Ex Parte Demeyer

Board of Patent Appeals and Interferences

Jul 25, 2012

10678882 (B.P.A.I. Jul. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MICHAEL DEMEYER
____________________

Appeal 2009-013652
Application 10/678,882
Technology Center 2100
____________________

Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
ERIC S. FRAHM, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-013652
Application 10/678,882

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STATEMENT OF CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 5-26. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claims
Exemplary claims 5 and 7 under appeal read as follows (emphasis
added):
5. A method for licensing software on a computer
hardware platform, the software including at least one
function that is restricted to a limited use, comprising:
transmitting an activation request for a technology that
must be registered to use the at least one function to a
registration clearinghouse;
causing registration information related to the technology
that must be registered to use the at least one function to be
compiled in a registration database;
receiving a communication that is capable of relieving
the limited use restriction of the at least one function; and
determining actual usage of the technology based on the
registration information compiled in the registration database.

7. The method of claim 5, wherein the limited use is
selected from the group consisting of:
disallowing the execution of the function;
allowing only a predefined number of uses of the
function;
hiding the function from a user interface; and
withholding executable code needed to execute the
function.

Appeal 2009-013652
Application 10/678,882

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Rejections
1. The Examiner rejected claims 5, 6, 8-12, 16-19, and 23-26
under 35 U.S.C. § 102(b) as being anticipated by Ahmad (US 5,925,127).
2. The Examiner rejected dependent claims 7, 15, and 22 as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Ahmad and
Lane (US 6,941,353 B1).
3. The Examiner rejected dependent claims 13 and 20 as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Ahmad and
Shuster (US 6,826,546 B1).
4. The Examiner rejected dependent claims 14 and 21 as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Ahmad and
Garrison (US 2003/0204736 A1).
Appellant’s Contentions1
1. As to independent claims 5, 10, and 18, Appellant contends that
Ahmad does not support a finding of anticipation. (App. Br. 7-15) 2.
Appellant’s argument for each of claims 5, 10, and 18, is essentially the
same. Particularly, Appellant argues that Ahmad fails to disclose, teach, or
suggest the requirement in each claim of “at least one function that is
restricted to a limited use.”
2. As to independent claims 25 and 26, Appellant contends that
Ahmad does not support a finding of anticipation. (App. Br. 15-17).
Appellant’s argument for each of claims 25 and 26 is essentially the same.
Particularly, Appellant argues that Ahmad fails to disclose, teach, or suggest

1 One or both of these same contentions or an analogous contention is
separately presented for each independent claim on appeal.
2 The Appeal Brief referred to throughout is the Supplemental Appeal Brief
filed February 2, 2009.
Appeal 2009-013652
Application 10/678,882

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the requirement in each claim of “at least one restricted functionality
module.”
3. As to claims 7, 15, and 22, Appellant contends that the
Examiner has erred in rejecting these claims under 35 U.S.C. § 103(a)
because:
[T]he Office Action has failed to at least (1) ascertain the
differences between and prior art and the claims in issue; and
(2) resolve the level of ordinary skill in the art. Furthermore, the
alleged rationale for combining the two references embodies
clear and improper hindsight rationale.
(App. Br. 19). Appellant goes on to state that:
The Office Action admits that Ahmad fails to teach the feature
of hiding the function from a user interface, but relies on Lane
for teaching this function. The rationale cited for combining
Lane with Ahmad, however, is "in order to let user is [sic] not
given a full opportunity to be exposed to the complete aspect
the program until users purchase such a program for particular
use." This alleged rationale, however, has essentially nothing to
feature of "hiding the function from a user interface," which
underscores the impropriety of the combination and therefore
the rejection.
(App. Br. 20).

Issues on Appeal
Did the Examiner err in rejecting claims 5, 10, 18, 25, and 26 as being
anticipated because Ahmad fails to describe either “at least one function that
is restricted to a limited use” or “at least one restricted functionality
module”?
Did the Examiner err in rejecting claims 7, 15, and 22 for the reasons
set forth by Appellant?

Appeal 2009-013652
Application 10/678,882

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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions that the Examiner has erred. We disagree with Appellant’s
conclusions. We concur with the conclusions reached by the Examiner.
As to Appellant’s above contention 1, Appellant contends that “the
Examiner submits that Ahmad relates to software programs/modules that are
not functional unless authorization has been received” and “that this is not
equivalent to the [claimed] feature, ‘the software including at least one
function that is restricted to a limited use.’” (App. Br. 8). We disagree. We
conclude that “limited use” is inclusive of the situation where the use is fully
limited as in Ahmad. Separately, we note that Appellant’s Figure 4 shows a
single Functionality Module and Appellant’s Specification at page 13 states
that only one functionality module is depicted, but more than one may exist.
Clearly, it is contemplated that Appellant’s claims cover the situation of only
one module. When only one module is present, limiting its use in turn limits
the entire software product 110 as product 110 is comprised only of this one
module.
As to Appellant’s above contention 2, we reach the same conclusion
for the same reason.
As to Appellant’s above contention 3, Appellant’s claim 7 is a
Markush-type claim reciting alternatives. 3 Appellant does not dispute the
Examiner’s finding that Ahmad teaches the alternatives of “disallowing,”

3 “A Markush-type claim recites alternatives in a format such as ‘selected
from the group consisting of A, B and C.’ See Ex parte Markush, 1925 C.D.
126 (Comm’r Pat. 1925).” MPEP 803.02.
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“allowing,” and “withholding” steps of claim 7. Therefore, we do not need
to reach Appellant’s arguments directed to the alternative “hiding” step.

CONCLUSIONS
(1) The Examiner has not erred in rejecting claim 5, 6, 8-12, 16-19,
and 23-26 as being anticipated under 35 U.S.C. § 102(b).
(2) The Examiner has not erred in rejecting claim 7, 13-15, and 20-22
as being unpatentable under 35 U.S.C. § 103(a).
(3) Claims 5-26 are not patentable.

DECISION
The Examiner’s rejections of claims 5-26 are 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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