Ex Parte East et al

Board of Patent Appeals and Interferences

Jan 13, 2009

09982852 (B.P.A.I. Jan. 13, 2009)

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UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte DANIEL V. EAST and WILLIAM J. BENTLEY
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Appeal 2008-3066
Application 09/982,852
Technology Center 3600
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Decided: January 13, 2009
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Before HUBERT C. LORIN, ANTON W. FETTING, and JOSEPH A.
FISCHETTI, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Daniel V. East and William J. Bentley (Appellants) seek review under
35 U.S.C. § 134 of a final rejection of claims 1-4 and 7-24, which along with
allowed claims 5 and 6 are the only claims pending in the application on appeal.
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) (2002).

Appeal 2008-3066
Application 09/982,852

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We REVERSE.
The Appellants invented a way of providing access to application software
in the event of inaccessibility of a license management system (Specification 3:2-
4).
An understanding of the invention can be derived from a reading of exemplary
claims 1 and 16, which are reproduced below [bracketed matter and some
paragraphing added].
1. A method for providing access to application software in the event
of inaccessibility of a license management system, comprising the
steps of:
[1] determining whether a user has a valid software license to run a
software application on a client workstation including sending a query
to the license management system; and
[2] permitting a recognized user to execute said software application
on said client workstation in the event that
the license management system is unable to receive and/or
respond to said query,
and/or is unable to communicate with said client workstation
about said query.

16. A system for managing access to concurrent software licenses,
comprising:
[1] a network;
[2] a license management system coupled to said network operative to
authorize a user of a software application; and
[3] a client workstation coupled to said network,
[4] wherein said client workstation comprises a validation
device operative to permit a recognized user to execute said
software application in the event that the license management
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system is unable to communicate with said client workstation
over said network.

This appeal arises from the Examiner’s final Rejection, mailed May 4, 2006.
The Appellants filed an Appeal Brief in support of the appeal on January 29, 2007.
An Examiner’s Answer to the Appeal Brief was mailed on June 11, 2007. A Reply
Brief was filed on August 10, 2007.
PRIOR ART
The Examiner relies upon the following prior art:
Christiano US 5,671,412 Sep. 23, 1997
REJECTION 10
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Claims 1-4 and 7-24 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Christiano.
ISSUES
The issue pertinent to this appeal is whether the Appellants have sustained their
burden of showing that the Examiner erred in rejecting claims 1-4 and 7-24 under
35 U.S.C. § 103(a) as unpatentable over Christiano.
The pertinent issue turns on whether Christiano’s system permits a recognized
user to execute a software application if a license management system is unable to
receive and/or respond to a query, and/or is unable to communicate with a client
workstation about that query.
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FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be supported
by a preponderance of the evidence.
Facts Related to Claim Construction
01. The disclosure defines a recognized user as a user who has been
previously authorized by the license management system as a valid user
(Specification 14:4-5).
Christiano
02. Christiano is directed to a license management system suitable for
licensing and managing the usage of software products (Christiano 1:4-
6).
03. Christiano describes a fail safe indicator entered in the license record
if the license item includes a fail safe indicator. The fail safe indicator
allows licenses to be checked out when no licenses are available during
failures, such as during license management system failures, when
normally no licenses would be available. For example, whenever a
failure occurs in a license management system, licenses are typically
denied to new requesters. However, a software developer selling a
product to a large, trusted company may wish to provide a more lenient
policy which allows the customer to check out licenses when an error
occurs in the license management system. In some embodiments, a fail
safe license can be checked out regardless of the type of error. In other
embodiments, the fail safe license can be checked out only when the
error is an actual failure of the license system, and not when the client is
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denied a license due to the license policy (i.e. "no licenses available")
(Christiano 17:16-34).
Facts Related To Differences Between The Claimed Subject Matter And The
Prior Art
04. Christiano does not describe having the capacity to recognize a user
who has been previously authorized by the license management system
as a valid user. The claim 1 subject matter requires this capacity in
identifying its recognized user.
Facts Related To The Level Of Skill In The Art
05. Neither the Examiner nor the Appellants has addressed the level of
ordinary skill in the pertinent arts of systems analysis and programming,
software licensing systems, and data communication systems. We will
therefore consider the cited prior art as representative of the level of
ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
(Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill
in the art does not give rise to reversible error ‘where the prior art itself
reflects an appropriate level and a need for testimony is not shown’”)
(quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d
158, 163 (Fed. Cir. 1985).
Facts Related To Secondary Considerations
06. There is no evidence on record of secondary considerations of non-
obviousness for our consideration.
PRINCIPLES OF LAW
Claim Construction
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During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Prater , 415 F.2d 1393, 1404-05 (CCPA 1969); In re Am. Acad. of Sci.
Tech Ctr., 367 F.3d 1359, 1364, (Fed. Cir. 2004).
Limitations appearing in the Specification but not recited in the claim are not
read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed.
Cir. 2003) (claims must be interpreted “in view of the specification” without
importing limitations from the specification into the claims unnecessarily)
Although a patent applicant is entitled to be his or her own lexicographer of
patent claim terms, in ex parte prosecution it must be within limits. In re Corr,
347 F.2d 578, 580 (CCPA 1965). The applicant must do so by placing such
definitions in the Specification with sufficient clarity to provide a person of
ordinary skill in the art with clear and precise notice of the meaning that is to be
construed. See also In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (although
an inventor is free to define the specific terms used to describe the invention, this
must be done with reasonable clarity, deliberateness, and precision; where an
inventor chooses to give terms uncommon meanings, the inventor must set out any
uncommon definition in some manner within the patent disclosure so as to give
one of ordinary skill in the art notice of the change).
Obviousness
A claimed invention is unpatentable if the differences between it and the
prior art are “such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in the art.” 35
U.S.C. § 103(a) (2000); KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1729-30
(2007); Graham v. John Deere Co., 383 U.S. 1, 13-14 (1966).
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In Graham, the Court held that that the obviousness analysis is bottomed on
several basic factual inquiries: “[(1)] the scope and content of the prior art are to be
determined; [(2)] differences between the prior art and the claims at issue are to be
ascertained; and [(3)] the level of ordinary skill in the pertinent art resolved.” 383
U.S. at 17. See also KSR Int’l v. Teleflex Inc., 127 S.Ct. at 1734. “The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” KSR, at 1739.
“When a work is available in one field of endeavor, design incentives and
other market forces can prompt variations of it, either in the same field or a
different one. If a person of ordinary skill can implement a predictable variation, §
103 likely bars its patentability.” Id. at 1740.
“For the same reason, if a technique has been used to improve one device,
and a person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.” Id.
“Under the correct analysis, any need or problem known in the field of
endeavor at the time of invention and addressed by the patent can provide a reason
for combining the elements in the manner claimed.” Id. at 1742.
ANALYSIS
Claims 1-4 and 7-24 rejected under 35 U.S.C. § 103(a) as unpatentable over
Christiano.
The Examiner found that Christiano described determining whether a user has
a valid software license to run a software application including sending a query to
the license management system and permitting a recognized user to execute said
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software application in the event of inaccessibility of the license management
system. The Examiner further found that Christiano contemplates license
inaccessibility due specifically to failure of the license management system. The
Examiner concluded that it would be obvious to one of ordinary skill in the art at
the time the invention was made to expand license inaccessibility in such a way as
to include not only actual failure of the license management system but also
failures in communication (Answer 4).
The Appellants contend that Christiano does not describe a recognized user
(Appeal Br. 5-6). The Examiner replies that Christiano describes that "licenses are
typically denied to new requesters". The Examiner inferred that if licenses are
being denied to new requestors, the same licenses are being granted to old
requestors, more commonly known as recognized users (Answer 13).
We agree with the Appellants. A recognized user is a user who has been
previously authorized by the license management system as a valid user (FF 01).
The passage cited by the Examiner refers to new requesters, not new users. The
passage pertains to the state in which no new licenses would be available (FF 03),
not a state of recognizing new versus old users.
The Examiner presents no finding that Christiano has the capability to
recognize a user who has been previously authorized by the license management
system as a valid user. We find no such description in Christiano (FF 04). Further,
as the Appellants contend, Christiano depends on communication with the license
database to access its fail safe indicator (Reply Br. 2-3; FF 03). Therefore,
Christiano fails to permit a recognized user to execute an application if the license
management system is unable to receive a query regarding a user.
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CONCLUSIONS OF LAW
The Appellants have sustained their burden of showing that the Examiner erred
in rejecting claims 1-4 and 7-24 under 35 U.S.C. § 103(a) as unpatentable over
Christiano.
DECISION
To summarize, our decision is as follows:
• The rejection of claims 1-4 and 7-24 under 35 U.S.C. § 103(a) as
unpatentable over Christiano is not sustained.
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