International Business Machines CorporationDownload PDFPatent Trials and Appeals BoardJan 21, 20212019003876 (P.T.A.B. Jan. 21, 2021) Copy Citation 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. Appeal 2019-003876 Application 15/204,931 2 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. Appeal 2019-003876 Application 15/204,931 3 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. Appeal 2019-003876 Application 15/204,931 4 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. Appeal 2019-003876 Application 15/204,931 5 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). Appeal 2019-003876 Application 15/204,931 6 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). Appeal 2019-003876 Application 15/204,931 7 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 Appeal 2019-003876 Application 15/204,931 8 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). Appeal 2019-003876 Application 15/204,931 9 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). Appeal 2019-003876 Application 15/204,931 10 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 Appeal 2019-003876 Application 15/204,931 11 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 Appeal 2019-003876 Application 15/204,931 12 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. Appeal 2019-003876 Application 15/204,931 13 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 Appeal 2019-003876 Application 15/204,931 14 Overall Outcome 1–3, 5–10, 12–22 REVERSED Copy with citationCopy as parenthetical citation