Clint H. O'Connor et al.

Patent Trials and Appeals Board

Sep 11, 2019

13483202 - (D) (P.T.A.B. Sep. 11, 2019)

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.
13/483,202 05/30/2012 Clint H. O'Connor DC-19964.01 6610
160816 7590 09/11/2019
Terrile, Cannatti & Chambers, LLP - Dell
P.O. Box 203518
Austin, TX 78720
EXAMINER
QAYYUM, ZESHAN
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
09/11/2019 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):
USPTO@dockettrak.com
tmunoz@tcciplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CLINT H. O’CONNOR and MICHAEL HAZE
____________

Appeal 2017-010665
Application 13/483,202
Technology Center 3600
____________

Before CYNTHIA L. MURPHY, AMEE A. SHAH, and
MATTHEW S. MEYERS, Administrative Patent Judges.

MURPHY, Administrative Patent Judge.

DECISION ON APPEAL1
The Appellants2 appeal from the Examiner’s rejections of claims 1–18
under 35 U.S.C. §§ 101, 103, and 112. We sustain the Examiner’s rejection
under 35 U.S.C. § 101 (Rejection I); we sustain the Examiner’s rejections
under 35 U.S.C. § 103 (Rejections II and III); and we do not sustain the
Examiner’s rejection under 35 U.S.C. § 112 (Rejection IV).
Thus, we AFFIRM.

1 The Appellants appeal under 35 U.S.C. § 6(b); we have jurisdiction over
this appeal under 35 U.S.C. § 6(b).
2 “The real party in interest is the assignee, Dell Products L.P.” (Appeal
Br. 1.)
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BACKGROUND
The Appellants disclose a method “for managing the assignment of
digital goods licenses.” (Spec. ¶ 1.)3 This method involves “digital goods
entitlement data,” such as “license information,” that allows a digital good
(e.g., a software application) to be installed on a target system (e.g., a
personal computer). (Id. ¶ 19.) Thus, “digital goods entitlement data”
provides an “association of a predetermined digital good with a target
system.” (Id.)
According to the Appellants, the processing of “digital goods
entitlement data,” is “simple” when a person “is purchasing a single digital
good for a single system.” (Spec. ¶ 3.) For example, as shown in the table
below, this processing involves a single digital good (softwareA), a single
target system (system SN9872), and the purchase of a single license
(licenseA1).

This table shows an association of softwareA with system SN9872, and
shows that system SN9872 is entitled, via the purchase of licenseA1, to have
softwareA installed thereon.
However, according to the Appellants, the processing of “digital
goods entitlement data,” becomes “cumbersome” if a person is “purchasing
multiple digital goods for multiple systems.” (Spec. ¶ 3.) For example, as
shown in the table below, this processing involves multiple digital goods

3 Our quotations from the Specification omit reference numerals.
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(softwareA, softwareB, softwareC), multiple target systems (system
SN9872, system SN9873, system SN9874), and the purchase of multiple
licenses (licenseA1, licenseA2, licenseB1, licenseB2, licenseC1, license C2).

This table shows an association of softwareA with system SN9872, and
shows that system SN9872 is entitled, via the purchase of licenseA1, to have
softwareA installed thereon; and this table shows an association of
softwareA with system SN9873, and shows that system SN9873 is entitled,
via the purchase of license A2, to have softwareA installed thereon. The
table also shows similar associations/entitlements between system 9872,
softwareC, and licenseC1; system 9873, softwareB, and licenseB1; system
SN9874, softwareB, and licenseB1; and system SN9874, softwareC, and
license C1.
Issues arising from the “purchasing [of] multiple digital goods for
multiple systems” are “typically addressed in corporate environments by
information technology (IT) administrators.” (Spec. ¶¶ 3, 4.) In a corporate
environment, an IT administrator (i.e., a person) “may be responsible for
installing the digital goods and associating their licenses to the right systems
or users, all dependent upon the licensing terms.” (Id. ¶ 4.) However, if the
IT administrator is provided with the above table (i.e., paperwork), the
association of “licenses to the right systems” has already been made, the IT
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administrator would only be responsible for installing the digital goods
according to this paperwork.
ILLUSTRATIVE CLAIM
1. A computer-implementable method for managing
rights to digital goods, comprising:
[(a)] providing digital goods data associated with a set of
digital goods;
[(b)] providing system data associated with a plurality of
handling systems;
[(c)] receiving digital goods selection data and information
handling system selection data, the digital goods
selection data corresponding to a subset of the set of
digital goods and the information handling system
selection data corresponding to a subset of the plurality
of handling systems;
[(d)] processing the digital goods selection data and the
information handling system selection data, the
processing the digital goods selection data and the
information handling system selection data generating
digital goods entitlement data, the digital goods
entitlement data comprising data providing an
association of a digital good with a target information
handling system; and
[(e)] processing the digital goods entitlement data, the
processing the digital goods entitlement data entitling
the subset of information handling systems to use the
subset of digital goods, the entitling being based in
part upon the association of the digital good with the
target information handling system.
REJECTIONS
I. The Examiner rejects claims 1–18 under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more. (See Final
Action 9–10.)
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II. The Examiner rejects claims 1–3, 7–9, and 13–15 under
35 U.S.C. § 103 as unpatentable over McKinnon4 and Russell.5 (See Final
Action 16.)
III. The Examiner rejects claims 4–6, 10–12, and 16–18 under
35 U.S.C. § 103 as unpatentable over McKinnon, Russell, and Takahashi.6
(See Final Action 19.)
IV. The Examiner rejects claims 1–18 under 35 U.S.C. § 112 as
failing to comply with the written description requirement. (See Final
Action 15.)
ANALYSIS
Claims 1, 7, and 13 are the independent claims on appeal, with the rest
of the claims on appeal (i.e., claims 2–6, 8–12, and 14–18) depending
thereon. (See Appeal Br., Claims App.) Independent claim 1 recites a
“computer-implementable method for managing rights to digital good,”
comprising data-providing steps (a) and (b), data-receiving step (c), and
data-processing steps (d) and (e). (Id.) Independent claims 7 and 13 recite a
computer-implemented system and computer-executable instructions for
performing these data-handling steps. (See id.)
Rejection I – 35 U.S.C. § 101
The Examiner determines that independent claim 1 is “directed to” an
abstract idea related to its data-handling steps; and the Examiner determines
that independent claim 1 “do[es] not recite any computer or machine or

4 US 2009/0199299 A1, published August 6, 2009.
5 US 2002/0049679 A1, published April 25, 2002.
6 US 2001/0013024 A1, published August 9, 2001.
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device to perform the[se] steps.” (Final Action 3.) More succinctly, the
Examiner concludes that independent claim 1 fails the Alice test for patent
eligibility.7
The 2019 Revised Patent Subject Matter Eligibility Guidance (“2019
Guidance”) provides us with specific steps, namely a two-pronged Step 2A
and a Step 2B, for discerning whether a claim passes the Alice Test for
patent eligibility. (See Federal Register Vol. 84, No. 4, 50–57.)
In the first prong of Step 2A (Prong One), we evaluate whether the
claim recites a judicial exception, such as abstract idea. (2019 Guidance
at 54.) The 2019 Guidance “extracts and synthesizes key concepts identified
by the courts as abstract ideas,” and these concepts include a “[m]ental
process[],” which is a concept that can be “performed in the human mind.”
(Id. at 52.) For example, when steps can be practically performed by a
person mentally or with pencil and paper, these steps recite a “mental
process.” (See id.)8

7 In Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014), the Supreme Court
provided a two-step test to guard against an attempt to patent an abstract idea
in isolation. (Id. at 217–18.) In the first step of the Alice Test, a
determination is made as to whether the claim at issue is “directed to” an
abstract idea. (Id. at 218.) In the second step of the Alice test, a
determination is made as to whether additional elements in the claim
(individually and/or in combination) transform the claim into something
“significantly more” than the abstract idea. (Id. at 218–91.)
8 See also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1139,
(Fed. Cir. 2016) (holding that claims to the mental process of “translating a
functional description of a logic circuit into a hardware component
description of the logic circuit” are directed to an abstract idea because the
claims “read on an individual performing the claimed steps mentally or with
pencil and paper.”); Versata Dev. Grp. v. SAP Am., Inc., 793 F.3d 1306,
1335 (Fed. Cir. 2015) (“Courts have examined claims that required the use
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Independent claim 1 recites “providing digital goods data associated
with a set of digital goods” and “providing system data associated with a
plurality of handling systems.” (Appeal Br., Claims App.) In a corporate
environment, this equates to an IT administrator (a person) being provided
with paperwork about the company’s software (e.g., softwareA, softwareB,
softwareC), the company’s software licenses (e.g., licenseA1, licenseA2,
license B1, license B2, license C1, license C2), and the serial numbers of the
company’s systems (SN9872, SN9873, SN9874). This paperwork could, for
example, be provided in the table depicted below.

Independent claim 1 recites “receiving digital goods selection data”
(corresponding to “a subset of the set of digital goods”) and “information
handling system selection data” (corresponding to “a subset of the plurality
of handling systems”). (Appeal Br., Claims App.) This equates to an IT
administrator (a person) deciding in his/her mind that softwareA (a subset of
the company’s software applications) should be installed only on target
systems SN9872 and SN9873 (a subset of the company’s systems).

of a computer and still found that the underlying, patent-ineligible invention
could be performed via pen and paper or in a person’s mind.”).
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Independent claim 1 recites “processing the digital goods selection
data and the information handling system selection data” so as to “generat[e]
digital goods entitlement data” which comprises “data providing an
association of a digital good with a target information handling system.”
(Appeal Br., Claims App.)9 This equates to an IT administrator (a person)
check marking the paperwork (e.g., with a pencil) to indicate an association
of softwareA with target systems SN9872 and SN9873, as shown below.

Independent claim 1 recites “processing the digital goods entitlement
data,” so as to “entitl[e] the subset of information handling systems to use
the subset of digital goods, the entitling being based in part upon the
association of the digital good with the target information handling system.”
(Appeal Br., Claims App.)10 This equates to an IT administrator updating
the paperwork (e.g., with a pencil) to show that licenseA1 is applied to
system SN9872 and that licenseA2 is applied to system SN9873.

9 In this step, “entitlements are created, associated with the systems in the
group, and stored in each system’s corresponding entitlement record.”
(Spec. ¶ 37; see also Appeal Br. 2.)
10 In this step, “the digital goods licenses corresponding to the digital goods
entitlements are respectively applied to each system in the group.”
(Spec. ¶ 37; see also Appeal Br. 2.)
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The paperwork now shows that softwareA (the subset of the
company’s software application) is to be installed on both system SN9872
and system SN9873 (the subset of the company’s systems). If an IT
administrator is given this updated paperwork, the association of “licenses to
the right systems” has already been made; and this IT administrator would
only be responsible for “installing the digital goods” according to this
paperwork. (Spec. ¶ 4.)
As demonstrated above, steps (a)–(e) in independent claim 1 are steps
in a process that can be practically performed by a person mentally or with
pencil and paper. This is a mental process, and, therefore, an abstract idea.
(2019 Guidance at 52.) Thus, under Prong One of Step 2A, independent
claim 1 recites an abstract idea, and we proceed to the second prong of
Step 2A (Prong Two).
In Prong Two, we evaluate whether the claim contains additional
elements that “integrate” the abstract idea “into a practical application.” (Id.
at 54.) “Additional elements” are “claim features, limitations, and/or steps
that are recited in the claim beyond the identified judicial exception.” (2019
Guidance at 55, n. 24) As such, an “additional element” in independent
claim 1 would have to be a limitation/feature beyond the mental process
recited in steps (a)–(e).
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Insofar as independent claim 1 contains an additional element beyond
the recited mental process, this additional element amounts to an indication,
in the preamble of independent claim 1, that the recited mental process is
“computer-implementable.” (Appeal Br., Claims App.) At the very most,
this implicates that independent claim 1 merely recites a mental process and
requires a computer to “apply it.” (See 2019 Guidance at 55.) This is not
enough to integrate the abstract idea into a practical application. (See id.)
Thus, under Prong Two of Step 2A, additional elements in
independent claim 1 do not integrate the recited mental process into a
practical application, and we proceed to Step 2B. In Step 2B, we evaluate
whether claim 1’s additional elements “simply append[] well-understood,
routine, conventional activities previously known in the industry, specified
at a high level of generality, to the judicial exception.” (2019 Guidance
at 56.)
Again, insofar as independent claim 1 contains an additional element,
this additional element amounts to an indication, in the preamble of
independent claim 1, that the above-described mental process is “computer-
implementable.” (Appeal Br., Claims App.) And, inasmuch as a
“computer-implementable” version of the above-described mental process
would require computer components (e.g., a processor, a memory, etc.),
these components, their functions, and their ordered arrangement are
portrayed as well understood, conventional, and routine in the Specification.
(See Spec ¶¶ 17, 44; Fig. 1.)
Thus, we agree with the Examiner that independent claim 1 fails the
Alice test for patent eligibility.
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The Appellants argue that, like the claims under review in Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) and McRO, Inc. v.
Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016), the
method set forth in independent claim 1 “improves the relevant technology.”
(Appeal Br. 4.) We are not persuaded by this argument because, in Enfish
and McRO, specific computer technology was being improved.11 Here, the
method of independent claim 1 improves paperwork that is, at the very most,
tangential to computer technology.
The Appellants argue that, like the claims under review in BASCOM
Global Internet Servs. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.
2016), independent claim 1 “is a technological improvement over existing
technology achieved through the particular ordered combination of elements.”
(Appeal Br. 4.) We are not persuaded by this argument because, in BASCOM,
the technical improvement stemmed from a “particular arrangement” of a
“local client computer,” “logical filtering elements,” and a “remote ISP
server.” (BASCOM 827 F.3d at 1350.) As discussed above, insofar as
independent claim 1 contains an additional element, this additional element
amounts to the preamble indicating that the recited mental process is
“computer-implementable.” (Appeal Br., Claims App.) Here, the Appellants
do not explain, and we do not see, why independent claim 1 requires any
particular arrangement of elements in order to be “computer-implementable.”

11 In Enfish, the specific improvement to computer technology was “a
specific type of data structure designed to improve the way a computer
stores and retrieves data in memory.” (Enfish, 822 F. 3d. at 1339.) In
McRO, the specific improvement to computer technology was “allowing
computers to produce ‘accurate and realistic lip synchronization and facial
expressions in animated characters.’” (McRO, 837 F.3d at 1313.)
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The Appellants argue that, like the claims under review in Amdocs
(Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016), cert.
denied, 138 S. Ct. 469 (2017), the method of independent claim 1 “utilize[s]
a ‘distributed architecture’ to create a meaningful result.” (Reply Br. 1.)
We are not persuaded by this argument because, in Amdocs, the “distributed
architecture” was “a modular, distributed, highly scalable architecture
capable of running on multiple platforms” that, among other things, allowed
“[g]ranular data” to reside in “peripheries” close to information sources” and
“reduce[d] congestion in network bottlenecks.” (Amdocs, 841 F.3d at 1303.)
Here, the alleged distributed architecture amounts to coordinating serial
numbers, software names, and license logistics to create paperwork that can
be relied upon when a person is installing software at a later time.
Thus, we sustain the Examiner’s rejection of independent claim 1
under 35 U.S.C. § 101. Claims 1–18 are argued as a group for this rejection,
and so claims 2–18 fall with independent claim 1.12
Rejection II – 35 U.S.C. § 103
The Examiner determines that the method/system/instructions set
forth in claims 1–3, 7–9, and 13–15 would have been obvious over
McKinnon and Russel. (Final Action 16.) As discussed above, independent
claims 1, 7, and 13 recite steps for “generating” and “processing” of “digital
goods entitlement data.” (See Appeal Br., Claims App.)

12 “When multiple claims subject to the same ground of rejection are argued
as a group or subgroup,” we may “select a single claim from the group” and
decide the appeal on “the basis of the selected claim alone.” (37 CFR
§ 41.37(c)(1)(iv).)
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McKinnon discloses that, in “some corporate enterprises,” IT
administrators “acquire software” and “then physically install the software
on various machines within the enterprise.” (McKinnon ¶ 1.) McKinnon
also discloses that, in this corporate “environment,” it may “become
challenging to identify whom enterprise personnel have allocated licenses.”
(Id.) And McKinnon addresses this challenge by the creation of “allocation
records 410” that indicate particular workstations “to which the licensee
organization has allocated licenses.” (Id. ¶ 52; see also Figs. 1, 4.)
McKinnon’s allocation records 410 include “various sub-records that
contain particulars relating to specific allocations,” and specifically a sub-
record 412 that “identif[ies] a particular end-user and/or workstation to
which a license is allocated.” (McKinnon ¶ 53; see also Fig. 4.) McKinnon
also discloses that software applications 502 can be selected for a new
workstation; and McKinnon discloses that the allocation records 410 are
updated after selection of this software. (See ¶¶ 59–61, 71; Fig. 5.)
The Appellants contend that the claimed “digital goods entitlement
data” is “patentably distinct from the licenses disclosed by McKinnon.”
(Appeal Br. 6.) However, an allocated license is tied to a digital good, and,
the allocation of a license to a workstation is premised on a decision that this
workstation is entitled to the licensed digital good. One of ordinary skill in
the art would appreciate that, when McKinnon’s allocation records 410 are
updated for a new workstation, a new sub-record 412 is generated that
associates the selected software with the new workstation and entitles the
selected software to be installed thereon.
We are unpersuaded, therefore, by the Appellants’ arguments that the
prior art does not show or suggest the generating/processing of digital goods
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entitlement data required by independent claims 1, 7, and 13. (See Appeal
Br. 6–7.)
Dependent claims 2, 8, and 14 set forth “generating license
assignment data” by “the processing of the digital goods entitlement data
and the license data.” (Appeal Br., Claims App.) McKinnon discloses that
requests can be submitted “to allocate or deallocate existing licenses”
(McKinnon ¶ 40); and, as discussed above, McKinnon discloses updateable
allocation records 410 that indicate the allocation of licenses to particular
workstations (see id. ¶ 52.) We are unpersuaded, therefore, by the
Appellants’ argument that the prior art does not disclose the generation of
license assignment data required by dependent claims 2, 8, and 14. (Appeal
Br. 7–8.)
Dependent claims 3, 9, and 15 set forth that “the number of licenses is
fewer than the number of information handling systems.” (Appeal Br.,
Claims App.) McKinnon discloses processing steps to detect when “the
number of licenses allocated” exceeds “the maximum number of licenses
paid for or permitted under the applicable license.” (McKinnon ¶ 41.) We
are unpersuaded by the Appellants’ argument that the prior art does not
show or suggest the “fewer” number of licenses set forth in dependent
claims 3, 9, and 15. (See Appeal Br. 8.)
Thus, we sustain the Examiner’s rejection of claims 1–3, 7–9,
and 13–15 under 35 U.S.C. § 103.
Rejection III – 35 U.S.C. § 103
The Examiner determines that the method/system/instructions set
forth in claims 4–6, 10–12, and 16–18 would have been obvious over
McKinnon, Russell, and Takahashi. (Final Action 19.) These claims set
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forth “generating license procurement data,” and “generating information
regarding the number of licenses to be procured.” (Appeal Br., Claims
App.) Takashi discloses updating a “software license usage number,” and,
when this number “exceeds a software license holding number,” generating
“a purchase transaction” for purchasing the shortfall number of software
licenses. (Takashi, Abstract.) We are unpersuaded, therefore, by the
Appellants’ argument that the prior art does not disclose the generation of
procurement data as required by dependent claims 4–6, 10–12, and 16–18.
(See Appeal Br. 8.)
Thus, we sustain the Examiner’s rejection of claims 4–6, 10–12,
and 16–18 under 35 U.S.C. § 103.
Rejection IV – 35 U.S.C. § 112
The Examiner determines that the Specification does not sufficiently
describe “selection data corresponding to a subset of the plurality of
handling systems” as required by claims 1–18. (See Final Action 15.)
According to the Examiner, the Specification discloses “selection of the
targeted system, which is different than selection of the information handling
system[s].” (Answer 5.)
The Specification describes a “digital goods entitlement operation[]”
that entails the selection of “a target group of systems.” (Spec. ¶ 35.) One
of ordinary skill in the art would understand that ‘a targeted group of
systems’ is the same as a group (i.e., a subset) of systems, each of which can
be considered a target system. The Specification describes the retrieval of
“digital goods entitlement records for each [target] system in the [subset]
group” (id. ¶ 35), and describes each entitlement record as containing “the
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digital goods entitlement data (e.g., license information, etc.)” that allows a
digital good to be processed by a target system (id. ¶ 19).
As such, the Specification sufficiently describes “digital goods
entitlement data comprising data providing an association of a digital good
with a target information handling system” and “digital goods entitlement
data entitling the subset of information handling systems” to use selected
digital goods as required by the claims. We are persuaded, therefore, by the
Appellants’ argument that the Specification provides sufficient written-
description support for the limitations set forth in claims 1–18. (See Appeal
Br. 5.)
Thus, we do not sustain the Examiner’s rejection of claims 1–18 under
35 U.S.C. § 112.
DECISION
We AFFIRM the Examiner’s rejection of claims 1–18 under
35 U.S.C. § 101.
We AFFIRM the Examiner’s rejections of claims 1–18 under
35 U.S.C. § 103.
We REVERSE the Examiner’s rejection of claims 1–18 under
35 U.S.C. § 112.
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).

AFFIRMED