Ex Parte Dabbish et al

Board of Patent Appeals and Interferences

Jun 17, 2009

10334849 (B.P.A.I. Jun. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte EZZAT A. DABBISH and
THOMAS MESSERGES
____________

Appeal 2009-005553
Application 10/334,849
Technology Center 3600
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Decided:1 June 18, 2009
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Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
ANTON W. FETTING, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-005553
Application 10/334,849
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STATEMENT OF THE CASE
Ezzat A. Dabbish, et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claim 25. We have jurisdiction under
35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We REVERSE.2

THE INVENTION
The invention relates to secured software for wireless communication
devices.
Claim 25 is reproduced below.
25. A protected software package for use on a first device comprising:
a software application to be executed on the first device
containing multiple separately accessible sets of features including at
least a first set of features;
a validation license to verify integrity of the software
application;
a digital rights management (DRM) license to grant the first
device a first set of rights to execute and install the software
application; and
a feature license granting the first device a second set of rights
to execute the first set of features.

2 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Jan. 15, 2008) and Reply Brief (“Reply Br.,” filed Jul. 16, 2008),
and the Examiner’s Answer (“Answer,” mailed Jun. 4, 2008).

Appeal 2009-005553
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THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Peinado US 2003/0217011 A1 Nov. 20, 2003
The following rejection is before us for review:
1. Claim 25 is rejected under 35 U.S.C. §102(e) as being anticipated by
Peinado.

ISSUES
Has the Examiner established a prima facie case of anticipation that
shows Peinado expressly or inherently describes each and every element as
set forth in claim 25?

PRINCIPLES OF LAW
Anticipation
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).

ANALYSIS
The Examiner begins the explanation for rejecting claim 25 by stating
“[a]s per claim 25 Peinado substantially discloses [the elements of the
claimed package].” (Ans. 4) (emphasis added). This is not the test for
anticipation. It is well settled that in order for the examiner to establish a
prima facie case of anticipation, each and every element of the claimed

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Application 10/334,849
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invention, arranged as required by the claim, must be found in a single prior
art reference, either expressly or under the principles of inherency. See
generally, In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997);
Diversitech Corp. v. Century Steps, Inc., 850 F.2d 675, 677-78 (Fed. Cir.
1988); Lindemann Maschinenfabrik GMBH v. American Hoist and Derrick,
730 F.2d 1452, 1458 (Fed. Cir. 1984). There must be no difference between
the claimed invention and the reference disclosure, as viewed by a person of
ordinary skill in the field of the invention. Scripps Clinic & Research
Found. v. Genentech Inc., 927 F.2d 1565, 1576 (Fed. Cir. 1991).
In arguing that Peinado “substantially discloses” the elements of the
claimed package while nevertheless finding Peinado anticipates the claimed
subject matter, the Examiner is indicating that Peinado does not describe
each and every element as claimed but suggesting that Peinado would
describe the claimed subject matter in light of other evidence. “If it is
necessary to reach beyond the boundaries of a single reference to provide
missing disclosure of the claimed invention, the proper ground is not § 102
anticipation, but § 103 obviousness.” Scripps Clinic & Research Found. v.
Genentech, Inc., 927 F.2d 1565, 1577 (Fed. Cir. 1991).
Furthermore, the Examiner has not shown where in Peinado the claim
element “a feature license granting the first device a second set of rights to
execute the first set of features” is described, expressly or inherently.
The Appellants have consistently argued that Peinado fails to describe
the claim limitation “a feature license granting the first device a second set
of rights to execute the first set of features.” (App. Br. 4) (“In Peinado et al.,
‘011, there is no teaching of a feature license associated with providing
access to a specific subset of features of a software application.”) (Emphasis

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original). While this appears to be the Appellants’ major challenge to the
rejection, the Examiner appears to have ignored it, arguing instead that
Peinado “discloses the recited feature: A digital rights management license
...” (Ans. 4), a point the Appellants have not disputed. Nowhere on the
record has the Examiner clearly explained how Peinado describes, expressly
or inherently, the claim limitation “a feature license granting the first device
a second set of rights to execute the first set of features.”
We note that the Examiner did cite “abstract, page 1, [0002], [0010],
[0011], page 2, [0012], pages 4-12” as evidence that “Peinado substantially
discloses” the claimed subject matter. (Ans. 4). While we think it would
have been more helpful had the Examiner pinpointed the relevant disclosure
in the twelve pages relied upon, nevertheless based on our review we have
been unable to discern the disclosure therein that would have led the
Examiner to conclude that Peinado describes, expressly or inherently, the
claim element “a feature license granting the first device a second set of
rights to execute the first set of features.”
Accordingly, we find the Examiner has failed to make out a prima
facie case of anticipation.

CONCLUSION
We conclude that the Appellants have shown that the Examiner erred
in rejecting claim 25 under § 102 as anticipated by Peinado.

DECISION
The decision of the Examiner to reject claim 25 is reversed.

Appeal 2009-005553
Application 10/334,849
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REVERSED
JRG

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