Ex Parte Patil

Patent Trial and Appeal Board

Jun 30, 2017

13381723 (P.T.A.B. Jun. 30, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/381,723 12/30/2011 Mandar Patil 1247-003PUS 2752
7590 07/05/201729973
CRGO LAW
ATTN: STEVEN M. GREENBERG, ESQ.
7900 Glades Road
SUITE 520
BOCA RATON, EL 33434
EXAMINER
HUANG, TSAN-YU J
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
07/05/2017 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):
docketing@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MANDAR PATIL
Appeal 2015-005367
Application 13/381,723
Technology Center 3600
Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and
AMEE A. SHAH, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1—7, 9, 10, 12, 13, and 15, which are all the claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We AFFIRM.
Appeal 2015-005367
Application 13/381,723
THE INVENTION
The Appellant’s claimed invention is directed to controlling software
application usage (Spec. 1, line 3). Claim 1, reproduced below, is
representative of the subject matter on appeal.
1. A method to ensure authorized usage of software
comprising:
responsive to a request to re-install a previously installed
computer program, establishing a communicative link over a network
from a server to a computer onto which the computer program has
been requested to be re-installed;
subsequent to establishing the link, receiving from the computer a
software activation file comprising a customer id of a corresponding
customer, a registered email id of the corresponding customer, a
software id of a computer program to be authorized for usage, an
installation id of the computer program, a period of authorized usage
of computer program and a motherboard id of a motherboard of the
computer;
comparing the software activation file to a record in a validation
database; and,
authorizing re-installation of the computer program if the
validation database indicates that the computer program is authorized
for use, but otherwise discontinuing further re-installation of the
computer program.
THE REJECTIONS
The following rejections are before us for review:
1. Claims 1—7, 9, 10, 12, 13, and 15 are rejected under 35 U.S.C.
§112, first paragraph, for failure to show possession of the claimed
invention.
2. Claims 1—7, 9, 10, 12, 13, and 15 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Padole (US 6,993,664 B2, issued Jan. 31,
2006) and Minear (US 7,120,429 B2, issued Oct. 10, 2006).
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Appeal 2015-005367
Application 13/381,723
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence.1
ANALYSIS
Rejection under 35 U.S.C. § 112, first paragraph
The Examiner in the Final Rejection at page 7 has determined that the
Specification lacks support to show possession of the invention for the
following claim limitation:
responsive to a request to re-install a previously installed computer
program, establishing a communicative link over a network from a
server to a computer onto which the computer program has been
requested to be re-installed.
(Claim 1).
In contrast, the Appellant argues that support for this claim limitation
is found in the Specification at page 2, lines 4—13 (App. Br. 9-13).
We agree with the Examiner. Here the citation to the Specification at
page 2, lines 4—13 does disclose software validation but not “responsive to a
request to re-install a previously installed computer program” as claimed.
For these reasons this rejection of claim 1 and its dependent claims is
sustained.
1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Appeal 2015-005367
Application 13/381,723
Rejection under 35 U.S.C. § 103(a)
The Appellant at pages 14—18 of the Appeal Brief argue the rejection
of claim 1 is improper because the cited prior art fails to disclose the limitation
for the software activation file to include:
a customer id of a corresponding customer, a registered email id of
the corresponding customer, a software id of a computer program to
be authorized for usage, an installation id of the computer program, a
period of authorized usage of computer program and a motherboard
id of a motherboard of the computer.
(Claim 1, emphasis added).
In contrast, the Examiner has determined that the argued claim
limitation is drawn to non-functional descriptive material, or disclosed in
Padole at column 8:34—9:6, and col. 9:15—56 (Final Rej. 9, Ans. 4—6).
We agree with the Examiner. The argued claim limitation is part of
mere data that are received from the computer in a “software activation file.”
Here, the argued claim limitations for the “customer id”, “email id”,
“software id”, “installation id”, data field for the “period of usage”, and
“motherboard id” are non-functional descriptive material that does not alter
how the substrate functions.
Regardless, Padole at these portions does disclose a customer id
(col. 9:34—39), software id (col. 8:34—36), installation id (col. 9:5), period of
authorized usage (col. 9:22-25) and hardware ID’s. Padole discloses using
optional customer information such as name and address at col. 9:34—38, but
not the use, specifically, of an “email id.” Here, the use of an email id to
identify a customer would have been readily inferred in the combination by
one of ordinary skill in the art to enable identification without requiring the
user’s name and physical address. Similarly, the use of the hardware ID to
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Appeal 2015-005367
Application 13/381,723
include a “motherboard ID” would have been an obvious use in the system
to identity the computer used. For this reason this rejection of claim 1 is
sustained. The Appellant has provided the same arguments for the
remaining claims, and the rejection of these claims is sustained as well.
CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting the claims as listed in the Rejection section above.
DECISION
The Examiner’s rejections of claims 1—7, 9, 10, 12, 13, and 15 are
sustained.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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