10611264 (B.P.A.I. May. 10, 2012)

Ex Parte Singh et al

Board of Patent Appeals and InterferencesMay 10, 2012

10611264 (B.P.A.I. May. 10, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte NAVJOT SINGH and TIMOTHY KOHCHIH TSAI ____________________ Appeal 2010-002956 Application 10/611,264 Technology Center 2400 ____________________ Before MAHSHID D. SAADAT, ERIC S. FRAHM, and JOHNNY A. KUMAR, Administrative Patent Judges. KUMAR, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-002956 Application 10/611,264 2 Appellants appeal under 35 U.S.C. § 134(a) (2002) from a final rejection of claims 1, 7-11, and 21-34. Claims 2-6 have been cancelled. Claims 12-20 have been withdrawn by Appellants. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Introduction According to Appellants, the invention relates to techniques for handling security vulnerability alerts (Spec. ¶ 0001). Exemplary Claim Claim 1 is exemplary and reproduced below: 1. A method comprising: receiving a security vulnerability alert about a software application; and consulting a software installation manager to determine whether said software application is resident on a device. Prior Art Gemmel US 2004/0250115 A1 Dec. 9, 2004 Moshir US 2004/0003266 A1 Jan. 1, 2004 Edery US 7,058,822 B2 Jun. 6, 2006 Appeal 2010-002956 Application 10/611,264 3 Rejections (1) Claims 1, 7-11, 21-28, and 30-34 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Gemmel and Moshir. (2) Claim 29 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Gemmel, Moshir, and Edery. Appellants’ Contentions With respect to the rejection of claims 1, 7-11, 21-28, and 30-34, Appellants assert their invention in claims 1, 21, and 27 is not obvious over Gemmel and Moshir because Moshir does not disclose consulting a software installation manager in order to determine whether a software application is resident on a device. Br. 12-13. Specifically, Appellants admit that Moshir's system discloses checking whether software is resident on a device, but assert that “it does so by creating and maintaining a new database - namely, inventory library database 918 - to keep track of hardware and software on one or more devices.” Br. 12. Thus, Appellants assert that Moshir does not teach or suggest “an entity that already exists, and more particularly, an entity that is already part of the device's operating system.” Id. (emphasis omitted). Appellants have not separately argued dependent claims 7-11, 22-26, 28, and 30-34 or presented arguments for separate patentability of claim 29, which thus fall with their base claims. Appeal 2010-002956 Application 10/611,264 4 ISSUE Did the Examiner err in finding that Moshir teaches that a software application is resident on a device as provided in independent claim 1 of the appeal?1 ANALYSIS The Examiner has pointed to relevant portions of Moshir (Ans. 3-5) that were not challenged by Appellants except for teaching “consulting a software installation manager in order to determine whether a software application is resident on a device” (Br. 12-13). However, Appellants have not provided an explicit definition of “resident on a device” in their Specification where paragraphs 25, 27, and 30 are identified for providing support for this limitation. See Br. 9. The Examiner has set forth a broad, but reasonable interpretation of “resident on a device” in light of the Specification and found that paragraphs 96, 99 and 104 of Moshir describe the software installation manager as the inventory library 918 which is consulted to confirm the application is on the device. Ans. 6. Our reviewing court states in In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) that “claims must be interpreted as broadly as their terms reasonably allow.” “[T]he words of a claim ‘are generally given their ordinary and customary meaning.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (internal citations omitted). “[T]he ordinary and customary meaning of a claim term is the meaning that the term would have 1 Appellants did not challenge the teachings of Gemmel. Thus, our analysis is focused on the teachings of Moshir. Appeal 2010-002956 Application 10/611,264 5 to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.” Id. at 1313. Appellants have not presented any persuasive evidence to convince us that the Examiner’s interpretation of “resident on a device” is inconsistent with the Specification and is in error. In addition, Appellants’ arguments are simply not commensurate with the scope of the claim because the argued limitations “entity that already exists” or “an entity that is already part of the device’s operating system” do not appear in claim 1. We also find the claim limitation that the “software application is resident on a device” does not specify at what time the software application is resident on the device. We also find that claim 1 does not preclude a later added software application. In other words, if the software application is added later by creating and maintaining a new database, as disclosed in Moshir, it would still meet the claim limitation. CONCLUSIONS We conclude that the Examiner did not err in finding that Moshir teaches that a software application is resident on a device, as recited in independent claim 1. Therefore, we conclude that the Examiner did not err in rejecting independent claims 1, 21 and 27, and claims 7-11, 22-26, and 28-34 falling therewith, for obviousness over the combination of Gemmel and Moshir. DECISION The Examiner’s rejections of claims 1, 7-11, and 21-34 are affirmed. Appeal 2010-002956 Application 10/611,264 6 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) (2010). AFFIRMED msc