Ex Parte Ronning et alDownload PDFPatent Trial and Appeal BoardDec 31, 201311107107 (P.T.A.B. Dec. 31, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JOEL A. RONNING, DAVID EFERGAN, PETE OLSON, and AMIR RAUF ____________ Appeal 2012-005441 Application 11/107,107 Technology Center 3600 ____________ Before BIBHU R. MOHANTY, MICHAEL W. KIM, and JAMES A. TARTAL, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-005441 Application 11/107,107 2 STATEMENT OF THE CASE The Appellants seek our review under 35 U.S.C. § 134 (2002) of the final rejection of claims 1-7 which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b) (2002). SUMMARY OF THE DECISION We REVERSE. THE INVENTION The Appellants’ claimed invention is directed to digital rights management across geographic boundaries (Spec. [003]). Claim 1, reproduced below with the numbering in brackets added, is representative of the subject matter on appeal. 1. A computer software license server including a processor and memory, comprising: [1] a communication module containing program code stored in memory which when executed by the processor in the server causes the server to perform the operations of utilizing pre-existing communication infrastructure to provide a communication link between the license server and a remote computer, the communication module receiving a software license key and a current Internet Protocol (IP) address of the remote computer; [2] a geographic location cross reference to IP address database stored within the server memory; [3] a license database stored within the server memory having a plurality of license policies, each license policy being uniquely identified by a corresponding software license key, at least one license policy specifying a use limitation for a software application within a geographic boundary; and Appeal 2012-005441 Application 11/107,107 3 [4] a license validation mechanism comprising program code which when executed by the processor in the server causes the server to perform the operations of sending a valid license confirmation signal to the remote computer via the communication link, in response to: (i) identifying a current geographic location for the received current IP address by performing a reverse IP address lookup in the geographic location database, (ii) retrieving a specific license policy having a geographic boundary use limitation from the license database based on the received software license key, and (iii) determining that the current geographic location is within the specific geographic boundary identified by the retrieved license policy. THE REJECTIONS The following rejection is before us for review: 1. Claims 1-7 are rejected under 35 U.S.C. § 103(a) as unpatentable over Scott (US 6,760,324 B1, iss. Jul. 6, 2004) in view of Dutta (US 2003/0065571 A1, pub. Apr. 3, 2003). FINDINGS OF FACT We have determined that the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence1. ANALYSIS The Appellants argue that the rejection of claim 1 is improper because the prior art does not disclose claim limitation [4] (ii) as identified in the claim as listed above. (App. Br. 14, Reply Br. 7). 1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). Appeal 2012-005441 Application 11/107,107 4 In contrast, the Examiner has determined that the cited claim limitation is shown by Scott at column 45, lines 20-25. (Ans. 6, 18). We agree with the Appellants. Claim limitation [4] (ii) requires in part: [4] (ii) retrieving a specific license policy having a geographic boundary use limitation from the license database based on the received software license key. (Claim 1, emphasis added). Thus, the claim requires a specific license policy having a geographic boundary use limitation. The rejection of record cites to these claim limitations as being shown in Scott at column 45, lines 20-25, but this citation fails to do so. Scott at column 45, lines 20-25 discloses a limited license restricted to a particular IP address, but fails to mention a license policy having a geographic boundary use limitation based on, and thus separate from, a received software license key. The Answer at page 9 has also made citations to Scott as disclosing this cited claim limitation at column 8, lines 50-67, column 10, lines 5-20, column 16, lines 15-20, column 21, lines 50-67, column 22, lines 1-25, column 29, lines 50-67, column 32, lines 29-45, column 33, lines 1-32, column 34, lines 13-25, column 41, lines 60-67, column 42, lines 1-10 and 30-40, column 44, lines 30-35 and 50-67, and column 45, lines 59-67, but these citations fail to disclose this as well. For these reasons the rejection of claim 1 and its dependent claims is not sustained. Appeal 2012-005441 Application 11/107,107 5 CONCLUSIONS OF LAW We conclude that Appellants have shown that the Examiner erred in rejecting claims 1-7 under 35 U.S.C. § 103(a) as unpatentable over Scott and Dutta. DECISION The Examiner’s rejection of claims 1-7 is reversed. REVERSED mls Copy with citationCopy as parenthetical citation