filed September 26, 2001, which claims the
filing priority benefit under 35 U.S.C. § 119 of the Provisional Application
No. 60/236,413, filed September 28, 2000.
Appellants’ invention is directed to a computer-implemented
system for secure patch software distribution of software from
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vendors to client’s systems. The invention may include a system
that determines which patches should be or should have been
applied to a system as well as a system for backing out
undesirable patches from the client’s system. The system may
also provide for collecting patches from vendors, interpreting
the client’s operating system type, and the amount of memory
needed to install the patch (specification, paragraph 0022). An
understanding of the invention can be derived from a reading of
the independent claim 6, which is reproduced as follows:
6. A computer-implemented method of secure distribution of
vendor’s upgrades and vendor’s software patch or vendor’s
software to client’s system; wherein the method utilizes
such thing as vendors, vendor’s ftp sites, system software,
files, permissions referenced in the files, ownership of
files referenced in the vendors’ software patch, needed
vendor’s software patches, not needed vendor’s software
patches, directories, operating system type, operating
system version, operating system architecture, memory, disk
space, other layered products, other patches, and other
software upgrades; comprising the steps of:

determining which of the vendor’s software patches
should be applied to the client’s system,

collecting the vendor’s software patches from the
vendors by downloading them from the vendor’s ftp sites,

interpreting which of the files will be affected by
installation of the vendor’s software patches,

interpreting which of the directories will be affected
by th installation of the vendor’s software patches,

interpreting the operating system type, version and
architecture the vendor’s software patches apply to,
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interpreting dependencies on the other layered
products,

determining which of the vendor’s upgrades and the
vendor’s software patches have been applied to the client’s
systems,

determining which of the vendor’s upgrades and the
vendor’s software patches should be or should have been
applied to the clients system,

collection of the vendor’s software patches and the
vendor’s upgrades from the vendors and downloading the
vendor’s software patches and the vendor’s upgrades to the
client system,

interpreting the operating system type,

interpreting the operating system version,

interpreting the operating system architecture the
vendor’s software patch applies to,

determining how much of the memory is needed to install
the vendor’s software patch and the vendor’s upgrades,

interpreting how much of the memory and of the disk
space is needed to install the vendor’s upgrades and
installing the vendor’s software patches,

determining how dependencies on the other layered
products affect the installation of the vendor’s software
patches and the vendor’s upgrades,

determining how dependencies on the other patches, or
the other software upgrades affect the installation of the
software patch,

determining how dependencies of the other software
upgrades affect the installation of the vendor’s software
patch,

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determining which of the files will be affected by the
installation of the vendor’s software patch,

determining which of the directories will be affected
by the installation of the vendor’s software patch,

backing-out the vendor’s software patches that have
been applied to the client’s system,

checking the permissions and the ownership of the files
referenced in the vendors’ software patch and ensuring that
system software is authentic,

determining which of the vendor’s software patches
should be installed by determining the needed vendor’s
software patches and the not needed vendor’s software
patches,

distributing the needed vendor’s software patches to
the client’s system, and

installing the needed vendor’s software patches.

The Examiner relies on the following reference:
T. Bartoletti et al. (Bartoletti), “Secure Software
Distribution System,” National Information Systems Security
Conference, Baltimore, MD, October 67, 1997, printed February
1997 by Lawrence Livermore National Laboratory.

Claim 6 stands rejected under 35 U.S.C. § 102(b) as
anticipated by Bartoletti.
Rather than reiterate the opposing arguments, reference is made to the briefs
and answer for the respective positions of Appellants and the Examiner.
OPINION
Initially, Appellants argue that Bartoletti does not anticipate claim 6
as it is a non-enabling reference and merely represents a
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preliminary report by Appellants (brief, page 8). Additionally,
Appellants point out that the reference is much shorter than the
instant application and does not include specific elements of
claim 6 or their combination (id.) and therefore, does not place
the public in possession of the claimed invention (brief, page
12). The Examiner responds by stating that Appellants, among
other skilled artisans, were able to make the present invention
based on the applied prior art (answer, page 12).
Noting that Appellants also authored the applied reference,
We agree with the Examiner that the reference is indeed enabling.
With respect to the Examiner’s reasoning that Bartoletti is
enabling since Appellants were able to make the instant invention
based on the prior art disclosure, we agree with Appellants to
the extent that the authors of Bartoletti are the inventors of
the instant invention. However, the shorter length of Bartoletti
notwithstanding, the applied reference is more than a preliminary
report in that it includes sufficient information about the
functionality of the software such that lack of specific codes or
the process details does not render the disclosure non-enabling.
Additionally, the extra details in the instant specification
that Appellants argue to be missing in the applied reference
(reply brief, pages 2-3), are also absent in the claimed
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invention. In fact, the disputed features are broad enough such
that, to the extent claimed, the reference is sufficiently
enabling and places the disclosed matter in the possession of the
public. See Akzo N.V. v. United States Int’l Trade Comm’n, 808
F. 2d 1471, 1479, 1 USPQ2d 1241 , 1245 ( Fed. Cir. 1986).
Turning now to the 35 U.S.C. § 102 rejection of claim 6, we note that
a rejection for anticipation requires that the four corners of a
single prior art document describe every element of the claimed
invention, either expressly or inherently, such that a person of
ordinary skill in the art could practice the invention without
undue experimentation. See Atlas Powder Co. v. Ireco Inc., 190
F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999); In re
Paulsen, 30 F.3d 1475, 1478-79, 31 USPQ2d 1671, 1673 (Fed. Cir.
1994). The inquiry as to whether a reference anticipates a claim
must focus on what subject matter is encompassed by the claim and
what subject matter is described
by the reference. As set forth by the court in Kalman v.
Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed.
Cir. 1983), it is only necessary for the claims to “‘read on’
something disclosed in the prior art reference, i.e., all
limitations of the claim are found in the reference, or ‘fully
met’ by it.” See also Atlas Powder Co. v. IRECO Inc., 190 F.3d
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at 1346, 51 USPQ2d at 1945 (Fed. Cir. 1999) (quoting Titanium
Metals Corp. v. Banner, 778 F.2d 775, 781, 227 USPQ 773, 778
(Fed. Cir. 1985)).
Appellants only argue the last three elements of the twenty-three elements of
claim 6 as missing in the applied prior art (brief, pages 9-12), to which we limit our
review. Our reviewing court stated that “[i]t is not the function
of this court to examine the claims in greater detail than argued
by an appellant, looking for nonobvious distinctions over the
prior art.” In re Baxter Travenol Labs., 952 F.2d 388, 391, 21
USPQ2d 1281, 1285 (Fed. Cir. 1991). Additionally, arguments
which Appellants could have made but chose not to make in the
briefs have not been considered (37 CFR § 41.37(c)(1)(vii)). Therefore, similar
to the court, this board is not under any burden to raise or
consider issues that are not argued by Appellant. Therefore,
only those arguments actually made by Appellants related to the
three claimed elements have been considered in this decision.
Starting first with the element #20 of the claim, we observe that it is identified by
Appellants as the step of:
“[c]hecking the permissions and the ownership of the files references in
the vendors’ software patch and ensuring that the system software is authentic;”
(brief, page 9).

Appellants assert that this step requires two positive separate actions, “checking the
permissions and the ownership of the files” and “ensuring that the system software is
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authentic” (brief, page 10). Appellants further argue that the part related to ensuring the
system software authenticity is absent in Bartoletti (id.). The Examiner responds
by stating that Appellants’ own specification (paragraph 0026)
provides the relevant description for this step as “... SafePatch
checks the permissions and ownership of the files references in
the patch and ensures that the system software is authentic”
(answer, page 6). The Examiner concludes that similar to
Appellants’ disclosed process, Bartoletti checks permissions and
ownership of the files to ensure authenticity (answer, page 7).
We agree with the Examiner’s position that checking
permissions and ownership of the files and ensuring authenticity
of the system software are described by Bartoletti. Although, as
pointed out by the Examiner, Appellants’ specification is not
clear as to how the authenticity of the system software is
ensured, the applied prior art does teach both checking the
permissions and ownership of the files referenced in the patch
and ensuring the authenticity of the system software. In
particular, we agree with the Examiner (answer, pages 8-9) that
Bartoletti discloses assessment and authentication of system
software in relation with installing patches and detecting their
subsequent tampering (page 3, paragraphs 3 and 5). Bartoletti
further describes a patch specification which contains
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permissions and ownership for each file and directory manipulated
by the patch in addition to other information such as operating
system type, version and architecture (page 5). Therefore, even
if this element of claim 6 relates to two different actions, we
find that to the extent disclosed, both actions are described in
the reference.
Appellants further argue that element #21 also includes two
separate actions of “determining which of the vendor’s software
patches should be installed by determining the needed vendor’s
software patches,” ... “and the not needed vendor’s software
patches” (brief, page 10; reply brief, page 5). Appellants assert that
the reference does not teach the portion related to determining the “not needed
vendor’s software patches (brief, page 10). In response, the Examiner points out that it
is inherent that by determining the software patches that are needed, those that are not
needed will also be determined (answer, page 9). Pointing to portions in pages 4, 6,
and 9 of Bartoletti, the Examiner argues that choosing the patches that are not installed
reads on determining the patches that are not needed (answer, page 10).
Although the Examiner’s characterization of the not needed patches, appears to
encompass the not needed as well as the not chosen patches, the system manager is
described as knowing which patches are needed for each system (page 3, paragraph
3). Therefore, once those that are needed are determined, everything else will be in the
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“not needed” group as shown by the description of the system administrator’s decisions
not to install or back out.
Turning now to the step recited in the last element of the claim, Appellants argue
that the relied on portion of Bartoletti does not disclose the step of “distributing the
needed vendor’s software patches to the client’s systems” (brief, page 11). The
Examiner points to various references made to “installing upgrades or patches” and
argues that getting patches from a centralized patch collector (Figure 2) and installing
them on the target system reads on the claimed “distributing the needed vendor’s
software patches to the client’s systems” (answer, pages 11-12).
We agree with the Examiner that determining which new patches are released
and installing them on the client’s system includes distributing the patches before they
can be installed. Furthermore, as pointed out by the Examiner (answer, page 12),
Figure 2 of Bartoletti shows a centralized patch collection service which actually
provides the needed patches to the systems configured to support the evaluation and
installation of the patches (page 7, paragraph 3). These systems would get their
patches from the centralized patch collectors which indicates that such patches are
“distributed” to the client’s systems.
Based on our findings above, we agree with the Examiner that Bartoletti prima
facie anticipates the claimed subject matter in the independent claim 6. Accordingly,
the 35 U.S.C. § 102(b) rejection of claim 6 is sustained.
CONCLUSION
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In view of the foregoing, the decision of the Examiner rejecting claim 6 under
35 U.S.C. § 102 is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a)(1)(iv).

AFFIRMED

Appeal No. 2006-1707
Application No. 09/964,029

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KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MAHSHID D. SAADAT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEAN R. HOMERE )
Administrative Patent Judge )

MDS/gw
Eddie E. Scott
Assistant Laboratory Counsel
Lawrence Livermore National Laboratory
P.O. Box 808, L-703
Livermore, CA 94551