Ex Parte Osada

Patent Trial and Appeal Board

Sep 18, 2014

11360371 (P.T.A.B. Sep. 18, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
___________

Ex parte MAMORU OSADA
___________

Appeal 2012-000420
Application 11/360,371
Technology Center 3600
___________

Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
MICHAEL C. ASTORINO, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE1
Mamoru Osada (Appellant) seeks review under 35 U.S.C. § 134 of a
final rejection of claims 1–16, the only claims pending in the application on
appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
The Appellant invented a technique of updating a license for an
application (Spec. 1:9–13).

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed February 24, 2011) and Reply Brief (“Reply Br.,” filed July 18,
2011), and the Examiner’s Answer (“Ans.,” mailed May 16, 2011).
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An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below [bracketed matter and some
paragraphing added].
1. A license management apparatus
incorporated in an image processing apparatus
that executes a predetermined image processing
application,
comprising:
[1] a storage unit
adapted to store a license
for the image processing application
in a machine-readable memory,
the license defining an upper limit
of a number of times that image processing is
permitted to be performed
by the image processing apparatus
due to execution of the image processing
application;
[2] a display control unit
adapted
to cause an input screen to be displayed
on a display device
included in the image processing apparatus,
and
to receive automatic update information
inputted by a user
via the input screen displayed on the display
device,
the automatic update information indicating
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a number of times that the image processing
is to be performed
by the image processing apparatus
due to execution of the image processing
application
until automatic update of the license;
[3] a setting unit
adapted to set the automatic update information
in a machine-readable memory;
[4] a determination unit
adapted to determine
whether or not a number of times that the image
processing actually has been performed
by the image processing apparatus
due to execution of the image processing
application
reaches the number of times that the image
processing is to be performed
until automatic update of the license;
and
[5] an update requesting unit
adapted to automatically request update of the license
when said determination unit determines
that the number of times that the image processing
actually has been performed
reaches
the number of times that the image processing is to
be performed until automatic update of the license,
[6] wherein each of said units is implemented
at least in part
by a computer in the image processing apparatus.
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The Examiner relies upon the following prior art:
Park US 2002/0194137 A1 Dec. 19, 2002
Raley US 2003/0196109 A1 Oct. 16, 2003
Tohgi US 2004/0148516 A1 Jul. 29, 2004
Thornton US 2005/0071630 A1 Mar. 31, 2005
Claims 1–11 and 14–16 stand rejected under 35 U.S.C. § 101 as directed
to non-statutory subject matter.
Claim 11 stands rejected under 35 U.S.C. § 112, first paragraph, as
lacking a supporting written description within the original disclosure.
Claims 1–13, 15, and 16 stand rejected under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly claim the
invention.
Claims 1–6 and 12–16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Thornton and Tohgi.
Claims 7, 8, 10, and 11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Thornton, Tohgi, and Raley.
Claim 9 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Thornton, Tohgi, Raley, and Park.
ISSUES
The issues of statutory subject matter turn primarily on whether the
claims recite physical structure. The issues of obviousness turn primarily on
whether the structural limitations recited in the claims are described by the
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references applied. The issues of indefiniteness turn primarily on whether
the claims recite antecedent plural units prior to the wherein clause.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Thornton
01. Thornton is directed to automating the installation, renewal,
detection or management of public key infrastructure digital
certificates in a secure network system. Thornton, para. 2.
02. Thornton describes discovering and inventorying certificates
installed to a set of network servers. A database contains records
relating to inventoried certificates. Each record identifies a
certificate and a server to which the certificate resides or is
installed. For each certificate, an expiration date or time may also
be stored, by which the expiring of certificates may be noticed.
Likewise, an expiration period may also be noted. Thornton, para.
81.
03. Thornton’s Figure 8 depicts a simplified method of automatically
receiving and installing signed certificates from certificate
authorities. First, an automated system receives a notification
from a certificate authority. An alarm or timeout may initiate the
process rather than a notification, which may be set prior to or
about the time of expiration, or alternately may be set to according
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to a predefined period after certificate issuance. Upon reception
of a notification, the system tests whether the notification
concerns a new certificate. If a new certificate is referred to or
included in the notification message, the certificate is extracted
and installed. Thornton, para. 94.
04. Thornton’s installation and renewal system monitors expiring
certificates. Certificates are enrolled in a certificate watch
program. On a periodic basis a certificate database is reviewed for
certificates expiring within a future period. Finding certificates in
need of renewal, a notification may be sent to an administrator,
who may then select certificates to be renewed, upon which a
process of certificate renewal is initiated. Alternatively, the
renewal system may be configured to initiate certificate renewal
without approval, to prevent late certificate renewal should an
administrator be unavailable to approve. Thornton, para. 109.
05. Thornton’s renewal system may scan the servers of a network
periodically, as in the discovery processes discussed above, to
detect certificates due to expire within a future period. In another
alternate mode, agents are installed to the servers being monitored.
Each agent periodically reviews the certificates for expiration, and
may notify an administrator or a central system of any certificates
about to expire, for example by email. Thornton, para. 110.
06. Figure 40 shows a representative screen of a view of certificate
information. Figure 47 shows a screen whereby an administrator
may enter information about a new certificate. Figure 42 depicts a
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screen in which an existing certificate record may be edited.
Thornton, para. 148.
Tohgi
07. Tohgi is directed to contents which can ensure security for
downloaded contents. Tohgi, para. 2.
08. Tohgi describes contents information storage that stores contents,
a contents management file for managing licenses for the contents,
and plug-in modules for executing processing of the contents, a
plug-in setting device that sets plug-in modules corresponding to
contents to be processed, an operation recognition device that
recognizes unlimited operations relating to execution of
processing of the contents to be processed from the contents
management file corresponding to the contents to be processed, a
plug-in function permission device that permits use of functions
corresponding to the unlimited operations recognized by the
operation recognition device among functions of the plug-in
modules set by the plug-in setting device, and a contents
processing execution device that executes processing of the
contents to be processed, according to the functions of the plug-in
modules permitted by the plug-in function permission device.
Tohgi, para. 9.
09. Operation limit information varies according to the publication
licenses. Tohgi, para. 46.
10. The number of times printing can be performed may be limited in
a license context, and in this case, even if printing is permitted, the
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number of times printing can be performed is limited. Tohgi,
para. 53.
ANALYSIS
Claims 1–11 and 14–16 rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter
We are persuaded by the Appellant’s argument that the subject matter of
the claims is directed to more than software per se, as the claim recites an
apparatus capable of actual execution that performs physical acts.
Claim 11 rejected under 35 U.S.C. § 112, first paragraph, as lacking a
supporting written description within the original disclosure
There is some ambiguity as to whether this rejection remains. Although
the Examiner states that “Claim 11 is still rejected because the relevant
disclosures cited by Applicant at [best] describe obtaining a fee and is still
silent as to obtaining a total of fees. The rejection under U.S.C. § 112 first
paragraph for Claim 11 is maintained,” (Ans. 6) the Examiner also
withdraws the rejection at Answer 3 and 15. Appellant acknowledges and
relies on the withdrawal. Reply Br. 2. The response at Answer 6 appears to
be a transcription from the Final Rejection and not a response to the Appeal
Brief. Accordingly, we take this rejection as having been withdrawn and is
therefore not before us.
Claims 1–13, 15, and 16 rejected under 35 U.S.C. § 112, second paragraph,
as failing to particularly point out and distinctly claim the invention
There is some ambiguity as to what parts, if any, of this rejection remain.
The Examiner withdrew the rejection as to claims 13 and 15 at Answer 3
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and 16. The Examiner appears to have also withdrawn the rejection as to
claims 1–13 at Answer 6. The response at Answer 6 appears to be a
transcription from the Final Rejection and not a response to the Appeal
Brief. Thus, we take the lack of antecedent basis rejection to still be before
us.
The claims at issue recite five separate units followed by a phrase
“wherein each of said units.” We agree with Appellant that each of said
units refers back to the five previously recited units.
Claims 1–6 and 12–16 rejected under 35 U.S.C. § 103(a) as unpatentable
over Thornton and Tohgi
Claims 7, 8,10, and 11 rejected under 35 U.S.C. § 103(a) as unpatentable
over Thornton, Tohgi, and Raley
Claim 9 rejected under 35 U.S.C. § 103(a) as unpatentable over Thornton,
Tohgi, Raley, and Park
We are not persuaded by the Appellant’s argument that neither Thornton
nor Tohgi describe licenses for image processing applications. App. Br. 18–
19. Initially, we find that although the independent claims recite a license
for the image processing application, these apparatus claims recite no
structure using such licenses.
“[E]xpressions relating the apparatus to contents thereof during an
intended operation are of no significance in determining patentability of the
apparatus claim.” Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969).
Furthermore, “inclusion of material or article worked upon by a structure
being claimed does not impart patentability to the claims.” In re Otto, 312
F.2d 937, 940 (CCPA 1963).
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The Examiner found that the claims recite five structural elements that
act upon some data. The data happens to be a license. The structures are: 1)
a storage unit to store a license defining an upper limit of a number of times
something is permitted to be performed; 2) a display control unit to display
an input screen on a display device and to receive automatic update
information inputted; 3) a setting unit adapted to store the automatic update
information; 4) a determination unit to determine whether or not a number of
times that the licensed processing actually has been performed reaches the
number of times until automatic update of the license; and 5) an update
requesting unit to automatically request update of the license when the
determination unit determines that the number of times that the licensed
processing actually has been performed reaches the number of times until
automatic update of the license.
The Examiner found that both references necessarily had the first storage
structure, although Thornton stored the limit in terms of time rather than
number of uses. The Examiner found that Thornton had structures 2 through
5 for the purpose of automatically updating data PKI certificates. Again, a
license is simply a datum, and so the structures of Thornton were necessarily
within the scope of the structures recited in the independent claims.
As Thornton applied its structure to a time limit, the Examiner found that
Tohgi showed that it was known to also apply a number of uses limit to
some operation. Thus, it was predictable to alter Thornton to use a number
of uses limit as an alternative to a time limit, which would necessitate the
recited storage of the numeric use limits in the claims.
Again, the nature of the data of being a license is only meaningful to the
extent of the number of uses necessarily be recorded and compared to a
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limit, which Tohgi describes. As Tohgi limits such a number of uses, Tohgi
may be characterized as licensing such a number of uses. More to the point,
Tohgi explicitly manages licenses, so Tohgi’s managed data structures are
licenses.
The limitation of image processing is given no patentable weight as it is
an intended field of use limitation. Even so, as the Examiner found, Tohgi
describes a limited use printing application that is within the scope of image
processing. The limitation of an application is simply that of some software
that is an application of the function it is written to perform, hence the use of
the metaphor “application.”
CONCLUSIONS OF LAW
The rejection of claims 1–11, 14, and 16 under 35 U.S.C. § 101 as
directed to non-statutory subject matter is improper. The rejection of claim
15 under 35 U.S.C. § 101 as directed to non-statutory subject matter is
withdrawn by the Examiner.
The rejection of claim 11 under 35 U.S.C. § 112, first paragraph, as
lacking a supporting written description within the original disclosure is
withdrawn by the Examiner.
The rejection of claims 1–13, 15, and 16 under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly claim the
invention is improper.
The rejection of claims 1–6 and 12–16 under 35 U.S.C. § 103(a) as
unpatentable over Thornton and Tohgi is proper.
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The rejection of claims 7, 8, 10, and 11 under 35 U.S.C. § 103(a) as
unpatentable over Thornton, Tohgi, and Raley is proper.
The rejection of claim 9 under 35 U.S.C. § 103(a) as unpatentable over
Thornton, Tohgi, Raley, and Park is proper.
DECISION
The rejection of claims 1–16 is affirmed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2011).

AFFIRMED

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