Ex Parte OsadaDownload PDFPatent Trial and Appeal BoardSep 18, 201411360371 (P.T.A.B. Sep. 18, 2014) Copy Citation 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). Appeal 2012-000420 Application 11/360,371 2 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 Appeal 2012-000420 Application 11/360,371 3 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. Appeal 2012-000420 Application 11/360,371 4 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 Appeal 2012-000420 Application 11/360,371 5 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 Appeal 2012-000420 Application 11/360,371 6 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 Appeal 2012-000420 Application 11/360,371 7 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 Appeal 2012-000420 Application 11/360,371 8 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 Appeal 2012-000420 Application 11/360,371 9 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). Appeal 2012-000420 Application 11/360,371 10 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 Appeal 2012-000420 Application 11/360,371 11 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. Appeal 2012-000420 Application 11/360,371 12 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 mls Copy with citationCopy as parenthetical citation