11315046 (B.P.A.I. Apr. 29, 2010)

Ex Parte Rusman et al

Board of Patent Appeals and InterferencesApr 29, 2010

11315046 (B.P.A.I. Apr. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE 1 ____________________ 2 3 BEFORE THE BOARD OF PATENT APPEALS 4 AND INTERFERENCES 5 ____________________ 6 7 Ex parte MUJIANTO RUSMAN, DAVID MICHAEL, 8 and KATHERINE REICHERT 9 ____________________ 10 11 Appeal 2009-005789 12 Application 11/315,046 13 Technology Center 3600 14 ____________________ 15 16 Decided: April 29, 2010 17 ____________________ 18 19 20 Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and JOSEPH A. 21 FISCHETTI, Administrative Patent Judges. 22 23 CRAWFORD, Administrative Patent Judge. 24 25 26 DECISION ON APPEAL27 Appeal 2009-005789 Application 11/315,046 2 STATEMENT OF THE CASE 1 Appellants appeal under 35 U.S.C. § 134 (2002) from a Final 2 Rejection of claims 1, 3-7, and 9-12. We have jurisdiction under 35 U.S.C. 3 § 6(b) (2002). 4 Appellants invented systems and methods for activating licenses for 5 software preloaded onto information handling systems (Abstr.). 6 Independent claim 1 under appeal reads as follows: 7 1. A method for a manufacturer of an 8 information handling system to pay royalties for 9 software preloaded onto an information handling 10 system comprising: 11 determining when software that is preloaded 12 onto the information handling system is executed 13 by a user; 14 paying a royalty for the software when the 15 software is executed by the user so as to make the 16 royalty payment based upon a point of use of the 17 software; and, 18 determining when a component needed to 19 use the software is not present in the information 20 handling system and if the component is not 21 present, then not paying the royalty. 22 23 The prior art relied upon by the Examiner in rejecting the claims on 24 appeal is: 25 Cheston US 7,143,067 B1 Nov. 28, 2006 26 The Examiner rejected claims 1, 3-7, and 9-12 under 35 U.S.C. 27 § 102(b) as being anticipated by Cheston. 28 We REVERSE. 29 Appeal 2009-005789 Application 11/315,046 3 ISSUE 1 Did the Examiner err in asserting that the conversion of selected 2 software from unusable form into usable form in Cheston inherently 3 corresponds to “determining when software that is preloaded onto the 4 information handling system is executed by a user,” as recited in 5 independent claims 1 and 7? 6 7 FINDINGS OF FACT 8 Specification 9 Appellants invented systems and methods for activating licenses for 10 software preloaded onto information handling systems (Abstr.). 11 A module may determine if the software is not executed or activated. 12 If the software is not executed or activated, then a royalty payment is not 13 necessary (5:24-26). 14 A flow chart of a system 300 for determining when software that is 15 preloaded onto an information handling system is actually executed by a 16 user and to provide a process in which royalties are only paid for software 17 that is actually executed by a user of the information handling system is 18 disclosed (6:20-23). 19 20 Cheston 21 Cheston discloses systems and methods for initial deployment of 22 personal computers loaded with selected software ready for use, throughout 23 a diverse organization or to a diverse set of uses, where different users 24 require different software (col. 1, ll. 30-38). 25 Appeal 2009-005789 Application 11/315,046 4 The system and method has the advantage that a listing of the users 1 and their respective software is maintained so that upgrades can be managed 2 and computers with particular combinations of loaded software can be 3 generated if needed. The listing of software installed for use on computers 4 can also be used for generating a list of machines on which royalties are to 5 be paid, which can serve as both a listing of royalties due and a “‘receipt’” 6 showing the computers on which a royalty for the listed software has been 7 paid (col. 3, l. 63 through col. 4, l. 5). 8 Once the software for a particular personal computer has been 9 selected at block 160, then the selected software is converted from unusable 10 form into usable form (col. 7, ll. 54-56). 11 The concept is that any given software is converted into usable form 12 only when there is a mechanism to provide for the payment of royalties for 13 the particular software (col. 8, ll. 15-18). 14 15 PRINCIPLES OF LAW 16 Inherency 17 To establish inherency, the extrinsic evidence must make clear that 18 the missing descriptive matter is necessarily present in the thing described in 19 the reference, and that it would be so recognized by persons of ordinary 20 skill. In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). 21 22 ANALYSIS 23 We are persuaded that the Examiner erred in asserting that the 24 conversion of selected software from unusable form into usable form in 25 Cheston inherently corresponds to “determining when software that is 26 Appeal 2009-005789 Application 11/315,046 5 preloaded onto the information handling system is executed by a user,” as 1 recited in independent claims 1 and 7 (App. Br. 3-5). Specifically, we 2 disagree with the Examiner that “[i]f a user of Cheston was to convert a 3 program, it would be inherent within the reference that the program would 4 also be executed” (Exam’r’s Ans. 9). Conversion can occur in the absence 5 of execution, and it certainly does not follow that execution necessarily 6 follows conversion as required for inherency. Indeed, the Specification 7 makes distinctions between preloading, activation, and execution of software 8 (Spec. 5:24-26, 6:20-23). 9 Moreover, even if execution necessarily follows conversion, the cited 10 portions of Cheston only disclose determining when conversion occurs, by 11 placing the computers with converted software on a list for royalties, and not 12 when execution occurs as recited in independent claims 1 and 7. As the 13 cited portions of Cheston do not determine when execution occurs, only that 14 execution will occur on a particular machine some indeterminate time in the 15 future because conversion has occurred, we will not sustain this rejection. 16 17 CONCLUSION OF LAW 18 The Examiner did err in rejecting claims 1, 3-7, and 9-12 under 35 19 U.S.C. § 102(b). 20 21 DECISION 22 The decision of the Examiner to reject claims 1, 3-7, and 9-12 is 23 reversed. 24 25 REVERSED 26 Appeal 2009-005789 Application 11/315,046 6 hh 1 2 3 HAMILTON & TERRILE, LLP 4 P.O. BOX 203518 5 AUSTIN, TX 78720 6 7