Ex Parte Byers

Patent Trial and Appeal Board

Oct 4, 2013

12191050 (P.T.A.B. Oct. 4, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/191,050 08/13/2008 Shelli Marie Byers 30566.427-US-01 1026
55895 7590 10/07/2013
GATES & COOPER LLP - Autodesk
HOWARD HUGHES CENTER
6701 CENTER DRIVE WEST, SUITE 1050
LOS ANGELES, CA 90045
EXAMINER
CASEY, ALEXIS M
ART UNIT PAPER NUMBER
3684
MAIL DATE DELIVERY MODE
10/07/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE PATENT TRIAL AND APPEAL BOARD 4
___________ 5
6
Ex parte SHELI MARIE BYERS 7
___________ 8
9
Appeal 2011-006533 10
Application 12/191,050 11
Technology Center 3600 12
___________ 13
14
15
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and 16
BIBHU R. MOHANTY, Administrative Patent Judges. 17
FETTING, Administrative Patent Judge. 18
DECISION ON APPEAL 19
20
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Application 12/191,050

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1
STATEMENT OF THE CASE1 2
3
Sheli Marie Byers (Appellant) seeks review under 35 U.S.C. § 134 of a 4
final rejection of claims 1-21, the only claims pending in the application on 5
appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). 6
The Appellant invented managing “software licenses for a plethora of 7
products in a network environment” (Specification [0001]). 8
An understanding of the invention can be derived from a reading of 9
exemplary claim 1, which is reproduced below [bracketed matter and some 10
paragraphing added]. 11
1. A computer implemented method 12
activating multiple computer applications 13
for use on a computer, 14
comprising: 15
[1] installing a first computer application 16
of the multiple computer applications on the computer, 17
wherein the multiple computer applications each 18
comprise 19
logic that is executed to perform a task; 20
[2] installing a single licensing management utility (LMU) 21
that is shared by the multiple computer applications; 22
[3] the LMU determining 23
if a first license for the installed first computer 24
application exists; 25

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed September 7, 2010) and Reply Brief (“Reply Br.,” filed February
17, 2011), and the Examiner’s Answer (“Ans.,” mailed December 22, 2010).
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and 1
[4] the LMU obtaining the first license 2
if the first license does not exist. 3
The Examiner relies upon the following prior art: 4
Pou US 2005/0004873 A1 Jan. 6, 2005
Claims 1-21 stand rejected under 35 U.S.C. § 112, second paragraph, as 5
failing to particularly point out and distinctly claim the invention. 6
Claims 1-21 stand rejected under 35 U.S.C. § 103(a) as unpatentable 7
over Pou and Official Notice. 8
ISSUES 9
The issues of indefiniteness turn primarily on whether the Appellant 10
clarified what the Examiner had difficulty understanding. The issues of 11
obviousness turn primarily on whether the term “application” is to be given 12
patentable weight in the context of the claims. App. Br. 18-22, Claims 13
Appendix. If so, the issues then turn primarily on whether Pou encompasses 14
applications within its scope of its digital files, and if not, whether 15
applications would have been predictable extensions. 16
FACTS PERTINENT TO THE ISSUES 17
The following enumerated Findings of Fact (FF) are believed to be 18
supported by a preponderance of the evidence. 19
Facts Related to Claim Construction 20
01. The disclosure contains no lexicographic definition of 21
“application.” App. Br. 18-22, Claims Appendix. 22
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Facts Related to the Prior Art 1
Pou 2
02. Pou is directed to “digital rights management, and more 3
particularly to facilitating authorized licensing and distribution of 4
digital media.” Pou para [0002]. 5
03. Management of digital rights involves detecting a data file on a 6
user device. “The data file includes a digital wrapper preventing 7
access to the data file without a valid authorization. A search is 8
conducted for information relating to an authorization to access 9
the data file using data stored in a non-volatile storage area of the 10
user device. The digital wrapper is disabled if an authorization to 11
access the data file is found during the search.” Pou para [0009]. 12
04. “The systems and techniques represent an end-to-end process that 13
supports virtually any type of proprietary digital files including 14
music and other recordings, movies and other video, books and 15
other written works, and other files, such as those that pertain to 16
the financial, legal, medical, gaming, and software industries. 17
Although the following description focuses primarily on the use of 18
the techniques in connection with music files, the techniques are 19
equally applicable to other types of digital files. Similarly, 20
although the techniques are described in the context of media files, 21
the techniques may also be used in connection with multimedia 22
files and other types of data files. The systems and techniques 23
ensure that content owners are compensated for the distribution 24
and use of their works and offer multiple levels of participation in 25
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the revenues generated by the sale and/or licensing of digital 1
media.” Pou para [0042] (emphasis added). 2
05. “The techniques work with media that arrives at a user's computer 3
in a ‘wrapped’ form (protected), as well with media that arrives 4
‘unwrapped’ (i.e., unprotected). Media rights owners have the 5
ability to wrap a file with information about ownership and 6
payment. This information is given a unique file ID and is stored 7
in a central database. The file ID is stored and transmitted with 8
the wrapper. Once a file is captured and identified by the system, 9
the information such as owner and payment requirements can be 10
retrieved (e.g., by matching the identified file with its unique file 11
ID stored at the central database). Monitoring software provided 12
in accordance with the described solution (‘the Solution 13
Software’) may be automatically or manually installed on any 14
computer or other device on which a user attempts to access a 15
wrapped file. Once installed, all future media that passes through 16
the file input/output (I/O) system of the computer can be identified 17
either by using the file ID, if available, or using file identification 18
software.” Poupara [0043]. 19
06. “A user ID may be created for each user. The user ID may be 20
stored along with device specific information in a secure area on 21
the computer, such as the BIOS of the computer. The user ID may 22
be stored in an encrypted or unencrypted format. This information 23
may represent a user identification key, which may allow access to 24
a local database of licenses and related permissions held by the 25
user. By referring to this local license database, the Solution 26
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Software stored on the computer can determine whether the user is 1
authorized to use a particular file and, if so, unwrap the file. Even 2
if the file is not wrapped, access or use of the file may be allowed 3
or prevented in accordance with business rules stored at the local 4
database or at a central database level. For example, business 5
rules may prevent certain types of files from being used unless a 6
license is found in the local database while allowing the use of 7
other types of files without the need for a license. Because users 8
often have multiple devices, information about the user license 9
may be centrally stored to ensure the user has access to all 10
licensed media on more than one of the devices he/she owns.” 11
Pou para [0044]. 12
07. “FIG. 1 is a flow diagram of a process for managing digital rights 13
to a file that is loaded onto a user device, such as a computer. The 14
user device includes software interfaces with the I/O ports for the 15
device to monitor all file I/O, much like a firewall, which scans all 16
inbound and outbound traffic for the computer and checks all files 17
being moved into and out of the system. Files may be loaded onto 18
the device using any type of I/O port . . . or any other mechanism 19
and/or protocol for transferring data to and from the user device.” 20
Pou para [0050]. 21
08. “If the file is not licensed, a license may be offered to the user for 22
purchase. For example, the user may be directed to a website 23
where a purchase can be made, or a pop-up window may appear 24
on a display screen for the user device asking whether the user 25
wishes to purchase a license to the file or otherwise accept certain 26
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license terms and/or the user may be directed to a website where a 1
purchase can be completed. Alternatively, the user may have a 2
service that allows for pre-purchasing of a certain number of 3
credits that may be applied to license purchases. As another 4
alternative, the number of unlicensed media used in a particular 5
period may be monitored locally by the Solution Software or other 6
software, and this information may be subsequently used to 7
calculate usage fees or rates. The license terms, such as duration, 8
use and distribution limitations, and payment options, may also be 9
displayed as part of the offer of a license for purchase . . . If the 10
user does not accept the license, access to the file may be denied. 11
If the user does accept the license, including complying with any 12
payment terms, the user is allowed to access the file, and license 13
information, indicating that the file has been licensed and any 14
other necessary information, is stored in the license database(s).” 15
Pou para [0056]. 16
09. “In addition to information about the media file, the wrapper 17
prevents unauthorized access to the media file. In other words, the 18
wrapper prevents access to the media file unless the user has 19
purchased a license. In essence, the wrapper places the file in an 20
encrypted form that requires a key to be able to access the 21
underlying media file. Conventional digital wrappers that are 22
typically used for protecting software applications as they are 23
distributed electronically may be used as a wrapper for the media 24
file. For example, the wrapper may be of the same type as the 25
ecommerce wrapper available from Digital River, which has been 26
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used to distribute software such as Norton Antivirus from 1
Symantec Corporation and Aladdin Software's Privilege system. 2
Once the user purchases a license for himself or for the device, a 3
key is used to unwrap the media file. The key may be received 4
from the central server.” Pou para [0066] (emphasis added). 5
ANALYSIS 6
Claims 1-21 rejected under 35 U.S.C. § 112, second paragraph, as failing to 7
particularly point out and distinctly claim the invention. 8
We are persuaded by the Appellants’ argument that the Examiner is 9
indicating lack of clarity and that the Appellant has provided the requested 10
clarity at Appeal Br. 5-7. 11
Claims 1-21 rejected under 35 U.S.C. § 103(a) as unpatentable over Pou 12
and Official Notice. 13
Claims 1, 8, and 15 14
We are not persuaded by the Appellants’ argument that the applied art 15
does not describe an application that is installed on a computer or that 16
comprises logic that is executed to perform a task. These claims simply 17
determine whether a license exists and obtain a license if needed using a 18
shared licensing management utility. As Pou clearly does so for digital files 19
generally, Appellant is left arguing that the Pou’s exemplary embodiment is 20
not an application as in the claim. 21
Initially, we find there is nothing particularly different about the need for 22
or the manner of protecting some digital file called an application from 23
Pou’s exemplary file of music. Thus, we credit no patentable weight to the 24
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particular characterization of a digital file as an application as contrasted 1
with any other characterization of its contents. See In re Ngai, 367 F.3d 2
1336, 1339 (Fed. Cir. 2004). 3
But even were we to credit the word “application” in the claims with 4
patentable weight, applications in the form of computer programs were 5
known to need protection of the type Pou afforded, and so were predictable 6
variants. Certainly, the operation of license protection is not dependent on 7
the characterization of the contents. Further, Pou explicitly states that its 8
scope includes all varieties of digital files. 9
Finally, although some practitioners may use the terms media and 10
applications to denote input data and executable data, in reality there are 11
overlaps between the two that render the claims indefinite in any attempt to 12
apply such a distinction broadly. Ultimately, both media and applications 13
are just binary data files that are input to and acted upon by some higher (or 14
lower depending on one’s perspective) level program. 15
Appellant argues that 16
Applicants submit that a file as set forth in Pou is not remotely 17
similar to, nor does it teach, describe, suggest, or allude to a 18
computer application or computer software. Further, the 19
installation of computer software as claimed is not equivalent to 20
merely copying or loading a media content file onto a device. In 21
this regard, copying a file or loading a media file onto a 22
computer is merely the transfer of that media file onto the 23
computer. However, the installation of a computer application 24
extends well beyond the mere transfer of a file onto a computer. 25
While Pou may describe copying a digital media file onto a 26
computer, Pou completely fails to describe: (1) an application, 27
(2) the installation of such an application, and (3) the ability to 28
execute such an application. 29
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App. Br. 9. First, computer media is a species of computer software. 1
It’s not hardware, and it is used in a computer. It is software. Second, 2
adding a media file to a computer storage is not merely transfer; it requires 3
adding the file parameters to the file system, finding an available storage 4
location, copying the contents to that location, and adding the statistics 5
related to the use of that usage in that location to the file system. This 6
sequence is clearly an instance of installing the media file. Third, as every 7
sophomore student of data structure, data in the form of input, internal 8
structure, and instructions are alternative means for directing processor flow. 9
This is unsurprising, as even instructions are just data, and even media data 10
instructs the computer as to how to process its contents and format. 11
Although the claims use the phrase “logic that is executed to perform a 12
task,” the manner of execution is unspecified and not further narrowed. 13
Execution of anything in the computer is ultimately done at the register level 14
under control of the operating system. Thus, a media file contains data 15
causing the operating system to react in essentially a manner similar to the 16
way program instructions do. The structure of a media file forms a logic that 17
is executed by the operating system, as translated by an intermediary 18
program. 19
We are not persuaded by the Appellant’s argument that 20
Pou's monitoring software does not determine if licenses exist 21
for "installed" computer applications as expressly claimed. 22
Instead, Pou merely looks to the license status of a media file 23
that has been copied to the computer 24
App. Br. 11-12. The claim does not narrow the manner in which the 25
LMU determines if a first license for the installed first computer application 26
exists, or even whether the license is a physical entity or simply the 27
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intangible attribute of being licensed. Certainly checking a status would 1
result in such a determination. 2
We are not persuaded by the Appellant’s argument that 3
Pou explicitly provides that Pou's software solution does not 4
even need to be installed to obtain the license. Thus, Pou does 5
NOT use the Software Solution to obtain the license. 6
App. Br. 12. Whether Pou shows additional embodiments beyond that 7
of installing the license does not negate Pou’s showing of that embodiment. 8
More to the point, the claims do not narrow the location of installing a single 9
licensing management utility (LMU). Pou’s Software Solution must be 10
installed somewhere to operate at all. 11
Claims 2, 9, and 16 12
These claims depend from claims 1, 8, and 15 and add 13
a software license management system application (SLMS) 14
executing on the computer that manages licenses for the 15
multiple computer applications; 16
storing activation information for one or more licenses for the 17
multiple computer applications in the SLMS; 18
and 19
the LMU communicating with the SLMS to obtain the first 20
license for the installed first computer application. 21
We adopt the Examiner’s findings of fact and analysis and reach similar 22
legal conclusions. 23
We are not persuaded by the Appellant’s argument that the 24
database does not manage licenses for multiple applications, the 25
database is not an application, and the database does not 26
communicate with the Solution Software to obtain the first 27
license when it does not exist (as claimed). 28
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App. Br. 14. The claims do not narrow the manner of managing licenses 1
or communicating. Certainly a database management system manages its 2
contents and communicates with the programs that store and query data with 3
it. 4
Claims 4, 11, and 18 5
These claims depend from claims 2, 9, and 16 and add 6
transmitting a request code, that identifies the installed first 7
computer application, to a licensing party; 8
receiving, in the LMU, an activation code from the licensing 9
party; 10
and 11
the LMU passing the activation code to the SLMS. 12
We adopt the Examiner’s findings of fact and analysis and reach similar 13
legal conclusions. 14
We are not persuaded by the Appellant’s argument that the 15
a user device itself notifying a server that a license is needed is 16
entirely different from a licensing management utility 17
transmitting a request code (that identifies the installed 18
application) to a licensing party. 19
App. Br. 15. The claims do not narrow the manner or degree of 20
indirection of transmitting, receiving, and passing, nor do they narrow the 21
manner in which codes are implemented. 22
Claims 5, 12, and 19 23
These claims depend from claims 2, 9, and 16 and add 24
the LMU communicates with the SLMS using application 25
programming interface (API) calls of a single licensing 26
management component. 27
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We adopt the Examiner’s findings of fact and analysis and reach similar 1
legal conclusions. 2
We are not persuaded by the Appellants’ argument that the prior art fails 3
to provide for a single licensing management component anywhere. Appeal 4
Br. 16. This is essentially the same argument as in claim 2 supra. 5
Claims 7, 14, and 21 6
These claims depend from claims 1, 8, and 15 and add 7
installing a second computer application of the multiple 8
computer applications on the computer; 9
determining that the LMU has already been installed on the 10
computer; 11
the LMU determining if a second license for the installed 12
second computer application exists; 13
and 14
the LMU obtaining the second license for the installed second 15
computer application if the second license does not exist. 16
We adopt the Examiner’s findings of fact and analysis and reach similar 17
legal conclusions. 18
We are not persuaded by the Appellants’ argument that 19
an already installed LMU is used to actually obtain the license. 20
On the other hand, Pou merely obtains a license regardless of 21
whether the Solution Software has been installed or not. 22
App. Br. 17 (citation omitted). This is essentially the same argument as 23
in claim 1 supra. 24
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CONCLUSIONS OF LAW 1
The rejection of claims 1-21 under 35 U.S.C. § 112, second paragraph, 2
as failing to particularly point out and distinctly claim the invention is 3
improper. 4
The rejection of claims 1-21 under 35 U.S.C. § 103(a) as unpatentable 5
over Pou and Official Notice is proper. 6
DECISION 7
The rejection of claims 1-21 is affirmed. 8
No time period for taking any subsequent action in connection with this 9
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 10
§ 1.136(a)(1)(iv) (2011). 11
12
AFFIRMED 13
14
rvb 15