Ex Parte Norman et al

Board of Patent Appeals and Interferences

Feb 13, 2012

10287125 (B.P.A.I. Feb. 13, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ANDREW PATRICK NORMAN, JOHN MELVIN BRAWN,
JOHN P. SCRIMSHER, and JONATHAN GRIFFIN
____________

Appeal 2009-013185
Application 10/287,125
Technology Center 2400
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Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
GREGORY J. GONSALVES, Administrative Patent Judges.

GONSALVES, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-013185
Application 10/287,125

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-2, 4-23, and 25-29. (App. Br. 2.) Claims 3 and 24 were cancelled.
(Id.) We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
The Invention
Exemplary claim 1 follows:
1. A method of identifying a software vulnerability on a computer
system having software stored thereon, the computer system being
connected to a management system over a computer network, the method
comprising:
selecting one or more computer systems to be scanned for a software
vulnerability;
applying an interrogation program to the software, the interrogation
program being capable of exploiting a known software vulnerability if it is
present in the software to which the interrogation program is applied;
in the event that a software vulnerability is exploited by the
interrogation program, operating the interrogation program to generate a set
of management information from which can be derived the identification of
the computer system having the software vulnerability; and
sending the management information to the management system,
wherein the interrogation program is further arranged to remediate the
known software vulnerability in response to it being identified.
Appeal 2009-013185
Application 10/287,125

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Exemplary claim 19 follows:
19. A computer program stored on a computer usable medium, the
computer program comprising computer-readable instructions arranged to
operate under the control of a processing means so as to identify a software
vulnerability on a computer system, the computer program performing the
steps of:
selecting one or more computer systems to be scanned for a software
vulnerability;
applying an interrogation program to software stored on the computer
system, the interrogation program begin capable of exploiting a known
software vulnerability if it is present in the software to which the
interrogation program is applied; and
in the event that the software vulnerability is exploited by the
interrogation program, operating the interrogation program to generate a set
of management information from which can be derived at least the
identification of the computer system on which the software vulnerability
was exploited, the computer program being capable of sending the generated
management information over a computer network, wherein the
interrogation program is further arranged to remediate the known software
vulnerability in response to it being identified.
The Rejection
The Examiner rejected claims 1, 2, 4-23, and 25-29 under 35 U.S.C.
§ 102(b) as being anticipated by Gaul (U.S. 2001/0034847 A1). (Ans. 3-24.)

Appeal 2009-013185
Application 10/287,125

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ISSUES
Appellants’ responses to the Examiner’s positions present the
following issues:
1. Did the Examiner establish that Gaul discloses a computer program
having an interrogation program that “remediates the known software
vulnerability in response to it being identified,” as recited in independent
claim 19 and as similarly recited in independent claims 20, 26, and 27?
2. Did the Examiner establish that Gaul discloses a method of
identifying a software vulnerability comprising the steps recited in claim 1,
and similarly recited in claims 4 and 18?

ANALYSIS
Issue 1 – The Anticipation Rejection of Claims 19-29
The Examiner reasons that Gaul discloses an interrogation program
that remediates a software vulnerability, as required by independent claims
19, 20, 26, and 27, because it mentions corrective actions and verification of
the corrective actions. (Ans. 15.) As explained by Appellants, however, the
“corrective action [in Gaul] is not disclosed to be performed … by an
interrogation program. Rather, Gaul discloses that an informed decision
may be made by a user in response to receiving the report.” (App. Br. 9-10,
citing Gaul, ¶¶ 0074 and 0116.)
Thus, we do not sustain the Examiner’s anticipation rejection of
independent claims 19, 20, 26, and 27 as well as the claims that depend
therefrom (i.e., claims 21-25 and 28-29).

Appeal 2009-013185
Application 10/287,125

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Issue 2 – The Anticipation Rejection of Claims 1-18
Appellants similarly argue that claim 1 is not anticipated because the
“corrective action is not disclosed [in Gaul] to be performed … by an
interrogation program.” (App. Br. 10.) Unlike claims 19-29, however,
claims 1-18 are method claims. Thus, claims 1-18 merely require corrective
action to be performed along with other steps. And according to Appellants’
understanding of Gaul, corrective action is performed by a user. (App. Br.
9-10.) In other words, Appellants may not distinguish their method claims
from Gaul on the basis that Gaul does not disclose a component of an
apparatus (e.g., an interrogation program) that is mentioned in the claims.
Thus, we sustain the Examiner’s rejection of claims 1-18.

DECISION
We affirm the Examiner’s decision rejecting claims 1-18 and reverse
the Examiner’s decision rejecting claims 19-29.
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

ELD