Ex parte Beetcher et al.

Board of Patent Appeals and Interferences

Oct 30, 1998

08011042 (B.P.A.I. Oct. 30, 1998)

Application for patent filed January 29, 1993. According to1
appellants, this application is a continuation of Application 07/629,295,
filed December 14, 1990 (Abandoned).
1
Paper No. 28
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(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte ROBERT C. BEETCHER,
MICHAEL J. CORRIGAN,
FRANCIS J. REARDON, JR. and
JAMES W. MORAN
______________
Appeal No. 95-1888
Application 08/011,0421
_______________
ON BRIEF
_______________
Before THOMAS, KRASS, and CARMICHAEL, Administrative Patent
Judges.
THOMAS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants have appealed to the Board from the examiner’s
Appeal No. 95-1888
Application 08/011,042
2
final rejection of claims 1-26, which constitute all the
claims in the application.
Representative claim 1 is reproduced below:
1. An apparatus for controlling the use of a software
module executing on a computer system, said computer system
comprising:
means for granting entitlement for said computer system
to execute said software module, said software module being a
program unit that is discrete and identifiable with respect to
compiling, combining with other units, and loading;
a plurality of independent triggering means in said
software module for triggering entitlement verification;
entitlement verification means, responsive to each of
said plurality of independent triggering means, for verifying
that said computer system has entitlement to execute said
software module; and
means, responsive to said entitlement verification means,
for aborting execution of said software module if said
entitlement verification means determines that said computer
system lacks entitlement to execute said software module.
There are no references relied on by the examiner.
Claims 1-26 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. As variously
expressed by the examiner in the final rejection and
subsequent answers, the examiner considers the claims to be
directed to mathematical algorithms or merely abstract
Appeal No. 95-1888
Application 08/011,042
3
manipulations occurring within a computer.
Rather than repeat the positions of the appellants and
the examiner, reference is made to the various briefs and
answers,
as well as the final rejection, for the respective details
thereof.
OPINION
Generally, for the reasons expressed by appellants in the
briefs on appeal, we reverse the outstanding rejection of
claims 1-26 under 35 U.S.C. § 101.
At the outset, we do not agree with the examiner’s view
that the claims are directed merely to mathematical
algorithms, per se. To the extent the claims recite any
mathematical algorithms or operations, they do so indirectly.
We also do not agree with the examiner’s characterization that
the claims on appeal merely involve abstract manipulations on
or within a computer. Each independent claim 1, 9, 16 and 20
on appeal in some way relates to controlling access to
software executing on a general purpose digital computer for
the purpose of preventing unlicensed persons from executing
Appeal No. 95-1888
Application 08/011,042
4
the software. Generally speaking, causing or controlling a
computer’s operation or execution of programs there within is
within the technological arts. Specifically, granting or
denying accessibility to data or software within or on a
computer system is a practical application within 35 U.S.C. §
101 of any mathematical operations so recited. Between the
preamble recitations and the recitations within the body of
each independent claim, there is an integration of the
operations to control in some way the operation of computer
programs within a given machine, namely the computer executing
the software.
This reasoning is true even for the article of manufacture-
type claims 16-19 involving a program product apparatus
including the recitation of at least one software module
recorded on recording media.
The examiner’s reasoning in part was based upon the so-
called Freeman-Walter-Abele test. However, the Court of
Appeals for the Federal Circuit recently indicated in State
Street Bank & Trust Co. v. Signature Financial Group, Inc.,
149 F.3d 1368, 1374, 47 USPQ2d 1596, 1601 (Fed. Cir.
1998), that “application of the test could be misleading,
Appeal No. 95-1888
Application 08/011,042
5
because a process, machine, manufacture, or composition of
matter employing a law of nature, natural phenomenon, or
abstract idea is patentable subject matter even though a law
of nature, natural phenomenon, or abstract idea would not, by
itself, be entitled to such protection.” In other words, “a
claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical
formula, computer program or digital computer.” Diamond v.
Diehr, 450 U.S. 175, 187, 209 USPQ 1, 8 (1981). Additionally,
the Court in State Street indicated that the focus of a
statutory subject matter analysis should be “on the essential
characteristics of the subject matter, in particular, its
practical utility.” State Street, 149 F.3d at 1375, 47 USPQ2d
at 1602.
In view of the foregoing, the decision of the examiner
rejecting claims 1-26 under 35 U.S.C. § 101 is reversed.
REVERSED
Appeal No. 95-1888
Application 08/011,042
6
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
ERROL A. KRASS ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JAMES T. CARMICHAEL )
Administrative Patent Judge )

JDT/cam
Appeal No. 95-1888
Application 08/011,042
7
Roy W. Truelson
IBM Corporation
Department 917
3605 Highway 52 North
Rochester, MN 55901-7829