Ex Parte Hillen et al

Patent Trial and Appeal Board

Jul 12, 2016

12839890 (P.T.A.B. Jul. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/839,890 07/20/2010
91854 7590 07114/2016
Lincoln Electric Company/Perkins COIE LLP
700 Thirteenth Street, NW
Suite 600
Washington, DC 20005-3960
FIRST NAMED INVENTOR
Edward Hillen
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
072056-8049.USOO 9088
EXAMINER
FISHER, PAUL R
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
07/14/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
wdcle@perkinscoie.com
patentprocurement@perkinscoie.com
desiree _ cunin @lincolnelectric.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDWARD HILLEN and DMITRY BRANT
Appeal2014--001577
Application 12/839,890
Technology Center 3600
Before ANTON W. PETTING, MICHAEL C. ASTORINO, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Edward Hillen and Dmitry Brant (Appellants) seek review under
35 U.S.C. § 134 of a final rejection of claims 1-22, the only claims pending
in the application on appeal. We have jurisdiction over the appeal pursuant
to 35 U.S.C. § 6(b).
1 Our decision will make reference to the Appellants' Appeal Brief ("Appeal
Br.," filed July 29, 2013) and Reply Brief ("Reply Br.," filed November 12,
2013), and the Examiner's Answer ("Ans.," mailed September 9, 2013), and
Final Action ("Final Act.," mailed December 31, 2012).
Appeal2014-001577
Application 12/839,890
The Appellants invented a way of licensing features in equipment.
Specification para. 1.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A system for managing licenses in a welding system,
compnsmg:
[ 1] a welding system comprising a memory for storing an
unlicensed first optional welding function, said memory
including a license registry for anyone of:
(i) indicating the availability of the unlicensed welding
function,
(ii) recording when the unlicensed welding function has
been licensed,
and
(iii) providing a unique identifier code for the function;
[2] a license management system for storing a first license for
the unlicensed first optional welding function;
and
[3] a facilitation system for
obtaining the first license from the license management
system
and
providing it to the memory of the welding system to
license the first optional welding function.
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Appeal2014-001577
Application 12/839,890
The Examiner relies upon the following prior art:
Robert us 4,937,863 June 26, 1990
Kolodziej us 5,667,704 Sept. 16, 1997
Olsen us 5,905,860 May 18, 1999
Thomas Motley US 2007 /0244823 Al Oct. 18, 2007
Maeda US 2008/0027742 Al Jan. 31, 2008
Claims 12-22 stand rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
Claims 1-3, 6, 7, 11-14, and 22 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Thomas Motley and Kolodziej.
Claims 4, 5, 8-10, 15, and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Thomas Motley, Kolodziej, and Maeda.
Claims 17-19 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Thomas Motley, Kolodziej, Olsen, and Robert.
Claims 20 and 21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Thomas Motley, Kolodziej, Olsen, Robert, and Maeda.
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Appeal2014-001577
Application 12/839,890
ISSUES
The issues of statutory subject matter tum on whether the claims recite
more than managing licensing records. The issues of obviousness tum
primarily on whether the recitation of a welding system is no more than a
field of use undeserving of patentable weight, and if not, whether one of
ordinary skill in the industrial machine marketing arts knew of the use of
licensing features within a machine as a marketing technique.
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 the Prior Art
Thomas Motley
01. Thomas Motley is directed to product licensing and product
function or feature enablement. Thomas Motley para. 2.
02. Thomas Motley describes activity logs, user account
information, access authorization plus other security features
being maintained in licensing records. Product hierarchical data
about each product is maintained. The hierarchical data includes
customer eligibility for the product (based on resources and
equipment installed at a customer's site), product configuration
and functions or features available within the product that can be
enabled. Thomas Motley para. 32.
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Application 12/839,890
03. Thomas Motley describes a licensing system across computing
devices that includes a database for the storage of license records.
The records include license activity and event logs, license user
account information, the control data to be downloaded by the
security device, and any license data associated with a respective
license user account. Thomas Motley para. 52.
04. Thomas Motley describes including features that are available,
but not necessarily enabled for usage without the proper licensing.
Thomas Motley para. 58.
Kolodziej
05. Kolodziej is directed to welding controllers. Kolodziej 1: 10.
06. Kolodziej describes a machine control system for controlling a
welding machine and plural peripheral machines. The control
system includes a single unit controller having three welding
sequence control modules for controlling a welding operation.
The controller also has three machine logic control modules for
controlling machine programming, which can be used to control
peripheral machines. The single unit controller also controls
electric current supply to the welding machine. A variety of
input/output ports and circuitry provide for coupling the controller
to the welding machines and peripheral machines. A single board
supports the controller and the input/output ports and circuitry
such that the three machine logic control modules and the three
welding sequence control modules are coupled for direct
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Application 12/839,890
intercommunication through the firmware located on the single
board. Kolodziej 1:65-2: 14.
07. All six Kolodziej modules have access to the same memory
map within the microprocessor such that the controller is capable
of accessing and utilizing any one of the six modules at any given
time to perform a required operation. Kolodziej 2: 18-22.
08. Kolodziej's microprocessor includes three separate welding
sequence control modules. Each of the welding sequence control
modules preferably is capable of performing 900 programmable
sequential logic steps, divided into 15 sequences of 60 steps each.
Kolodziej 3:42--47.
ANALYSIS
Claims 12-22 rejected under 35 U.S.C. § 1 OJ as directed to non-statutory
subject matter
Independent claims 12, 17, and 22 recite:
12. A method for managing licenses in a welding system,
compnsmg:
using a facilitation system to request a first license for an
unlicensed first optional welding function in a welding system
memory from a license management system;
providing it to the memory of the welding system to license the
first optional welding function;
and
recording said license in a license registry of said memory of
said welding system.
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Appeal2014-001577
Application 12/839,890
17. A method for managing licenses in a welding system,
compnsmg;
requesting a first license for an unlicensed first optional
welding function in a welding system memory from a license
management system;
providing it to the memory of the welding system to license the
first optional welding function;
and
recording said license in a license registry of said memory of
said welding system, said recording including counting licenses
stored in said registry;
recording the date of the last update of said license;
and
performing a checksum.
22. A method for managing licenses in a memory of a welding
system, the method comprising:
maintaining in a weld table in said memory operating
instructions for the welding system and an optional function
identifier indicating whether the particular operating instruction
uses an optional feature that requires a license;
and
maintaining a license registry in said memory, said registry
including a license record for any license obtained for any
optional feature requiring said license.
All three claims are directed, according to their preambles, to managing
licenses. The disclosed nature of the invention is that of licensing features.
Spec. para. 1. The Specification and claims nominally recite application to
welding equipment, but none of the claims result in operation or actual
control over welding equipment. A license is a total abstraction, being an
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Application 12/839,890
agreed mental perception of a right. Managing perceptions is no less
abstract. The steps are conventional computer records manipulation, viz.,
requesting, providing, and recording a record (claims 12 and 17), preforming
a checksum arithmetic operation (claim 1 7), and maintaining tables such as
registries (claim 22). Taken as a whole all three claims do no more than
update data. The dependent claims primarily recite known computer
memory structures to perform such operations within. Thus all of the
rejected claims simply recite conceptual advice for maintaining licensing
records with the instruction to do so on a general purpose computer. This is
insufficient for finding statutory subject matter. Alice Corp., Pty. Ltd. v CLS
Bank Intl, 134 S.Ct. 2347 (2014).
We are not persuaded by Appellants' argument that the processes are
executed on a machines and that those are special purpose machines.
Appeal Br. 9-10. Appellants' contention that any machine including a
general purpose computer is sufficient to make eligible subject matter is
erroneous as a matter of law.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea "while adding the words 'apply it"' is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea "'to a particular technological environment."'
Stating an abstract idea while adding the words "apply it with a
computer" simply combines those two steps, with the same
deficient result. Thus, if a patent's recitation of a computer
amounts to a mere instruction to "implement[t]" an abstract
idea "on ... a computer," that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of "additional
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Application 12/839,890
feature [ e]" that provides any "practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself."
Alice Corp, at 2358 (2014)_(citations omitted). Reciting application to a
welding system, without reciting any structure or operation particular to a
welding system, does not narrow the scope of the claims beyond application
on a general purpose computer.
We are not persuaded by Appellants" argument that the processes
transform a machine. Appeal Br. 10. Appellants' contention that the claims
transform a machine from unlicensed to licensed. Again, a license is a
mental abstraction. Any such transformation is perpetual and not physical.
We are not persuaded by Appellants' argument that the processes do not
involve a law of nature. Appeal Br. 11. This is not pertinent to whether the
processes are abstract subject matter.
We are not persuaded by Appellants' argument that the processes do not
involve a general concept. Appeal Br. 11. All three independent claims
describe conceptual advice for maintaining licensing records.
Claims 1-22 rejected under 35 U.S.C. § 103(a) as unpatentable over various
combinations of Thomas Motley, Kolodziej, Olsen, Robert, and Maeda
We are not persuaded by Appellants' argument that neither reference
describes the memory in the welding system of Kolodziej including a license
registry as claimed (Appeal Br. 15); the combination of Thomas Motley and
Kolodziej does not teach or suggest a welding device having memory
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including a license registry (Appeal Br. 16); or that Thomas Motley teaches
a way from the claimed invention (Appeal Br. 18).
The first two arguments are substantially the same, viz. that neither
reference describes the entirety of the claim. This is a rejection under
obviousness rather than anticipation. Appellants respond to the rejection by
attacking the references separately, even though the rejection is based on the
combined teachings of the references. Nonobviousness cannot be
established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures. See In re Merck &
Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
The issue really devolves to whether the recitation of a welding system
in the claims is more than a suggested field of use. If so, then the issue is
whether one of ordinary skill in the machine programming arts would know
of and would see a need to add a licensing system in a welding controller.
Put another way, would one of ordinary skill see Kolodziej's welding
controller that has plural functional capacities as being a product that would
sell in plural different configurations, each with differing subsets of those
capacities. If so, then Thomas Motley' s implementation for activating
various such subsets by means of a licensing system would immediately
pertain.
None of the claims recite any welding equipment structure or operation.
Some of the claims recite a "feature" that might be in such a welding system,
but do not narrow or further specify the nature of such a feature, leaving
generic computer features within the scope of such limitations. Thus, no
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Application 12/839,890
patentable weight should be afforded the recitations of a welding controller,
in which case Thomas Motley is sufficient to reject the claims.
But assuming arguendo that patentable weight should be afforded,
Kolodziej describes a welding system with firmware controlling three
welding control modules capable of performing 15 sequences of 60 steps
each. As there is more than one such controller, one of ordinary skill in the
industrial machine marketing arts who would have been familiar with
industrial machine licensing techniques such as those in Thomas Motley as
marketing tools, would have immediately envisaged licensing the three
controllers and 15 sequences in smaller increments up to those totals because
those are machine features as described by Thomas Motley. Thus, the
answer to the question we put forth supra is that one of ordinary skill would
see Kolodziej' s welding controller that has plural functional capacities as
being a product that would sell in plural different configurations, each with
differing subsets of those capacities. Thomas Motley again simply provides
one implementation for doing so.
As to the argument regarding teaching away, simply that there are
differences between two references is insufficient to establish that such
references "teach away" from any combination thereof. See In re Beattie,
974 F.2d 1309, 1312-13 (Fed. Cir. 1992).
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Application 12/839,890
CONCLUSIONS OF LAW
The rejection of claims 12-22 under 35 U.S.C. § 101 as directed to non-
statutory subject matter is proper.
The rejection of claims 1-3, 6, 7, 11-14, and 22 under 35 U.S.C.
§ 103(a) as unpatentable over Thomas Motley and Kolodziej is proper.
The rejection of claims 4, 5, 8-10, 15, and 16 under 35 U.S.C. § 103(a)
as unpatentable over Thomas Motley, Kolodziej, and Maeda is proper.
The rejection of claims 17-19 under 35 U.S.C. § 103(a) as unpatentable
over Thomas Motley, Kolodziej, Olsen, and Robert is proper.
The rejection of claims 20 and 21under35 U.S.C. § 103(a) as
unpatentable over Thomas Motley, Kolodziej, Olsen, Robert, and Maeda is
proper.
DECISION
The rejections of claims 1-22 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). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
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