International Business Machines Corporation

Patent Trials and Appeals Board

Apr 28, 2021

2019007005 (P.T.A.B. Apr. 28, 2021)

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.
15/284,684 10/04/2016 Jagoda Kuzma DE920160096US1 1022
45725 7590 04/28/2021
Walder Intellectual Property Law PC
445 Crestover Circle
Richardson, TX 75080
EXAMINER
GEMIGNANI, ANTHONY G
ART UNIT PAPER NUMBER
2154
MAIL DATE DELIVERY MODE
04/28/2021 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAGODA KUZMA, BARTLOMIEJ T. MALECKI,
PIOTR PADKOWSKI, MAREK PESZT, and PIOTR J. WALCZAK
____________

Appeal 2019-007005
Application 15/284,684
Technology Center 2100
____________

Before ST. JOHN COURTENAY III, LARRY J. HUME, and
PHILLIP A. BENNETT, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final rejection of
claims 1–20. We have jurisdiction over the pending claims under 35 U.S.C.
§ 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a) (2018). According to Appellant, the real party in interest
is International Business Machines Corp. See Appeal Br. 2.

Appeal 2019-007005
Application 15/284,684

2
STATEMENT OF THE CASE2
Introduction
Appellant’s claimed invention relates generally to “adding software
signatures to a software catalog, and more specifically to mechanisms for
distributing software signatures using a community maintained section of a
software catalog based on Blockchain technology.” (Spec. ¶ 1).

Independent Claim 1
1. A method for adding software signatures to a software
catalog, wherein the software catalog comprises a vendor-
maintained software catalog section, a user-maintained software
catalog section, and a community-maintained software catalog
section, the method comprising:

receiving, by a first software asset management tool on a
first computing system, a new software signature that has been
added to a community-maintained software catalog section of a
second computing system from a second software assessment
management tool on the second computing system via a
Blockchain transaction;

scanning, by the first software management tool, the first
computing system for a software component installed on the
first computing system for which no software signature exists
and that relates to the new software signature; and

responsive to identifying the software component
installed on the first computing system for which no software
signature exists and that relates to the new software signature,

2 We herein refer to the Final Office Action, mailed January 3, 2019 (“Final
Act.”); Appeal Brief, filed May 29, 2019 (“Appeal Br.”); the Examiner’s
Answer, mailed July 29, 2019 (“Ans.”), and the Reply Brief, filed Sept. 27,
2019 (“Reply Br.”).
Appeal 2019-007005
Application 15/284,684

3
adding, by the first software management tool, the new
software signature to the community-maintained software
catalog section of the first computing system via the Blockchain
transaction, wherein an acceptance of the new software
signature into the community-maintained software catalog
section of the first computing system is based on sending, by
the first software management tool, a Blockchain proof-of-work
message to the second software assessment management tool
on the second computing system.

Appeal Br. 25, Claims App., dispositive disputed limitation emphasized.
Evidence
The prior art relied upon by the Examiner as evidence:
Name Reference Date
Milazzo et al. US 2017/0279818 A1 Sept. 28, 2017
Toll et al. US 2018/0006831 A1 Jan. 4, 2018
Surcouf et al. US 2018/0032383 A1 Feb. 1, 2018
El-Moussa et al. US 2018/0173568 A1 June 21, 2018

Table of Rejections
Claims
Rejected
35 U.S.C. § Reference(s)/Basis
1, 3, 4, 6–12,
14, 16–20
103 Milazzo et al. (“Milazzo”),
Toll et al. (“Toll”)
2, 13 103 Milazzo, Toll,
El-Moussa et al. (“El-Moussa”)

5, 15 103 Milazzo, Toll, Surcouf et al. (“Surcouf”)
Appeal 2019-007005
Application 15/284,684

4
Issue on Appeal
Did the Examiner err in rejecting claims 1–20 under 35 U.S.C. § 103,
as being obvious over the combined teachings and suggestions of the cited
references?
ANALYSIS
Rejection of Claims 1–20 under 35 U.S.C. § 103
Issue: Under 35 U.S.C. § 103, we focus our analysis on the following
argued claim limitations that we find are dispositive regarding the rejection
of independent claims 1, 12, and 20:
Did the Examiner err by finding that Milazzo and Toll collectively
teach or suggest the disputed, dispositive negative limitation:
A method for adding software signatures to a software
catalog, the method comprising: . . .
scanning, by the first software management tool, the first
computing system for a software component installed on the
first computing system for which no software signature exists
and that relates to the new software signature,
within the meaning of independent claim 1? (emphasis added regarding
disputed limitations).
Appellant traverses the Examiner’s reliance (Final Act. 8) on
Milazzo’s description at paragraph 18, as found to teach or suggest:
“scanning . . . the first computing system for a software component installed
on the first computing system for which no software signature exists and
that relates to the new software signature.” Claim 1 (emphases added).
In particular, Appellant contends that paragraph 18 of Milazzo
describes that the computing system analyzes the first virus signature to
determine an effectiveness of the first virus signature in detecting one or
Appeal 2019-007005
Application 15/284,684

5
more viruses. Appellant points out that although Milazzo’s software
signature is used to identify a code associated with a virus, the present
invention is identifying a software component installed on the first
computing system for which no software signature exists, and that relates to
the new software signature. See Appeal Br. 10. Appellant urges there is no
teaching in the combination of cited references of “scanning, by the first
software management tool, the first computing system for a software
component installed on the first computing system for which no software
signature exists and that relates to the new software signature.” (emphasis
original). Id.

The Examiner disagrees with Appellant, and further explains the basis
for the rejection of the “software signature” negative claim limitation:
Milazzo at paragraph [0003] discloses adding the software
signature to a community ledger once a threshold number of
signatory authorities validate it [i.e., validate it based on
detecting a previously unidentified virus using the signature].
Ans. 6.
Claim Construction3
As an initial matter of claim construction, we turn to the Specification
for context regarding the disputed negative limitation: “scanning, . . . the
first computing system for a software component installed on the first
computing system for which no software signature exists and that relates to
the new software signature.” Claim 1 (emphasis added). See e.g., Spec. ¶

3 We give the contested claim limitation the broadest reasonable
interpretation (“BRI”) consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
Appeal 2019-007005
Application 15/284,684

6
35: “This means that a software signature may be generated for a software
component for which no matching software signature may be found in the
entire software catalog available to the software asset management tool.”
We find Appellant’s cited support in the Specification (Appeal Br. 2,
referring to the written description at paragraphs 35–36), sufficiently
identifies “a reason to exclude the relevant negative limitation.” Santarus,
Inc. v. Par Pharmaceutical, Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012)
(“Negative claim limitations are adequately supported when the
specification describes a reason to exclude the relevant limitation. Such
written description support need not rise to the level of disclaimer. In fact, it
is possible for the patentee to support both the inclusion and exclusion of the
same material.”). See also MPEP § 2173.05(i) (“Any negative limitation or
exclusionary proviso must have basis in the original disclosure . . . . The
mere absence of a positive recitation is not basis for an exclusion.”).
As noted above, the Examiner finds that Milazzo, at paragraph 18,
discloses the disputed limitation. See Final Act. 8. Turning to the evidence,
Milazzo describes, in pertinent part:
The method can include accessing, by a computing system of a
first signature authority, data that identifies a plurality of virus
signatures. At least some virus signatures among the plurality
of virus signatures can be submitted for distribution by different
signature authorities. The computing system can identify, from
the data, a first virus signature that a second signature authority
has submitted for distribution.
Milazzo ¶ 18 (emphasis added).
Regarding the claim 1 negative limitation of scanning the “first
computer system for a software component installed on the first computing
system for which no software signature exists,” we note that Milazzo, at
Appeal 2019-007005
Application 15/284,684

7
paragraph 18, actually teaches identifying a plurality of signatures, and not a
computer environment in which no software signature exists that relates to
the new software signature. (emphasis added). We have also reviewed the
additional paragraphs of Milazzo (3, 49, 51, 55), as cited by the Examiner on
page 6 of the Answer. On this record, the Examiner has not established that
Toll overcomes the aforementioned deficiency of Milazzo.
Accordingly, based upon our review of the record, we find a
preponderance of the evidence supports Appellant’s contention that Milazzo
and Toll collectively fail to teach or suggest the disputed, dispositive
negative limitation: “scanning, by the first software management tool, the
first computing system for a software component installed on the first
computing system for which no software signature exists and that relates to
the new software signature.” Claim 1 (emphases added).
Therefore, we are constrained on this record to reverse the Examiner’s
obviousness rejection of independent claim 1 over the cited combination of
Milazzo and Toll. Because remaining independent claims 12 and 20 recite
the disputed negative limitation of claim 1 using similar language of
commensurate scope, we also reverse the Examiner’s rejection of
independent claims 12 and 20.
Because we have reversed the rejection of each independent claim on
appeal, we also reverse the Examiner’s obviousness rejections of each
associated dependent claim. On this record, the Examiner has not
established that the additional El-Moussa reference (second-stated rejection),
or the additional Surcouf reference (third-stated rejection) overcomes the
aforementioned deficiency of the base combination of Milazzo and Toll, as
relied upon in the first-stated rejection.
Appeal 2019-007005
Application 15/284,684

8
Accordingly, we reverse the Examiner’s obviousness rejections of all
claims 1–20 on appeal.
CONCLUSION
The Examiner erred in rejecting claims 1–20, as being obvious under
35 U.S.C. § 103, over the cited combinations of references.

DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3, 4,
6–12, 14,
16–20
103 Milazzo and Toll 1, 3, 4,
6–12, 14,
16–20
2, 13 103 Milazzo, Toll, El-
Moussa
2, 13
5, 15 103 Milazzo, Toll,
Surcouf
5, 15
Overall
Outcome
1–20

REVERSED