Ex Parte Clement

Board of Patent Appeals and Interferences

Jan 31, 2006

09518787 (B.P.A.I. Jan. 31, 2006)

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The opinion in support of the decision being entered today
was not written for publication and
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte KURT CLEMENT
_____________

Appeal No. 2006-0174
Application No. 09/518,787
______________

ON BRIEF
_______________

Before: THOMAS, BARRETT and NAPPI, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134 of the final rejection of
claims 1 through 29. For the reasons stated infra we reverse the examiner’s
rejection of these claims.
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Application No. 09,518,787

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Invention

The invention relates to a method of distributing software with a computer
system. The software is recorded on a fixed media within the computer prior to
transfer of the computer to the user. See page 6 of appellant’s specification.
Upon detection of the use of the software on the computer system, a party
authorized to grant access to the software is queried to determine the user’s
authority to access the software. If the user is authorized, the user is granted
access to the software, and the authority is recorded on the computer to be used
for subsequent access to the software. See page 7 of appellant’s specification.
Claim 1 is representative of the invention and is reproduced below:
1. A method of distributing software with a computer system to a user
comprising the acts of:
recording data on a fixed medium in the computer system;
providing for transfer of the computer system to the user; and
controlling access to the data in the computer system by:
in response to receiving a first request for access to the data,
contacting a party authorized to grant access to the data;
if the party provides authorization to grant access to the data,
recording the authorization in the computer system and
granting a first access to the data based on the recorded
authorization; and
in response to receiving at least a second request for access to the
data, granting a second access to the data based on the
authorization recorded in the computer system.

Reference

The reference relied upon by the examiner is:
Wyman 5,438,508 August 1, 1995
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Rejection at Issue

Claims 1 through 29 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Applicant’s own admission and Wyman.
Opinion

We have carefully considered the subject matter on appeal, the rejection
advanced by the examiner and the evidence of obviousness relied upon by the
examiner as support for the rejection. We have, likewise, reviewed and taken
into consideration, in reaching our decision, appellant’s arguments set forth in the
briefs along with the examiner’s rationale in support of the rejection and
arguments in rebuttal set forth in the examiner’s answer.
With full consideration being given to the subject matter on appeal, the
examiner’s rejection and the arguments of appellant and the examiner, and for
the reasons stated infra we will not sustain the examiner’s rejectionof claims 1
through 29 under 35 U.S.C. § 103(a).
Appellant argues, on pages 7 and 8 of the reply brief dated October 6,
2005 (hereinafter second reply brief), that:
Independent claims 1, 10, and 21 all include the feature of
recording a data access authorization in the same computer system in
which the data is stored. In contrast, Wyman explicitly teaches recording
data access authorizations (i.e., “licenses”) in a remote license server.
The Examiner has chosen to ignore this explicit teaching of Wyman,
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however, and instead construe the “handle” taught by Wyman as the
claimed data access authorization.

On pages 8 and 9 of the second reply brief, appellant presents definitions of the
term “handle” from two reference books and argues that the examiner’s reliance
on Wyman’s teaching of using a handle cannot be equated with appellant’s
claimed authorization to access the data stored on the fixed media in the
computer system. Further, on pages 13 through 17 of the second reply brief,
appellant argues that Applicant’s Admissions and Wyman do not provide the
teaching or suggestion to make the claimed invention.
On page 3 of the answer the examiner takes Official notice that it was well
known at the time of the appellant’s invention to sell computers with software
already installed on the machine’s hard disk. The examiner asserts that Wyman
teaches that when a program is started a check is made as to whether usage is
permitted. In response to appellant’s argument that Wyman does not teach
storing authorization on the same computer as the data, the examiner states on
page 9 of the answer:
Assuming for the sake of the current argument that the computer system
in question and relied upon by the Appellant is in the form of a client
machine and not a system of networked computers such as, for example,
an LAN/WAN or corporate intranet, the combination of Applicant’s own
admissions and Wyman disclose the digital data access system, as shown
above. Wyman, in at least column 23, lines 11-37, specifically teaches
storing the authorization handle on the client computer for future
reference, and in at least column 4, lines 38-42 and lines 46-50 discloses
that it was common practice in the art at the time of the invention to
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maintain individual licenses and store the license privilege proofs on each
client system.

We are not persuaded by the examiner’s reasoning. First, we determine
the scope of the claim. In analyzing the scope of the claim, office personnel must
rely on appellant’s disclosure to properly determine the meaning of the terms
used in the claims. Markman v. Westview Instruments, Inc., 52 F.3d 967, 980,
34 USPQ2d 1321, 1330 (Fed. Cir. 1995). “[I]nterpreting what is meant by a word
in a claim ‘is not to be confused with adding an extraneous limitation appearing in
the specification, which is improper.’” (emphasis original) In re Cruciferous
Sprout Litigation, 301 F.3d 1343, 1348, 64 USPQ2d 1202, 1205, (Fed. Cir.
2002) (citing Intervet America Inc. v. Kee-Vet Laboratories Inc., 887 F.2d
1050, 1053, 12 USPQ2d 1474, 1476 (Fed. Cir. 1989). Claim 1 includes the
limitations of “recording data on a fixed medium in the computer system”, “in
response to receiving a first request for access to the data, contacting a party
authorized to grant access to the data; if the party provides authorization to grant
access to the data, recording the authorization in the computer system” and
“granting a second access to the data based on the authorization recorded in the
computer system.” Independent claims 10 and 21 contain similar limitations.
Appellant’s specification identifies on page 4, that a computer system can be
“any of a number of computer systems capable of carrying out computer
executable code.” Thus, the scope of claim 1 includes data stored on a fixed
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medium of a device capable of carrying out computer executable code. The
authorization received in response to a first request to access the data is
recorded in the same device as the data and is used in response to a second
request to access the data.
While we concur with the examiner’s findings that it was well known at the
time of the invention to sell computers with software already installed, and that it
was known that some software require authorization prior to use, we do not find
that the examiner has presented objective evidence that it was known at the time
of the invention that software installed on a computer prior to transfer to a user
required authorization prior to the first use of the software and that the
authorization is stored on the computer to permit a second use of the software.
We find, as appellant argues, Wyman teaches that the authorization, a license, to
use a software program is stored in a server. See items 10 and 14 of figure 1.
Wyman teaches that the program itself is stored on the individual user devices.
See item 17 figure 1. We do not find, as the examiner asserts, that Wyman’s
discussion of the use of handles meets the claim limitation of recording
authorization on the device for a second access to the data. We find that Wyman
teaches that when the use of the program is authorized a “handle” is stored for
later use. See column 23, lines 26 and 27. We do not find that this later use is to
authorize a second access to the program. Rather, Wyman teaches that when
the execution of the program is completed, the handle is retrieved and returned
to the server through a release allocation. See column 23, lines 31 through 37
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and 61 through 64. Further, while we concur with the examiner’s statement that
Wyman in ”column 4, lines 38-42 and lines 46-50 discloses that it was common
practice in the art at the time of the invention to maintain individual licenses and
store the license privilege proofs on each client system,” we do not find that
Wyman teaches, or suggests, for programs already installed on a client’s
machine, in response to a first attempt to access the data, authorization is
requested and recorded on the client’s device, and that the authorization is later
used to grant a second access to the data. Accordingly, we will not sustain the
examiner’s rejection of claims 1 through 29 under 35 U.S.C. § 103(a).
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Conclusion

In summary, we will not sustain the examiner’s rejections of claims 1
through 29 under 35 U.S.C. § 103(a). The decision of the examiner is reversed.
REVERSED

JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
ROBERT E. NAPPI )
Administrative Patent Judge )

REN/gjh

Appeal No. 2006-0174
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