Ex Parte Chu et al

Board of Patent Appeals and Interferences

Apr 29, 2010

10675614 (B.P.A.I. Apr. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SIMON CHU, RICHARD ALAN DAYAN, JEFFERY BART
JENNINGS, and DAVID B. RHOADES
____________

Appeal 2009-003185
Application 10/675,614
Technology Center 2600
____________

Decided: April 29, 2010
____________

Before JOHN C. MARTIN, JOSEPH F. RUGGIERO, and MAHSHID D.
SAADAT, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Final Rejection of
claims 1-5, 7-13, 15-21, 23, and 25. Claims 6, 14, 22, and 24 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
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Rather than reiterate the arguments of Appellants and the Examiner,
reference is made to the Brief (filed December 28, 2007) and the Answer
(mailed February 15, 2008) for the respective details. Only those arguments
actually made by Appellants have been considered in this decision.
Arguments which Appellants could have made but chose not to make in the
Brief have not been considered and are deemed to be waived [see 37 C.F.R.
§ 41.37(c)(1)(vii)].

Appellants’ Invention
Appellants’ invention relates to the managing of software according to
the physical location of a computer that is to execute the software. When the
computer’s operating system, which has been modified to include a location
service, requests that an application be loaded into system memory, the
location service determines the exact physical location of the computer using
a satellite Global Positioning System (GPS). If the computer is within an
authorized location range, the application is allowed to load into system
memory and execute as long as the computer remains within the authorized
area. (Spec. ¶ [0005]).

Claim 1 is illustrative of the invention and reads as follows:
1. A method for regulating execution of a software according to a
physical location of a computer on which the software is to be executed, the
method comprising:
storing a first list of authorized location ranges where a computer is
authorized to execute a first software;
determining a physical location of the computer;
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comparing the physical location of the computer with the first list of
authorized location ranges;
executing the first software only if the physical location of the
computer is within a range of one of the authorized location ranges from the
first list of authorized location ranges; and
executing the first software only if the computer does not receive
information derived from a GPS signal.

The Examiner’s Rejection
Claims 1-5, 7-13, 15-21, 23, and 25 stand rejected under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement.

ISSUES
The pivotal issues before us are whether the Examiner erred in
determining:
a) the language of appealed independent claims 1, 9, and 17
requires that both of the recited software execution conditions must occur
before software execution is permitted, and
b) if so, Appellants’ disclosure does not describe the software
execution procedure in which both recited execution conditions are required
in accordance with the written description requirement of the first paragraph
of 35 U.S.C. § 112.

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FINDINGS OF FACT
The record supports the following relevant findings of fact (FF) by a
preponderance of the evidence:
1. Appellants’ disclosure (Figs. 2-3, Spec. ¶ [0005]) relates to the
regulation of the execution of software according to a physical location of a
computer on which the software is to be executed.
2. Appellants’ disclosure (Figs. 1-2, Spec. ¶ [0017]) also describes
a location service 208 within computer 100 which receives real time
coordinates from a GPS receiver within computer 100, and compares the
real time locations with a list 222 of approved locations. If the real time
coordinates are found in the approved list, software execution is permitted.
3. At paragraph [0025], Appellants’ Specification discloses
“[a]lternatively, location service 208 may be structured such that the
presence or lack of a GPS signal either enables or prohibits the loading of an
application.”

PRINCIPLES OF LAW
The function of the written description requirement of the first
paragraph of 35 U.S.C. § 112 is to ensure that the inventor has possession, as
of the filing date of the application relied on, of the specific subject matter
later claimed by him. In re Wertheim, 541 F.2d 257, 262 (CCPA 1976),
Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 1319, (Fed. Cir.
2003); Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991).
In establishing a basis for a rejection under the written description
requirement of the statute, the Examiner has the initial burden of presenting
evidence or reasons why persons skilled in the art would not recognize in an
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applicant’s disclosure a description of the invention defined by the claims.
Wertheim, 541 F.2d at 265.

ANALYSIS
Each of the appealed independent claims 1, 9, and 17 is directed to the
regulation of the execution of software and includes a recitation of two
conditions in which software is permitted to execute. These two conditions
are i) software execution only if the physical location of the computer is
within an authorized location range and ii) software execution only if no
information derived from a GPS signal is received.
The Examiner has taken the position (Ans. 4-5) that, while both
software execution conditions are disclosed, Appellants’ disclosure lacks a
written description of any procedure or requirement that both conditions
occur before software is permitted to execute. In response, Appellants
contend (App. Br. 4-5) that there is no support for the Examiner’s
presumption that the claimed two software executing conditions are
mutually exclusive so that only one or the other may occur.
We agree with the Examiner. The only written description of the
claimed second software execution condition, i.e., execution only if a GPS
signal is not received, appears at paragraph [0025] of Appellants’
Specification. (FF 3). This description, however, is unambiguously
disclosed to be an alternative procedure to the previously described software
executing condition which compares a determined physical location of a
computer with an authorized physical location range.
The language of the appealed independent claims, however, ties the
two recited software execution conditions together by using the inclusive
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“and” language, thereby requiring both conditions to occur in order to enable
software execution. Further, Appellants’ argument (App. Br. 5) that the two
software executing conditions are not intended to be mutually exclusive at
least impliedly suggests that the two conditions must occur together, a
procedural feature which has not been described in Appellants’ disclosure.
In view of the above discussion, it is our opinion that, under the
factual situation presented in the present case, the statutory written
description requirement has not been satisfied because Appellants were
clearly not in possession of the claimed invention at the time of filing of the
application. Therefore, we sustain the Examiner’s rejection of appealed
claims 1-5, 7-13, 15-21, 23, and 25 under the first paragraph of 35 U.S.C. §
112.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that,
since Appellants’ disclosure does not comply with the written description
requirement of the statute, the Examiner did not err in rejecting appealed
claims 1-5, 7-13, 15-21, 23, and 25 under 35 U.S.C. § 112, first paragraph.

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DECISION
The Examiner’s 35 U.S.C. § 112, first paragraph, rejection of
appealed claims 1-5, 7-13, 15-21, 23, and 25 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)(1)(iv).

AFFIRMED

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