Ex Parte Singh et al

Patent Trial and Appeal Board

Aug 27, 2014

10611264 (P.T.A.B. Aug. 27, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte NAVJOT SINGH and
TIMOTHY KOHCHIH TSAI
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Appeal 2014-000720
Application 10/611,264
Technology Center 2400
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Before MAHSHID D. SAADAT, ERIC S. FRAHM, and
JOHNNY A. KUMAR, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) (2002) from a final
rejection of claims 1, 7–11, and 21–34, which are all the pending claims in
this application.1 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 A previous Decision (Appeal 2010-002956, mailed May 14, 2012)
affirmed the Examiner’s rejection of all the pending appealed claims.
Appeal 2014-000720
Application 10/611,264

2
STATEMENT OF THE CASE
Introduction
According to Appellants, the invention relates to techniques for
handling security vulnerability alerts (Spec. ¶ 1).
Claim 1 is illustrative of the invention and reads as follows:
1. A method comprising:
receiving a security vulnerability alert about a software
application; and
consulting a software installation manager to determine
whether the software application having a security vulnerability
is resident on a device.

The Examiner’s Rejections
The Examiner rejected claims 1, 7–11, 21–28, and 30–34 under
35 U.S.C. § 103(a) as being unpatentable over Cox (US 6,842,861 B1, Jan.
11, 2005) and Moshir (US 2004/0003266 A1, Jan. 1, 2004). Final Action 3–
4.
The Examiner rejected claim 29 under 35 U.S.C. § 103(a) as being
unpatentable over Cox, Moshir, and Edery (US 7,058,822 B2, June 6, 2006).
Final Action 4.
Appellants’ Contentions
1. Appellants contend the Examiner erred in rejecting claim 1
because the combination of Cox and Moshir fails to teach or suggest the
claimed step of “consulting a software installation manager to determine
whether the software application having a security vulnerability is resident
on a device” (Br. 9–10). Appellants also contend, “Moshir’s principles of
operation would be undermined by distributing patches with known security
vulnerabilities” (id. at 10). Appellants further contend, “Cox cannot disclose
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Application 10/611,264

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‘receiving a security vulnerability alert’ as recited in claim 1, because Cox
pertains to searching for a virus infection that has already occurred, rather
than (in the present application) searching for a vulnerability (i.e., a
susceptibility), which inherently applies to a future infection” (id. at 13).
2. Appellants argue the patentability of independent claims 21 and
27 based on the same arguments presented for claim 1 (id.).
3. With respect to the remaining claims, Appellants argue that
those claims are patentable because of their dependency from the
independent claims discussed above (id.).

Issue on Appeal
Did the Examiner err in rejecting claim 1 as being obvious because
the references fail to teach or suggest “consulting a software installation
manager to determine whether the software application having a security
vulnerability is resident on a device” recited in claim 1?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusion.
The Examiner has provided a comprehensive response, supported by
sufficient evidence based on the teachings of Cox and Moshir, to each of the
above-noted contentions raised by Appellants. We adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken and (2) the reasons set forth by the Examiner in the
Examiner’s Answer in response to Appellants’ Appeal Brief (see Ans. 2–4).
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Application 10/611,264

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We concur with the conclusion reached by the Examiner. We observe that
no Reply Brief is of record to rebut such findings including the Examiner’s
responses to Appellants’ arguments.
We specifically agree with the Examiner that
Moshir teaches in [0112] a specific example of a vulnerability
patch fix, and [0149], [0150], [0151] state that Moshir
“distributes critical patches that resolve known security
vulnerabilities” and “provide notification of critical updates to
computers in a proactive manner”. Moshir also teaches that it
must be determined if the software needing said patch is on the
device [0023] [0104] [0105].
Ans. 2.
As to Appellants’ contentions that Cox does not disclose a “future
infection” (Br. 13), Appellants’ claims do not recite this limitation. As
pointed out by the Examiner, claim 1 “does not identify a patch to resolve
the security vulnerability. Claim 1 states no action after receiving said alert,
and determining that the software in question is still resident on the device.”
Ans. 3. Thus, Appellants’ arguments are not commensurate in scope with
the claim language.
Thus, the cited portions of Cox and Moshir teach or suggest
“consulting a software installation manager to determine whether the
software application having a security vulnerability is resident on a device,”
as recited in claim 1.

Appeal 2014-000720
Application 10/611,264

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DECISION
The Examiner’s decision rejecting claims 1, 7–11, and 21–34 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)(1)(iv).

AFFIRMED

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