Ex Parte Lee et al

Board of Patent Appeals and Interferences

Jan 23, 2012

10105072 (B.P.A.I. Jan. 23, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte SE-WAI LEE, PAUL E. INGALLS, and
SHAWN C. SCOTZIN
____________________

Appeal 2010-003662
Application 10/105,072
Technology Center 3700
____________________

Before: LINDA E. HORNER, JOHN C. KERINS, and JAMES P. CALVE,
Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-003662
Application 10/105,072
2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1, 2, 4-6, 9-16, 41, 44-46, 49-54, and 109-122.
Claims 3, 7, 8, 17-40, 42, 43, 47, 48, and 55-108 have been cancelled. We
have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART.
THE INVENTION
The claims relate to software management. Claim 1 illustrates the
claimed subject matter on appeal.
1. A method for managing software on a client
electronic device, the method comprising:
connecting to a distribution server with a software
manager of the client electronic device, via a network, and
receiving with the software manager of the client electronic
device from the distribution server an electronic catalog
identifying a plurality of game titles, a subset of the game
titles corresponding to a plurality of game programs
available for download from the distribution server;
storing by the software manager the electronic catalog in
a memory on the client electronic device to enable the
electronic catalog to be accessed on the client electronic
device independent of the client electronic device's current
connection state with the network;
identifying by the software manager other game
programs previously installed on the client electronic device
independent of the software manager, if any; and
facilitating a user of the client electronic device by the
software manager to download one or more of the game
programs downloadable from the distribution server, install
the downloaded game programs on the client electronic
device, and selectively initiate playing of one or more of the
installed game programs, independent of whether or not the
installed game programs were previously installed
independent of the software manager or installed by the
software manager.
Appeal 2010-003662
Application 10/105,072
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REJECTIONS
The Examiner relies on the following as evidence of unpatentability:
Krishnan US 6,073,124 June 6, 2000
Floyd US 6,243,692 B1 June 5, 2001
Muyres US 2001/0010046 A1 July 26, 2001
Moore US 2002/0078142 A1 June 20, 2002
Edelman US 6,857,067 B2 Feb. 15, 2005

Appellants seek review of the following rejections:
1. Claims 1, 2, 4, 5, 41, 44, 45, 51, and 109 under 35 U.S.C.
§ 103(a) as being unpatentable over Muyres and Moore.
2. Claims 6, 9-13, 16, 46, 49, 50, 52, and 53 under 35 U.S.C.
§ 103(a) as being unpatentable over Muyres and Moore in view of Krishnan.
3. Claims 14 and 54 under 35 U.S.C. § 103(a) as being
unpatentable over Muyres, Moore, and Krishnan in view of Edelman.
4. Claim 15 under 35 U.S.C. § 103(a) as being unpatentable over
Muyres, Moore, and Krishnan in view of Floyd.
5. Claims 110, 111, 116, 117, and 122 under 35 U.S.C. § 102(e) as
being anticipated by Muyres.
6. Claims 112, 113, 118, and 119 under 35 U.S.C. § 103(a) as
being unpatentable over Muyres and Krishnan.
7. Claims 114 and 120 under 35 U.S.C. § 103(a) as being
unpatentable over Muyres, Krishnan, and Edelman.
8. Claims 115 and 121 under 35 U.S.C. § 103(a) as being
unpatentable over Muyres, Krishnan, and Floyd.

Appeal 2010-003662
Application 10/105,072
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ISSUES
The issues presented by this appeal are:
Does Muyres identify by a software manager other game programs
previously installed on a client electronic device independent of the software
manager and facilitate a user of the client electronic device by the software
manager to selectively initiate playing of one or more of the installed game
programs as called for in claims 1 and 110?
Does Edelman disclose a software manager that determines whether a
user usage metric is equal to or exceeds a predefined game usage metric
prior to each time a game program is launched as called for in claims 14 and
54?
ANALYSIS
Claims 1, 2, 4, 5, 41, 44, 45, 51, and 109 as obvious over Muyres and Moore
Appellants argue claims 1, 2, 4, 5, 41, 44, 45, 51, and 109 as a group.
We select claim 1 as a representative claim. Claims 2, 4, 5, 41, 44, 45, 51,
and 109 stand or fall with claim 1. Appellants argue that Muyres and Moore
do not identify by the software manager other game programs previously
installed on the client electronic device independent of the software manager
as called for in claim 1. Reply Br. 10-11; App. Br. 21-22. Appellants admit
that Muyres detects software installed prior to the software manager but
assert that neither Muyres nor Moore selectively initiates playing of installed
game programs as called for in claim 1. App. Br. 22. Appellants also assert
that Moore updates device drivers not software applications and does not
identify other game programs previously installed on a client device
independent of a software manager. Reply Br. 10-11; App. Br. 22-23.
We agree with the Examiner that Muyres has a software manager that
identifies other game programs previously installed on a client electronic
Appeal 2010-003662
Application 10/105,072
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device independent of the software manager.1 See Ans. 8, 30-32. Muyres
discloses a software manager (digital content vending machine (DCVM) 10)
that can be delivered to a user’s personal computer with an inventory 18 of
computer software products. Muyres, para. [0062, 0067]; fig. 1a.
Alternatively, inventory 18 can be pre-loaded on a PC 14 hard drive by an
OEM, added as a hard drive upgrade to a PC, or loaded on a PC from
removable media or an online source independent of, and prior to, a
customer loading DCVM 10 onto a PC 14 from a removable media, an
online source, or a new hard drive. Muyres, paras. [0068, 0286]. DCVM 10
identifies inventory 18 installed by a user or OEM prior to and independent
of installation of DCVM 10 in a village GUI. Muyres, paras. [0089-0092,
0286]. Once DCVM 10 and inventory 18 are installed, infrastructure 16 of
DCVM 10 communicates with a master application 70 resident on a master
server 48 that contains a master inventory that can be transferred as assets 22
to inventory 18 of a client 12 (PC 14). Muyres, paras. [0083, 0092]; figs. 3,
4. Again, DCVM 10 identifies game programs of master inventory and pre-
positioned assets 22 of inventory 18 that were previously installed on PC 14
independent of DCVM 10. Muyres, para. [0216]; see App. Br. 22. Thus,
Muyres discloses a software manager that identifies game programs
“installed previously” to installation of the DCVM and electronic catalog,
independent of the DCVM.
Muyres also discloses that the DCVM can selectively initiate playing
of one or more installed games, including games that were previously

1 The Examiner’s statement that Muyres “lacks specificity” but “implicitly”
teaches this claimed subject matter appears to refer to the fact that Muyres
does not provide an ipsissimis verbis disclosure of the limitations of claim 1.
However, the Examiner’s findings make clear that Muyres was relied upon
to disclose this claimed subject matter (see Ans. 8-9, 30-32).
Appeal 2010-003662
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installed independent of the DCVM. Ans. 9, 32. When a user purchases a
program from a store, infrastructure 16 of the DCVM 10 transmits and
receives a key 58 that is used to digitally unwrap a program (asset 22) stored
in inventory 18 on a PC 14 so the asset 22 is immediately ready for use,
which reduces the need for technical support calls to OEM suppliers from
customers using the asset. Muyres, paras. [0072, 0075, 0076, 0150].
Muyres thereby facilitates a user of a PC 14 by the DCVM 10 to selectively
initiate playing of installed game programs as called for in claim 1.
Accordingly, we sustain the Examiner’s rejection of claim 1 and claims 2, 4,
5, 41, 44, 45, 51, and 109, which fall with claim 1.
Claims 6, 9-13, 16, 46, 49, 50, 52, and 53 as obvious over Muyres, Moore,
and Krishnan

Appellants rely on the arguments presented for patentability of claim
1 for the patentability of dependent claims 6, 11-13, 16, 46, 49, 50, 52, and
53. App. Br. 26-27. We find these arguments unpersuasive for the reasons
provided supra.
Appellants present separate arguments for patentability of claims 9
and 10. App. Br. 24. Claim 9 is representative. Claim 9 depends from
claim 6 and calls for the software manager to display one or more offers to
download additional game programs or play an installed game program
while another game program is being downloaded. The Examiner found that
Krishnan displays one or more offers to download additional game programs
and determined it would have been obvious to display such a screen during a
program download to stimulate interest in purchasing other programs. Ans.
16 (citing Krishnan, col. 3, ll. 17-19; figs. 9, 11-18). The Examiner relied on
Appeal 2010-003662
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Figure 5 of Floyd2 as evidence of a suggestion of such a modification by its
displays of a screen for a trial version of a program and an invitation to a
user to purchase a fully functional application. Ans. 16.
We agree with Appellants that none of Muyres, Moore, or Krishnan
disclose a software manager that displays “one or more offers to download
additional game programs or play one of the installed game programs, while
the game program is being downloaded” as recited in claim 9. App. Br. 24.
The Examiner acknowledges that Krishnan does not do so. Ans. 16. Floyd
displays a screen inviting a user to purchase a fully functional copy of a trial
version of a program (Figure 5) but does not display this offer while a game
program is being downloaded. App. Br. 25. Muyres identifies previously-
installed programs and manages OEM updates (Ans. 16-17) while Moore
downloads software in the background as a user runs installed software
(Ans. 35-36). As such, we cannot sustain the rejection of claim 9 or claim
10 which depends therefrom.
Claims 14 and 54 as obvious over Muyres, Moore, Krishnan, and Edelman
Claim 14 depends indirectly from claim 1 and recites “determining by
the software manager, whether said user usage metric is equal to or exceeds
a predefined game usage metric . . . prior to each time the software manager
launches said partially enabled version of the game program.” Claim 54,
which depends indirectly from independent claim 41, recites a similar
limitation. App. Br. 25. Appellants argue that Edelman checks a license
each day, but not prior to each time a game is launched. App. Br. 25.
These arguments are not persuasive because Edelman stores a usage
metric (trial license expiration date, col. 10, ll. 34-39) on a smart card and

2 The Examiner does not include Floyd in the listing of art relied upon in the
statement of this ground of rejection.
Appeal 2010-003662
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determines if the usage metric has been exceeded before a user can run the
software (Edelman, col. 11, ll. 4-19). Ans. 20, 37. A user inserts a smart
card with licensing information into a smart card reader of a client computer
and a client program verifies that the user is authorized to use the software
and that the authorized period of use has not expired. Once verification is
completed, the software can be used. Edelman, col. 14, ll. 23-54. As such,
we sustain the Examiner’s rejection of claims 14 and 54.
Claim 15 as obvious over Muyres, Moore, Krishnan, and Floyd
Claim 15 depends indirectly from claim 1 and recites displaying “an
offer to purchase a more enabled version of the game program when the
software manager determines said user usage metric is equal to or exceeded
said predefined game usage metric.” Appellants argue that the Examiner
speculates that Floyd’s offer screen could be displayed when the game has
been used a certain number of days or a certain number of times. App. Br.
26. Appellants also argue that Floyd does not disclose displaying this offer
“when the software usage metric equals or exceeds a predetermined usage
metric” as claimed in claim 5. App. Br. 26.
We agree with the Examiner that Floyd displays a screen with a trial
version of a software product and an offer to buy a fully usable version.
Ans. 21-22, 37-38. Floyd displays the offer to buy the fully usable version
during the trial period with a Buy Now button 507 and a trial usage meter
511 that shows the days or uses remaining for the trial version. In this way,
the offer to purchase the fully usable version is displayed during the trial
period and when the trial period expires. See Floyd, col. 5, ll. 1-15; fig. 5.
Accordingly, we sustain the Examiner’s rejection of claim 15.

Appeal 2010-003662
Application 10/105,072
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Claims 110, 111, 116, 117, and 122 as anticipated by Muyres
Appellants argue claims 110, 111, 116, 117, and 122 as a group.
Reply Br. 5-10; App. Br. 17-20. We select claim 110 as a representative
claim. Claims 111, 116, 117, and 122 stand or fall with claim 110. Claim
110 recites a method for managing software on a client electronic device
including “identifying by the software manager game programs installed on
the client electronic device independent of the software manager, based at
least in part on game titles of the electronic catalog.” The Examiner found
that Muyres discloses this subject matter as for claim 1. Ans. 22-23, 30-32.
Appellants argue that the DCVM of Muyres only manages inventory
assets associated with the DCVM and not software installed independent of
the DCVM by an OEM. Reply Br. 7-9; App. Br. 18. Appellants also argue
that the DCVM does not manage OEM assets that are installed independent
of the DCVM but merely updates its own inventory. Reply Br. 8.
For the reasons discussed above for claim 1, we also agree with the
Examiner that Muyres discloses a software manager that identifies game
programs installed on a client electronic device independent of the software
manager as called for in claim 110. Claim 110 does not recite any particular
relationship between the software manager and the game programs and we
decline to read any such features into claim 110. The DCVM 10 of Muyres
identifies programs pre-installed on a client device independent of DCVM
10 (Muyres, paras. [0068, 0072-0076, 0089-0092, 0150]) that correspond to
a catalog of assets in a master application (Muyres, paras. [0092, 0216]).
Assets can comprise a wide range of digital products preloaded and updated
independent of DCVM 10. See Muyres, paras. [0064, 0090, 0092].
Accordingly, we sustain the Examiner’s rejection of claim 110 and
claims 111, 116, 117, and 122, which fall with claim 110.
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Claims 112, 113, 118, and 119 as obvious over Muyres and Krishnan
Claims 112 and 113 depend indirectly from claim 110 and recite a
method for monitoring by the software manager one or more usage metrics
of a partially enabled version of a game program and determining whether
the usage metric is equal to or exceeds a predefined game usage metric.
Claims 118 and 119 depend indirectly from claim 116 and recite a software
manager capable of performing these functions. Appellants argue that
claims 112, 113, 118, and 119 are allowable at least by dependency.
Because we sustain the rejection of claims 110 and 116, this argument is not
persuasive. Appellants’ argument that neither Muyres nor Krishnan allows a
user to manage legacy games with games installed by the software manager
(App. Br. 26) is not commensurate with the scope of claims 112, 113, 118,
or 119. Muyres can make a program available for a maximum number of
tries, time, or duration, which would involve monitoring whether a usage
metric equals or exceeds a predefined usage metric. Muyres, para. [0150];
Ans. 26, 38. Krishnan monitors electronic license certificates to determine if
an ELC is valid and a license use period has expired. Krishnan, col. 18, ll.
45-63; Ans. 26, 38. As such, we sustain the Examiner’s rejection of claims
112, 113, 118, and 119.
Claims 114 and 120 as obvious over Muyres, Krishnan, and Edelman
Claims 114 and 120 depend indirectly from independent claims 110
and 116 respectively. Appellants argue that claims 114 and 120 are
allowable at least by their dependency. App. Br. 26-27. Because we sustain
the Examiner’s rejection of claims 110 and 116, these arguments are not
persuasive.

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Claims 115 and 121 as obvious over Muyres, Krishnan, and Floyd
Claims 115 and 121 depend indirectly from independent claims 110
and 116 respectively. Appellants argue that claims 115 and 121 are
allowable at least by their dependency. App. Br. 26-27. Because we sustain
the Examiner’s rejection of claims 110 and 116, these arguments are not
persuasive.
CONCLUSION
Muyres discloses a method of managing software that identifies by the
software manager other game programs that are installed independent of the
software manager and facilitates a user of the client electronic device by the
software manager to selectively initiate playing of one or more of the
installed game programs as called for in claims 1 and 110.
Edelman discloses a software manager that determines whether a user
usage metric is equal to or exceeds a predefined game usage metric prior to
each time a game program is launched as called for in claims 14 and 54.
DECISION
The Examiner’s decision to reject claims 1, 2, 4, 5, 41, 44, 45, 51, and
109 under 35 U.S.C. § 103(a) as being unpatentable over Muyres and Moore
is AFFIRMED.
The Examiner’s decision to reject claims 6, 11-13, 16, 46, 49, 50, 52,
and 53 under 35 U.S.C. § 103(a) as being unpatentable over Muyres, Moore,
and Krishnan is AFFIRMED.
The Examiner’s decision to reject claims 9 and 10 under § 103(a) as
being unpatentable over Muyres, Moore, and Krishnan is REVERSED.
Appeal 2010-003662
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The Examiner’s decision to reject claims 14 and 54 under 35 U.S.C.
§ 103(a) as being unpatentable over Muyres, Moore, and Krishnan in view
of Edelman is AFFIRMED.
The Examiner’s decision to reject claim 15 under § 103(a) as being
unpatentable over Muyres, Moore, and Krishnan in view of Floyd is
AFFIRMED.
The Examiner’s decision to reject claims 110, 111, 116, 117, and 122
under 35 U.S.C. § 102(e) as being anticipated by Muyres is AFFIRMED.
The Examiner’s decision to reject claims 112, 113, 118, and 119
under § 103(a) as being unpatentable over Muyres and Krishnan is
AFFIRMED.
The Examiner’s decision to reject claims 114 and 120 under § 103(a)
as being unpatentable over Muyres, Krishnan, and Edelman is AFFIRMED.
The Examiner’s decision to reject claims 115 and 121 under § 103(a)
as being unpatentable over Muyres, Krishnan, and Floyd 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-IN-PART

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