Ex parte Manduley

Board of Patent Appeals and Interferences

Feb 26, 1998

07813080 (B.P.A.I. Feb. 26, 1998)

Application for patent filed December 24, 1991,1
entitled "REMOTE ACTIVATION OF SOFTWARE FEATURES IN A DATA
PROCESSING DEVICE."
- 1 -
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
_______________
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte FLAVIO M. MANDULEY

Appeal No. 95-4184
Application 07/813,0801

ON BRIEF

Before JERRY SMITH, BARRETT, and FLEMING, Administrative
Patent Judges.
BARRETT, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 95-4184
Application 07/813,080
- 2 -
This is a decision on appeal under 35 U.S.C. § 134 from
the final rejection of claims 19-23, 27-33, and 37, all of the
claims pending in the application. Claims 1-18, 24-26, and
34-36 have
been cancelled. The Amendment after Final Rejection received
January 6, 1995 (Paper No. 11), has not been entered.
We reverse.
The disclosed invention is directed to a method for
remotely activating an optional feature, such as a software
application program, in a data processing device. The method
includes the step of automatically ordering additional
necessary hardware for the data processing device if
activation of the optional feature requires additional
necessary hardware. For example, if the requested optional
feature was an envelope printing feature which required an
envelope printer peripheral, and the hardware was not present,
an order would automatically be placed for the hardware;
specification, pages 12-13.
Claim 19 is reproduced below.
19. A method of activating an optional feature in a data
processing device to enable said data processing device
to access said optional feature for execution by said
data processing device, said optional feature being
Appeal No. 95-4184
Application 07/813,080
- 3 -
stored in said data processing device, said method
comprising the steps of:
(a) receiving a request to activate said optional
feature;
(b) in response to said activation request generating an
activation request code, said activation request code
including information which identifies said data
processing device and said optional feature;
(c) transmitting said activation request code to a data
center; said data center responding to receipt of said
activation request code to generate an activation code,
said activation code identifying said optional feature;
and
(d) inputting said activation code to said data
processing device, said data processing device responding
to said activation code to enable access to said optional
feature; whereby,
(e) activation of said optional feature occurs under
control of said data center; and,
(f) and the further step of automatically ordering
additional necessary hardware for said data processing
device if activation of said optional feature in said
data processing device requires said additional necessary
hardware.
The examiner relies on what the examiner considers to be
admitted prior art and the following prior art references:
Dunham et al. (Dunham) 4,791,565 December 13, 1988
Robert et al. (Robert) 4,937,863 June 26, 1990
Wilson et al. (Wilson) 5,113,222 May 12, 1992
(filed January 22, 1991)
Calvert et al. (Calvert) 5,287,505 February 15, 1994
(effective filing date March 17, 1988)
Appeal No. 95-4184
Application 07/813,080
- 4 -
Claims 19-23 and 27-33 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Robert or Dunham in view of
Calvert and what the examiner considers to be admitted prior
art.
Claim 37 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Robert or Dunham in view of Calvert and
Wilson.
We refer to the Examiner's Answer (Paper No. 15) for a
statement of the examiner's position and to the Brief (Paper
No. 14) for appellant's position.
OPINION
We agree with the examiner that Robert and Dunham
disclose steps (a) through (e) of claims 19 and 37, but do not
disclose step (f), the automatic ordering of additional
necessary hardware required by the activation of the optional
feature. The "optional feature" corresponds to a particular
software program that the user wants to run in Robert and
Dunham.
In Robert (col. 3, lines 41-47):
When a user wishes to use a licensed program 14, a
GRANT LICENSE request message is generated which requests
information as to the licensing status of the licensed
Appeal No. 95-4184
Application 07/813,080
- 5 -
program 14. The GRANT LICENSE request message is
transmitted to the licensing policy module 15, which
notifies the operating system of the request.
The policy module receiving the GRANT LICENSE request (also
shown as step 50 in figures 4A-1) corresponds to claimed
step (a). "The operating system 13, in turn, passes the
request, along with the system marketing model of the specific
system 16 being used by the user, to the license management
facility 10 which determines whether use of the program is
permitted under the license." Col. 3, lines 47-51. The
system is identified by the system marketing model (SMM) code
(col. 2, lines 60-62). Thus, the action of the operating
system sending the request and the SMM to the license
management facility (also shown in step 52 in figure 4A-1)
corresponds to claimed step (b) and the "transmitting" step in
claimed step (c).
In Robert, if the license management facility determines
that the usage of the desired licensed program is permitted
under usage restrictions "the license management facility
transmits a usage approved response to the operating
system 13" (col. 4, lines 31-33). The step of the license
management facility transmitting a positive response to the
Appeal No. 95-4184
Application 07/813,080
- 6 -
operating system (also shown as step 76 in figure 4A-3)
corresponds to the steps of the data center responding to the
receipt of a request to generate an activation code
identifying the software in claimed step (c) and the step of
inputting the activation code to the data processing device in
claimed step (d). The operating system in Robert then
transmits the approval to the licensing policy model, which
then permits usage of the licensed program (shown as steps 77
and 78 in figure 4A-4), which corresponds to the step of the
data processing step responding to the activation code to
enable access to the optional feature in claimed step (d).
Therefore, Robert activates an optional feature (a software
program) under control of a data center (the license
management facility) as recited in the "whereby" clause of
step (e).
In Dunham, a software protection device 10 monitors the
security port of central processor 16. When a terminal 14
requests authorization to run a particular program, the
central processor issues a request on security lines 18 to
device 10 to inquire whether running of the program is
authorized (col. 4, line 65, to col. 5, line 7). This
Appeal No. 95-4184
Application 07/813,080
- 7 -
corresponds to claimed steps (a), (b), and the "transmitting"
step of step (c), where the device 10 is the data center. If
the request is within the authorization provided by the
software license, device 10 provides a response to the central
processor 16 indicating that operation of the program is
authorized and the program is then permitted to run (col. 5,
lines 12-18). This corresponds to the remainder of claimed
step (c) and to steps (c), (d), and (e).
We agree with the examiner's handling of appellant's
arguments regarding Robert and Dunham in the Examiner's
Answer. In particular, we agree that appellant does not point
to the limitations in the claims that are relied on to support
the arguments and we do not find supporting limitations;
therefore, the arguments are not commensurate in scope with
the claims. See In re Self, 671 F.2d 1344, 1348, 213 USPQ 1,
5 (CCPA 1982) ("Many of appellant's arguments fail from the
outset because . . . they are not based on limitations
appearing in the claims."). For example, the arguments about
a "license" seem to ignore that Robert performs the recited
steps; it does not make any difference that the steps are
performed in connection with a licensing arrangement or other
Appeal No. 95-4184
Application 07/813,080
- 8 -
additional criteria. Moreover, although appellant's
application does not mention that activation is based on
licensing of software, since "[s]oftware is typically sold
under license" (Robert, col. 1, lines 45-46), it is probable
that part of the basis for authorization in appellant's method
would implicitly involve licensing.
The examiner acknowledges that Robert and Dunham do not
disclose step (f) and applies Calvert as evidence of
obviousness of automatically ordering parts (Examiner's
Answer, page 4). Appellant argues that "Calvert is teaching a
'repair' and is not teaching that a software/hardware
configuration analysis can be made and that hardware can be
automatically ordered at the customer site to overcome a
deficiency in the hardware configuration required by the
customer program selection" (Brief, pages 4-5). The examiner
disagrees with the argument for the following reasons
(Examiner's Answer, page 10):
First, Calvert clearly teaches "configuration analysis"
in that it is only by knowing what the correct
configuration is that an incorrect configuration that
needs repair can be determined. Second, if a part is
needed in order for a computer system to operate
correctly, the [sic, then] clearly the part is a
["]'deficiency in the hardware configuration'".
Appeal No. 95-4184
Application 07/813,080
- 9 -
The examiner appears to be responding to the wording of
appellant's argument rather than the claim language.
Claims 19 and 37 both require "automatically ordering
additional necessary hardware" upon the condition that "said
optional feature in said data processing system requires said
additional necessary hardware." This is the language that
supports appellant's argument about "a deficiency in the
hardware configuration required by the customer program
selection" (Brief, page 5) Calvert provides a system and
method for automated servicing of data processing systems.
The customer system detects data concerning its own
configuration and problem symptoms, which are communicated to
a central service data processing system. The system service
automatically orders hardware repair modules and software
fixes (abstract; col. 11, lines 50-60). However, Calvert only
orders repair or replacement hardware for failing hardware
components of the customers system and does not order
additional hardware. Nor does Calvert disclose or suggest
ordering hardware upon the condition that the activated
"optional feature in said data processing system requires said
additional necessary hardware." Calvert does not disclose
Appeal No. 95-4184
Application 07/813,080
- 10 -
activation of an optional feature. The examiner does not
address the limitations about additional hardware required by
the user's selection of an optional feature. Thus, we
conclude that the examiner has failed to establish a
prima facie case of obviousness with respect to independent
claims 19 and 37. The rejections of claims 19-23, 27-33, and
37 are reversed.
REVERSED
JERRY SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MICHAEL R. FLEMING )
Administrative Patent Judge )
Appeal No. 95-4184
Application 07/813,080
- 11 -
Nathaniel Levin
PITNEY BOWES INC.
Intellectual Property &
Technology Law Dept.
One Elmcroft Road
Stamford, CT 06926-0700