Ex Parte Burkhart et al

Board of Patent Appeals and Interferences

Mar 16, 2011

11277640 (B.P.A.I. Mar. 16, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL J. BURKHART, DANIEL G. EISENHAUER,
DANIEL M. SCHUMACHER, and THOMAS J. WATSON
____________

Appeal 2010-002695
Application 11/277,640
Technology Center 3700
____________

Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and JOSEPH
A. FISCHETTI, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-002695
Application 11/277,640

2
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1 to 20. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM.

BACKGROUND
Appellants’ invention is directed to a method and system for creating
a virtual license document for material subject to an end user license
agreement (Spec. 1).
Claim 1 is illustrative:
1. A computer-implemented method for
creating a virtual license document for material
subject to an end-user license agreement
(‘EULA’), the method comprising:
identifying a licensing clause for the virtual
license document;
creating metadata describing the licensing
clause; and
inserting in a markup document the
licensing clause and the metadata describing the
clause.

Appellants appeal the following rejection:
Claims 1 to 20 under 35 U.S.C. § 103(a) as unpatentable over Gaetano
(US Pub. 2005/0038752 A1, pub. Feb. 17, 2005) in view of Levin (US Pub.
2005/0125359 A1, pub. Jun. 9, 2005) and James (US Pub. 6,959,289 B1,
pub. Oct. 25, 2005).

Appeal 2010-002695
Application 11/277,640

3
ISSUE
Did the Examiner err in rejecting the claims because Gaetano does not
disclose metadata describing a licensing clause and because James does not
disclose inserting a licensing clause and metadata describing the clause into
a markup document?

FACTUAL FINDINGS
We adopt all of the Examiner’s findings as our own. (Ans. 3 to 5).
We add the following findings of fact:
Gaetano at paragraph [0012] describes a virtual warehouse that holds
software licenses and features. Gaetano discloses that the virtual warehouse
holds a plurality of licensing components (para. [0017]). A license is
created that is specific to the end-user and the target device (para. [0058]).
The target devices each have a target identifier 1304 (Fig. 13).
Additional findings may appear in the Analysis that follows.

ANALYSIS
We are not persuaded of error on the part of the Examiner by
Appellants' argument that Gaetano does not disclose metadata describing a
licensing clause. We agree with the Examiner that Gaetano discloses
creating metadata in that Gaetano discloses an identifier for the device
associated with an existing license. The identifier of the device is data about
data and thus is metadata.
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that Gaetano does not disclose metadata describing the
licensing clause. The Examiner does not rely on Gaetano for this teaching.
Appeal 2010-002695
Application 11/277,640

4
The Examiner relies on Gaetano for creating metadata describing a license.
The Examiner found that Gaetano fails to teach the step of identifying a
licensing clause (Ans. 4). The Examiner relies on Levin for supplying this
teaching missing from Gaetano. As such, Appellants’ argument that
Gaetano does not disclose this subject matter is not persuasive because an
applicant cannot show non-obviousness by attacking references individually
where, as here, the rejections are based on a combination of references. In
re Keller, 642 F.2d 413, 426 (CCPA 1981).
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that James does not disclose inserting a licensing
clause and metadata describing the clause into a markup document. We
initially note that the Examiner relies on the combined teachings of Gaetano,
Levin, and James for teaching the step of inserting a licensing clause and
metadata describing the clause into a markup document. Therefore, the
argument that James alone does not describe this subject matter is not
persuasive of error on the part of the Examiner because as we stated above
one cannot show non-obviousness by attacking the references individually
when the rejection is based on the combined teachings of references. In
regard to the argument that James does not disclose inserting anything into a
markup document, we agree with the Examiner that the disclosure in James
of invoking legal rights using a hypertext reference is a disclosure of
inserting something into a markup document. We note that James at column
11, 8 to 20 discloses that legal terms of the agreement are included in a
license agreement as HTML (hypertext markup language) or XML format
text.
Appeal 2010-002695
Application 11/277,640

5
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 1. We will also sustain the rejection as it is directed to the remaining
claims because the Appellants have not argued the separate patentability of
these claims.

DECISION
The decision of the Examiner 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). See 37 C.F.R.
§ 1.136(a)(1).
AFFIRMED

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