International Business Machines Corporation

Patent Trials and Appeals Board

Jan 21, 2021

2019003876 (P.T.A.B. Jan. 21, 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.
15/204,931 07/07/2016 Luca Di Litta FR920070005US2 3495
35525 7590 01/21/2021
IBM CORP (YA)
C/O YEE & ASSOCIATES PC
P.O. BOX 6669
MCKINNEY, TX 75071
EXAMINER
PEACH, POLINA G
ART UNIT PAPER NUMBER
2165
NOTIFICATION DATE DELIVERY MODE
01/21/2021 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ptonotifs@yeeiplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LUCA DI LITTA, SCOT MACLELLAN, LUIGI PICHETTI,
MARCO SECCHI, and ANTONIO SECOMANDI
Appeal 2019-003876
Application 15/204,931
Technology Center 2100
Before ALLEN R. MacDONALD, BRADLEY W. BAUMESISTER, and
GREGG I. ANDERSON, Administrative Patent Judges.
ANDERSON, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3, 5–10, and 12–22. Claims 4 and 11
were previously cancelled. Preliminary Amendment, dated July 7, 2016.
We have jurisdiction 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). Appellant identifies the real party in interest as International
Business Machines Corporation. Appeal Brief (“Appeal Br.”) 2.
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CLAIMED SUBJECT MATTER
The Specification describes a method and system for detecting
software products on a distributed data processing system. Spec.2 1:5–13. A
management system monitors each application interface to, for example,
check application status and start and stop executions for each application.
Id. at 2:6–10. A system management server acts as a central repository
where inventory data of the system collected and managed as is useful in
distributing fixes or enhancements in a software development system. Id. at
6:11–19.
File systems are scanned to detect a “set of files indicative of a
product being installed on a data processing system.” Spec. 4:20–23. The
set of files includes at least one “manifest file containing information on at
least one referenced software product.” Spec. 4:23–25. The manifest file
has information for a product signature and product identifier associated
with the referenced product. Id. at 4:25–28. “The System Management
Application will detect the Manifest file at Runtime on the systems where
the Managed Application is installed and extract the information[,] which
are included in the Manifest file.” Id. at 8:27–30.

2 We use “Spec.” to refer to the Specification filed July 7, 2016; “Final Act.”
to refer to the Final Office Action mailed February 11, 2018; “Ans.” to refer
to the Examiner’s Answer filed April 5, 2019; and “Reply Br.” to refer to
Appellant’s Reply Brief filed April 17, 2019.

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Figure 4 of the Specification is reproduced below.

Figure 4 is a flow chart of the described method.
Spec. 5:17–19.
As shown in Figure 4, the method of the invention starts at circle 401
and data is gathered at block 403. Id. at 11:25–27. At step 405, “Manifest
files are detected during normal operations by means of existing discovery
procedures, e.g. well known Operating System registry keys pointing to an
existing Manifest file or file system scan looking for predetermined Manifest
file name matching criteria.” Id. at 1:27–31. “At step 407 it is checked
whether the referenced software product is already known to the system.”
Id. at 12:6–8. “If the software product is already listed, no further action is
needed and the control goes back to step 403.” 12:10–12. “If the result of
the check of step 407 is negative, the method takes advantage of the
information contained in the Manifest file” and the Knowledge Base
(“K.B.”) is updated. Id. at 12:15–23, Fig. 4.
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Application 15/204,931
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Claims 1, 9, and 10 are independent and claim respectively a method,
a “computer program product,” and a system. Method claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A method of populating a software catalogue with software
product identifiers corresponding to software products
being discovered on a plurality of data processing systems
by a system management application, the method
including the steps of:

scanning, by the system management application, the file
systems of the plurality of data processing systems to
detect the occurrence of a set of files indicative of a
software product being installed on a data processing
system, the set of files including at least one manifest file
containing management interface information on at least
one referenced software product usable by the system
management application to control operation of the at least
one referenced software product;

determining, by the system management application, a
product signature associated to the at least one referenced
software product using the information of the manifest
file;

storing, by the system management application, the product
signature and an associated software product identifier of
the referenced product on the software catalogue; and

controlling, by the system management application, the at
least one reference software product using the
management interface information.
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REFERENCES
The Examiner relies on the following references:
Name3 Reference Date
Keller US 2007/0169079 A1 July 19, 2007
Minami US 7,548,938 B2 June 16, 2009
Stampfli US 7,934,210 B1 Apr. 26, 2011

REJECTIONS4
Claims 1–3, 6–10, 12–13, 15–18, and 20–22 are rejected under
35 U.S.C. 103 as being unpatentable over Stampfli and Keller. Final Act. 6–
15.
Claims 5, 14, and 19 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Stampfli and Minami. Id. at 12.
Claims 1, 9, and 10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Keller and Stampfli. Id. at 13–15.
STANDARD OF REVIEW
The Board conducts a limited de novo review of the appealed
rejections for error based upon the issues identified by Appellant and in light
of the arguments and evidence produced thereon. Ex parte Frye, 94
USPQ2d 1072, 1075 (BPAI 2010) (precedential). Arguments not made are
waived. See id.; 37 C.F.R. § 41.37(c)(1)(iv).

3 All reference citations are to the first named inventor only.
4 The rejection of claims 1–3, 5–10, and 12–22 under 35 U.S.C. § 101 was
withdrawn. Ans. 3; see also Final Act. 2–6 (initial rejection).
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ANALYSIS
I. Does Stampfli teach “management interface information” as recited in
independent claims 1, 9, and 10?

We have reviewed the Examiner’s rejections of claims 1–3, 6–10, 12–
13, 15–18, and 20–22 under 35 U.S.C. § 103 over Stampfli and Keller in
light of Appellant’s arguments the Examiner has erred. Final Act. 6–12;
Appeal Br. 15–27. Appellant separately argues the rejected claims by
groups. See, e.g., Appeal Br. 16 (arguing claims 1, 6–10, 13, 15, 16, 18, 20,
and 21). Because we agree with Appellant that Stampfli does not teach “a
manifest file containing management interface information on at least one
referenced software product usable by the system management application to
control operation of the at least one referenced software product,” we need
only analyze that term as it appears in independent claims 1, 9, and 10 and
need not Appellant’s grouping. As previously noted, unless otherwise
stated, we reference claim 1 as illustrative.
The Examiner’s Evidence and Contentions
The “management interface information” recitation appears in the
“scanning” limitation of claim 1 set forth above. The Examiner finds
Stampfli teaches the scanning limitation, including the recited “manifest
file” which contains a “management interface.” Final Act. 6–7 (citing
Stampfli, 4:45–49, 4:47–50, 5:9–14 (Stampfli’s “interface manager stores
the update period into update schedule storage”)). The Examiner further
finds “information on at least one referenced software product usable by the
system management application.” Id. at 7 (citing Stampfli, 4:47–56, 5:19–
24). The Examiner cites specifically to Stampfli’s teaching that the manifest
for a program is used “to identify whether an update period has been
specified for the program.” Id. (quoting Stampfli, 5:19–24).
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The Examiner finds the recited “system management application to
control operation” of the referenced software product in the “master update
controller.” Final Act. 7 (citing Stampfli 5:38). The Examiner cites to the
“master update controller” as producing “the next update time for the
program.” Id. (citing Stampfli 5:38, 5:2–3).
Appellant’s Contentions
Quoting the language of claim 1, Appellant argues that “management
interface information” must be contained in the “manifest file” of the “set of
files” that are “detected” by the “system management application” and be
“usable by this same ‘system management application’ to control operation
of the (at least one) referenced software product.” Appeal Br. 16. Appellant
first argues the Examiner’s citations to Stampfli do not teach “a manifest file
containing management interface information.” Id. at 16–19 (citing
Stampfli, 4:47–56, 5:2–3, 5:9–14, 5:19–24, 5:38, 7:59–60).
Appellant contends the Examiner’s reliance on column 4, lines 47
through 56 of Stampfli’s description of a “program update identifier” as
scanning the manifests in manifest storage” does not explain what is
contained in manifest storage. Appeal Br. 18 (citing Stampfli, 4:47–56).
Appellant notes similar deficiencies in the remainder of the Examiner’s cited
Stampfli disclosures. Id. (citing Stampfli, 5:2–3 (“a next update time for the
program”), 5:19–14 (describing an update period in the context of “a user
interface manager”), 5:19–24 (“identify whether an update period has been
specified for the program”)), id. at 19 (citing Stampfli, 5:38 (describing
“master update controller”), 7:59–67 (describing operations of the master
controller)).
Appellant next argues that the Examiner relies on two different
components of Stampfli to meet the “controlling” part of the scanning
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limitation. Appeal Br. 19–20 (citing Final Act. 6–7 (citing Stampfli’s
(“program update identifier” and “master update controller”)). Specifically
as to the “master controller,” Appellant points out that Stampfli does not use
information in the manifest file, including “management interface
information,” to control a reference software product, as claimed. Appeal
Br. 19. Rather, Stampfli “describes a master update controller that
determines whether it is time to check for updated files.” Id. (citing
Stampfli, 7:59–67).
Analysis
We determine that the Examiner did not meet the burden of making a
prima facie showing of obviousness in the Final Action. The claim language
relating to “interface information” is that it is “on at least one referenced
software product usable by the system management application to control
operation of the at least one referenced software product.” Appeal Br. 16;
see also id. at 5 (claim 9) (citing Spec., 4:20–25, 8; 8:2–11, 19–26; 9:3–10:7,
10:27–31, 11:23–12:6; Fig. 3 (element 105)). The “information” in Stampfli
cited by the Examiner relates to an “update schedule storage” and an “update
period.” See Final Act. 7. The claim recites “management interface
information,” and not update information. The Examiner has not shown that
update information is “management interface information.”
Further, the recited information is used to “control operation of the at
least one referenced software product.” We agree with Appellant’s
argument that Stampfli “describes a master update controller that determines
whether it is time to check for updated files” and does not “control operation
of the at least one referenced software product.” Appeal Br. 19 (citing
Stampfli, 7:59–67).
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We also agree with Appellant that claim 1 requires the “scanning
step/action” and the claimed “controlling step/action” to control a reference
software are both performed by the “management interface information” of
the “system management application.” Appeal Br. 19–20. In other words,
claim 1 recites that “scanning” is performed by “the system management
application,” a single application.
In finding Stampfli teaches the entirety of the scanning limitation the
Examiner cites to “two different components that are used to perform its
alleged scanning and controlling operations.” See Appeal Br. 20. The
Examiner cites Stampfli's “program update identifier” as performing the
actual scanning operation. Id. (citing Final Act. 6–7). For the “control
operation” the Examiner cites Stampfli’s “master update controller” that
determines whether it is time to check for an update to an environment file
when it receives an indication that there are more programs to update.” Id.
(citing Final Act. 6–7 (citing Stampfli, 7:59–67). The Examiner does not
point to one structure that performs the scanning operation, which is
required by the claim. Neither does the Examiner explain how or why a
person of ordinary skill would have combined Stampfli’s “program update
identifier” and “master update controller” to teach the scanning limitation.
At page 4 of the Answer, the Examiner cites multiple passages in
Stampfli that were not included in the original findings of obviousness. The
Answer further describes Stampfli’s updates as being “interface information
. . . control[ing] operation of the at least one referenced software product.”
Ans. 4–5 (citing Stampfli, 5:19–21, 6:15–20, 7:24–36, 10:45–60); see also
Reply Br. 4 (arguing generally that the Answer includes reasons not set forth
in the Final Action).
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Because the Examiner made the new citation in the Examiner’s
Answer and did not provide a response to Appellant’s arguments in the
Reply Brief, we are left with no response/clarification from the Examiner.
Therefore, Appellant has shown error in the underlying factual findings by
the Examiner used in the conclusion of obviousness of illustrative
independent claim 1. See Ex parte Frye, 94 USPQ2d at 1075.
Regardless, Appellant’s unrebutted arguments are persuasive. The
new citations to Stampfli, beginning at column 8 line 33, relate to “Update
of Environmental Instruction Files” and not to “Update of Program Files.”
Compare Stampfli, 4:36 with Stampfli, 8:33; see also Reply Br. 5. We agree
with Appellant that how the “environment” is updated is not the same as
how a particular “program” is updated. Reply Br. 5. Stampfli describes the
environment as “‘instruction files’ containing instructions or other
information describing the operation of the environment, and another set of
files, referred to as ‘program files’ that are part of a system to interpret those
instructions.” Stampfli, 8:34–39 (emphasis added). The claim recites “a
referenced software product,” and not an environment.
For the above reasons we do not sustain the Examiner’s rejections of
independent claims 1, 9, and 10 over Stampfli and Keller. Dependent
claims 2–3, 6–8, 12–13, 15–18, and 20–22 all depend directly or indirectly
from claims 1, 9, or 10, so the rejections to those claims are likewise not
sustained.
II. Rejection of claims 5, 14, and 19 over the combination of
Stampfli, Keller, and Minami.

Claims 5, 14, and 19 depend respectively from independent claims 1,
9, and 10 respectively. Because we find the rejections to the independent
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claims are not sustained, we likewise do not sustain the rejections to claims
5, 14, and 19.
III. Rejection of claims 1, 9, and 10 over the combination of Keller and
Stampfli.

The Examiner alternatively relies on Keller to find that illustrative
claim 1 would have been obvious by teaching “management interface
information.” Final Act. 13–15. The Examiner cites several paragraphs
from Keller. Id. at 29–30 (citing Keller ¶¶ 2 (“management systems use a
master catalog or manifest”), 3 (“There is a need for tools and techniques for
efficient management and control of software updates.”), 11 (describing
Figure 4 as “an example of a main user interface for an update management
tool.”), 21 (“checking to see whether the software to which the update
relates is installed on the computer . . . checking for signs … indicating
whether the update has been applied”), 23 (“update management system . . .
control the scanning of client computers for updates in the catalog, and
possibly apply any identified updates where they are needed”), 28 (“indicia
of whether the software product or program to be updated is actually
installed or present on the target computer”), 34 (Examiner finds it would
have been obvious to include information about application updates from
Keller’s catalog, which is equated to the recited “manifest file.”).
Appellant disputes that any of the citations to Keller show “at least
one manifest file containing management interface information on at least
one referenced software product.” Appeal Br. 31, see also id. at 29–31
(making specific arguments about the cited Keller paragraphs). Appellant’s
arguments emphasize that Keller does not teach the recited “manifest file
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containing management interface information on at least one referenced
software product.” Id. at 31.
Appellant’s argument about paragraph 23 illustrates its position.
In paragraph [0023], Keller describes a summary of the update
management system. This cited passage does not describe
characteristics of a “manifest file”, and therefore this cited
passage does not describe “the set of files including at least one
manifest file containing management interface information on at
least one referenced software product” (emphasis added), as
claimed.

Id. at 31.
Appellant restates its argument, as follows:
This distinction can also be seen when viewed from a different
point of view, in that the cited passage at Keller paragraph [0011]
that is alleged to teach the claimed “management interface
information” usage (with such usage being the controlling of a
reference software product), this cited passage describes a “main
user interface”, which is not contained in a manifest file, as is the
claimed “management interface information”). (per Claim 1:
“the set of files including at least one manifest file containing
management interface information on at least one referenced
software product” and “controlling, by the system management
application, the at least one reference software product using the
management interface information”).

Id. at 31–32.
Appellant does not specifically address cited paragraph 34 of Keller.
However, for the reasons discussed in connection with Stampfli, we are not
persuaded that updates to a catalog, i.e., the recited manifest, is
“management interface information” or that such information is used to
“control the operation of the at least one referenced software product.” See
Final Act. 14, Note.
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We are not persuaded that Keller has been shown to teach the disputed
limitation. We agree with Appellant’s arguments detailed above.
We also are not persuaded the Examiner has shown the control step.
We are persuaded by Appellant’s arguments that that step is not taught.
While Keller does allude to an alternative embodiment where the
client can be scanned remotely (Keller paragraph [0022]), such
remote scan is not described as being performed by a same
“system management application” that also controls a “reference
software product” running on a client computer. Instead, one
piece of software runs on the server (scanning) and another piece
of software runs on a client (controlling) - thus, this alternative
embodiment also does not describe that the same “system
management application” is used to both (i) scan files systems to
detect files indicative of a software product, and (ii) control the
“reference software product”.

Appeal Br. 29.
For the above reasons we do not sustain the Examiner’s rejection of
claims 1, 9, and 10 over Keller and Stampfli.
CONCLUSION
The Examiner’s decision rejecting claims is reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 6–10,
12–13, 15–
18, 20–22
103 Stampfli, Keller 1–3, 6–10,
12–13, 15–
18, 20–22
5, 14, 19 103 Stampfli, Minami 5, 14, 19
1, 9, 10 103 Keller, Stampfli 1, 9, 10
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Overall
Outcome
1–3, 5–10,
12–22

REVERSED