Ex Parte Williamson et al

Patent Trial and Appeal BoardSep 24, 2012

11033182 (P.T.A.B. Sep. 24, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MATTHEW MURRAY WILLIAMSON, ANDREW PATRICK NORMAN, and JONATHAN GRIFFIN ____________ Appeal 2010-005609 Application 11/033,182 Technology Center 2400 ____________ Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and THU A. DANG, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-005609 Application 11/033,182 2 STATEMENT OF THE CASE The Patent Examiner finally rejected claims 1-14. Appellants appeal therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. INVENTION Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method of administering a network of computing entities comprising the steps of: probing an entity for vulnerabilities and generating a log of the or each vulnerability against the network address of the entity; in response to a query from the entity, retrieving from the log, vulnerabilities of the entity; and receiving from the entity, data identifying its associated user. (Disputed limitation emphasized). REJECTIONS 1. Claims 1-11 and 14 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Banzhof (U .S. Patent Application Publication No. 2003/0126472 A1). 2. Claims 12 and 13 stand been rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Banzhof in view of Selgas (U.S. Patent Application Publication No. 2002/0029275 A1). Appeal 2010-005609 Application 11/033,182 3 GROUPING OF CLAIMS Based on Appellants’ arguments, we will decide the appeal of the anticipation rejection of claims on the basis of claims 1, 8, and 14. See 37 C.F.R. § 41.37(c)(1)(vii). Contentions Appellants contend that “claim 1 is allowable for at least the reason that Banzhof does not teach or suggest at least ‘receiving from the entity, data identifying its associated user.’” (App. Br. 5). In particular, Appellants contend: Banzhof does not disclose that a user of a computing entity having vulnerabilities is identified. Rather, Banzhof discloses that a computer is identified and then routinely scheduled for remediation by a server without user involvement. Para. 0031. Whereas, the present application allows for an administrator to contact a user of the computing entity to negotiate a proper time for installing a patch for the computing entity. (App. Br. 7-8; see also arguments advanced regarding the similar limitations of claims 8 and 14, App. Br. 7-10). The Examiner disagrees: Banzhof explicitly discloses that a remediation profile is generated for each target computer (i.e. each associated user). Furthermore, the remediation profile is then sent to a security administrator to review which target computers should receive remediation (i.e. sent to a network administrator). This process is done for each target computer. Banzhof explicitly discloses each entity has its own remediation profile which would identify the associated user (i.e. each target computer). The prior art discloses each client computer which represents to the entity. The prior art discloses a remediation profile for each target computer which Appeal 2010-005609 Application 11/033,182 4 corresponds to the data identifying its associated user. Furthermore, the prior art discloses a remediation profile is generated for every target computer which corresponds to every associated user. (Ans. 6). Issues: Under § 102, did the Examiner err in finding that the cited Banzhof reference discloses “receiving from the entity, data identifying its associated user,” within the meaning of independent claim 1 (emphasis added), and the similar limitations of independent claims 8 and 14 (“in response to the log indicating the entity has a vulnerability, sending data identifying a user of the entity to an administrator of the network”)? (emphasis added). ANALYSIS At the outset, we address Appellants’ arguments only to the extent that such arguments are directed to claimed subject matter. In reviewing the record, we observe that, for each of independent claims 1, 8, and 14, Appellants essentially repeat the same central argument: Banzhof does not disclose that a user of a computing entity having vulnerabilities is identified. Rather, Banzhof discloses that a computer is identified and then routinely scheduled for remediation by a server without user involvement. Para. 0031. (App. Br. 5, 7, regarding claims 1 and 8 respectively). Banzhof does not disclose that a user of a computing entity having vulnerabilities is identified. Rather, Banzhof discloses that a computer is identified and then scheduled for remediation. (App. Br. 10, regarding claim 14). Appeal 2010-005609 Application 11/033,182 5 In the anticipation rejection of independent claims 1, 8, and 14, the Examiner relies, inter alia, on Banzhof’s paragraph 0031 as evidence in support of the rejection. (Ans. 3). In reviewing the text of paragraph 0031, we observe that Banzhof expressly discloses: “For instance, the remediation can be scheduled to occur at the instance of a particular event, such as a user logging off the machine, logging in, or any other action.” (emphasis added). See also Ans. 7, ¶ 1. Claim 1 Thus, with respect to the disputed limitation of claim 1, we agree with the Examiner (Ans. 7, ¶ 1) that Banzhof discloses “receiving from the entity [i.e., client machine], data identifying its associated user” (emphasis added), within the meaning of independent claim 1, this occurring necessarily when a particular user logs on or logs off the machine. (Id.). We further conclude that the disputed claim 1 step of “receiving from the entity, data identifying its associated user” (emphasis added) need not occur “in response to a query from the entity” (second step of claim 1), as our reviewing court guides that “[u]nless the steps of a method actually recite an order, the steps are not ordinarily construed to require one.” Altiris Inc. v. Symantec Corp., 318 F.3d 1363, 1369 (Fed. Cir. 2003) (citations omitted). Because “applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted). Even if arguendo claim 1 is more narrowly construed as requiring the recited sequence or order of steps 2 and 3, we observe that Appellants have not advanced any substantive arguments regarding the second step of claim Appeal 2010-005609 Application 11/033,182 6 1: “in response to a query from the entity, retrieving from the log, vulnerabilities of the entity; and . . . .” “The failure to raise all issues and arguments diligently, in a timely fashion, has consequences.” Ex parte Borden, 93 USPQ2d 1473, 1475 (BPAI 2010) (informative decision); see also Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir 2008) (arguments not made are waived). For these reasons, we are not persuaded of Examiner error regarding representative claim 1. Therefore, we sustain the anticipation rejection of claim 1. Claims 2-7 (not argued separately) fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii). Claims 8 and 14 In contrast to the broader language of claim 1, independent claims 8 and 14 more narrowly recite “in response to the log indicating the entity has a vulnerability, sending data identifying a user of the entity to an administrator of the network.” (Emphasis added). Regarding claims 8 and 14, we agree with the Appellants that the portions of Banzhof relied on by Examiner do not expressly or inherently show the claimed chain of causation: (1) "in response to the log indicating the entity has a vulnerability, [(2)] sending data identifying a user of the entity to an administrator of the network.” (emphasis added). As discussed above, we find Banzhof instead discloses “receiving from the entity [i.e., client machine], data identifying its associated user,” (claim 1), in response to when a particular user logs on or logs off the machine. (Para. [0031], emphasis added). Therefore, we reverse the Examiner’s anticipation rejection of claims 8 and 14 and all claims that depend thereon. Appeal 2010-005609 Application 11/033,182 7 Regarding the obviousness rejection of dependent claims 12 and 13, we do not find, nor has the Examiner established, that the secondary Selgas reference cures the noted deficiencies of Banzhof. DECISION We affirm the Examiner's rejection of claims 1-7 under § 102(e). We reverse the Examiner's rejection of claims 8-11, and 14 under § 102(e). We reverse the Examiner's rejection of claims 12 and 13 under § 103(a). No time for taking any action connected with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART peb