International Business Machines Corporation

Patent Trials and Appeals BoardMar 9, 2021

2019006028 (P.T.A.B. Mar. 9, 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. 15/176,300 06/08/2016 Kenneth J. Owin TUC920160040US1 4189 78650 7590 03/09/2021 Nelson and Nelson 775 High Ridge Drive Alpine, UT 84004 EXAMINER LYONS, ANDREW M ART UNIT PAPER NUMBER 2191 NOTIFICATION DATE DELIVERY MODE 03/09/2021 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): dan@nnpatentlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KENNETH J. OWIN, DAVID C. REED, ESTEBAN RIOS, and MAX D. SMITH Appeal 2019-006028 Application 15/176,300 Technology Center 2100 Before ST. JOHN COURTENAY III, JAMES R. HUGHES, and ERIC S. FRAHM, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Claims 1–20 are pending, stand rejected, are appealed by Appellant, and are the subject of our decision under 35 U.S.C. § 134(a).1 See Final Act. 1–2; Appeal Br. 2.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 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. See Appeal Br. 2. 2 We refer to Appellant’s Specification (“Spec.”), filed June 8, 2016; Appeal Brief (“Appeal Br.”), filed May 3, 2019; and Reply Brief (“Reply Br.”), filed Aug. 8, 2019. We also refer to the Examiner’s Final Office Appeal 2019-006028 Application 15/176,300 2 CLAIMED SUBJECT MATTER The claimed subject matter, according to Appellant, generally “relates to systems and methods for verifying that software modules have a consistent code level.” Spec. ¶ 1. Specifically, Appellant’s claims recite computer program products, systems, and methods “to verify that software modules have a consistent code level” (Spec. ¶ 5) using a code-level table for a software product that includes multiple software modules. The table is maintained on the same computing system as the software product, documents an expected code level for each of the software modules to work together properly, and is updated when the software product is updated. See Spec. ¶¶ 5–6; Abstract. Claim 1 (directed to a method), claim 8 (directed to a computer program product), and claim 15 (directed to a system) are independent. Claim 1, reproduced below with emphasis added, is illustrative of the claimed subject matter: 1. A method for verifying that software modules have a consistent code level, the method comprising: maintaining, for a software product comprising a plurality of software modules, a code-level table on a same computing system as the software product, the code-level table documenting an expected code level for each of the software modules to work together properly; updating the code-level table when the software product is updated; upon calling but prior to executing a software module of the plurality of software modules, comparing an actual code level of the software module with the expected code level indicated in the code-level table; Action (“Final Act.”), mailed Dec. 13, 2018; and Answer (“Ans.”) mailed July 25, 2019. Appeal 2019-006028 Application 15/176,300 3 in the event the actual code level matches the expected code level, allowing execution of the software module; and in the event the actual code level does not match the expected code level, disallowing execution of the software module. Appeal Br. 8 (Claims App.). REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Hiller et al. (“Hiller”) US 2003/0159135 A1 Aug. 21, 2003 Fu et al. (“Fu”) US 2008/0209556 A1 Aug. 28, 2008 Daum et al. (“Daum”) US 2009/0106749 A1 Apr. 23, 2009 Fanton et al. (“Fanton”) US 2011/0029772 A1 Feb. 3, 2011 REJECTIONS3 1. The Examiner rejects claims 1, 2, 8, 9, 15, and 16 under 35 U.S.C. § 103 as being unpatentable over Hiller and Daum. See Final Act. 3–7. 2. The Examiner rejects claims 3–6, 10–13, and 17–20 under 35 U.S.C. § 103 as being unpatentable over Hiller, Daum, and Fanton. See Final Act. 7–9. 3. The Examiner rejects claims 7 and 14 under 35 U.S.C. § 103 as being unpatentable over Hiller, Daum, and Fu. See Final Act. 9–10. 3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125 Stat. 284 (2011), amended 35 U.S.C. § 103. Because the present application has an effective filing date after to the AIA’s effective date (March 16, 2013), this decision refers to 35 U.S.C. § 103. Appeal 2019-006028 Application 15/176,300 4 ANALYSIS Appellant argues independent claims 1, 8, and 15 together as a group and does not separately argue dependent claims 2–7, 9–14, and 16–20. See Appeal Br. 5–7. We select independent claim 1 as representative of Appellant’s arguments with respect to claims 1–20. See 37 C.F.R. § 41.37(c)(1)(iv). Obviousness Rejection of Claims 1, 2, 8, 9, 15, and 16 The Examiner rejects independent claim 1 as being obvious in view of Hiller and Daum. See Final Act. 3–6; Ans. 11–13. Specifically, the Examiner finds Hiller teaches the method of claim 2 except for updating the code-level table—“Hiller does not teach updating a software product and updating a code-level table to document software compatibility after an update,” but Daum teaches this feature. Final Act. 5; see Final Act. 3–6; Ans. 11–13 (citing Daum ¶¶ 26, 27, 43; Figs. 6, 7). Appellant contends Hiller and Daum do not teach the disputed features of claim 1. See Appeal Br. 5–7; Reply Br. 3–5. Specifically, Appellant contends that “[n]owhere does Daum disclose updating a ‘code-level table when [a] software product is updated’ as required by Appellant’s independent claims” (Appeal Br. 6). See Appeal Br. 5–6; Reply Br. 3–5. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken (Final Act. 3–6) and (2) the reasons set forth by the Examiner in the Examiner’s Answer (Ans. 11–13) in response to Appellant’s Appeal Brief. We concur with the findings and conclusions reached by the Examiner, and we provide the following analysis for emphasis. Appeal 2019-006028 Application 15/176,300 5 Appellant’s claim 1 broadly recites a method for “verifying that software modules have a consistent code level” (Appeal Br. 8 (Claim App.) (claim 1)), i.e., verifying that software modules have been properly updated (see Spec. ¶¶ 2–4), by updating a “code-level table” that “document[s] an expected code level for each of the software modules . . . when the software product is updated” (Appeal Br. 8 (Claim App.) (claim 1)). As explained by the Examiner, Daum describes chronicling (i.e., recording) software update changes to a database and determining if the change is compatible with the system. See Final Act. 3–6; Ans. 11–13 (citing Daum ¶¶ 26, 27, 43; Figs. 6, 7). Daum specifically describes documenting software changes to a database—“[w]hen . . . a software change is made, information regarding [the] change may be chronicled. . . . This may be accomplished by communicating information about . . . the software change to . . . a database.” Daum ¶ 26. Daum also specifically describes the database residing in the system. See Daum ¶ 26. Thus, Daum at least suggests updating a database that includes information on software module updates (i.e., code-level) when a software product is updated. As explained by the Examiner, Hiller describes maintaining a code- level table that documents the expected code level for the software modules to work together properly. See Final Act. 3–4; Ans. 11–12 (citing Hiller ¶¶ 15, 43). Hiller specifically describes compatibility vectors that list the programs and allowable version levels with which a module interacts. Hiller ¶¶ 15, 43. Appellant does not contest the Examiner’s findings with respect to Hiller. See Appeal Br. 5–6. The Examiner construes Appellant’s recited “code-level table” to read on Hiller’s compatibility vector(s). See Final Act. 3–4; Ans. 11–12. This Appeal 2019-006028 Application 15/176,300 6 determination is not contested by Appellant. The Examiner merely cites Daum as teaching or suggesting updating the code level table when a software product is updated. We agree with the Examiner that Daum’s description of updating a database when software is updated so that compatibility may be determined (supra), at least suggests updating a code- level table. See Final Act. 5–6; Ans. 11–13. Appellant’s contentions regarding Daum (and Hiller) are unavailing of Examiner error. Appellant merely provides generalized contentions that Daum does not teach the disputed features of claim 1 (supra) and is not equivalent to a code-level table. See Appeal Br. 6; Reply Br. 3–5. Appellant, however, misconstrues the Examiner’s rejection and the cited teachings of Daum in combination with Hiller. The Examiner does not rely solely on Daum for teaching the code-level table. Rather, the Examiner concludes Hiller teaches the code-level table and Daum teaches updating such a table (supra). Appellant interprets both Daum and Hiller too narrowly, and does not address the combination of Hiller and Daum. Appellant fails to appreciate that the combination of Hiller and Daum at least broadly suggests “a code- level table” “documenting an expected code-level for each of the software modules to work together properly” and “updating the code-level table when the software product is updated” (Appeal Br. 8 (Claim App.) (claim 1)). Thus, Appellant does not persuasively rebut the Examiner’s findings with respect to the combination of references and improperly attacks the references individually instead of addressing the combination as a whole. The cited references must be read, not in isolation, but for what each fairly teaches in combination with the prior art as a whole. See In re Merck & Co., Appeal 2019-006028 Application 15/176,300 7 800 F.2d 1091, 1097 (Fed. Cir. 1986) (one cannot show non-obviousness by attacking references individually where the rejections are based on combinations of references). Appellant’s arguments do not take into account what the combination of Hiller and Daum would have suggested to one of ordinary skill in the art— The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted). Thus, Appellant does not persuade us of error in the Examiner’s obviousness rejection of representative claim 1. Independent claims 8 and 15 include commensurate limitations. Dependent claims 2, 9, and 16 depend from and fall with claims 1, 8, and 15, respectively. Therefore, we affirm the Examiner’s obviousness rejection of representative claim 1 and claims 2, 8, 9, 15, and 16 not separately argued with particularity (supra). See 37 C.F.R. § 41.37(c)(1)(iv). Obviousness Rejections of Claims 3–7, 10–14, and 17–20 The Examiner rejects claims 3–6, 10–13, and 17–20 over Hiller, Daum, and Fanton. See Final Act. 7–9. The Examiner also rejects claims 7 and 14 over Hiller, Daum, and Fu. See Final Act. 9–10. Appellant does not separately argue dependent claims 3–7, 10–14, and 17–20. See Appeal Br. 5–7. For the same reasons as claim 1 (and claims 8 and 15) (supra), from which claims 3–7, 10–14, and 17–20 depend, Appellant does not persuade us of error in the Examiner’s obviousness rejections of dependent claims 3–7, 10–14, and 17–20, not separately argued Appeal 2019-006028 Application 15/176,300 8 with particularity. See 37 C.F.R. § 41.37(c)(1)(iv). Therefore, we affirm the Examiner’s obviousness rejection of claims 3–7, 10–14, and 17–20. CONCLUSION Appellant has not shown that the Examiner erred in rejecting claims 1–20 under 35 U.S.C. § 103. We, therefore, sustain the Examiner’s rejections of claims 1–20. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 8, 9, 15, 16 103 Hiller, Daum 1, 2, 8, 9, 15, 16 3–6, 10–13, 17–20 103 Hiller, Daum, Fanton 3–6, 10– 13, 17–20 7, 14 103 Hiller, Daum, Fu 7, 14 Overall Outcome 1–20 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). See 37 C.F.R. § 41.50(f). AFFIRMED