Ex Parte Cronce

Board of Patent Appeals and Interferences

Aug 10, 2009

10072597 (B.P.A.I. Aug. 10, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte PAUL A. CRONCE
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Appeal 2009-002343
Application 10/072,597
Technology Center 3600
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Decided: August 10, 2009
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Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
BIBHU R. MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-002343
Application 10/072,597

2
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 (2002) of the
final rejection of claims 1-26 which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF THE DECISION
We REVERSE.

THE INVENTION
The Appellants’ claimed invention is directed to the delivery of secure
software licensing information to authorize the use of a software product.
The system comprises a computer system for using the software product, an
authorizing program, and a license server connected to the computer system
over a network. The method includes generating a license request
containing user and product information signed by a private product key
(Spec 3:21-4:5). Claim 1, reproduced below, is representative of the subject
matter of appeal.

1. A method for the delivery of secure software license
information to authorize use of a software product, the method
comprising the steps of:

(a) associating with a software publisher a private and public key
pair, wherein the software publisher provides the software product
and includes a software program and an authorization program
within the software product;

(b) associating a product private key and public key with the
software product, wherein at least one of the product private and
public keys is digitally signed by the publisher private key, and
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including the product private and public keys with the
authorization program;

(c) upon invocation of the software product on a computer,
(i) generating by the authorization program a license request
containing user and product information,
(ii) digitally signing the license request with the product private
key, and
(iii) transferring the signed license request to a key authority,

(d) in response to the key authority receiving the signed license
request,
(i) generating a license using data extracted from the license
request and license terms,
(ii) signing the license with the publisher private key, and
(iii) transmitting the signed license to the authorizing program;
and

(e) validating the signed license using the publisher public key, and
using the license terms to control the use of the software product.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Venkatesan US 6,898,706 May 24, 2005

The following rejections are before us for review:
1. Claims 1-26 are rejected under 35 U.S.C. § 102(e) as
anticipated by Venkatesan.

THE ISSUE
At issue is whether the Appellants have shown that the Examiner
erred in making the aforementioned rejections.
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With regards to claims 1-23 this issue turns on whether Venkatesan
discloses “upon invocation of the software product on a computer generating
by the authorization program a license request.”
With regards to claims 24-26 this issue turns on whether Venkatesan
discloses “validating the software publisher who signed the license by
comparing the publisher ID in the publisher certificate contained within the
license with the publisher ID in the software product.”

FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence:1
FF1. Venkatesan discloses a cryptographic technique for digital rights
management (Title). A large number of identical watermarks are embedded
in a software object. The user downloads the software object and transacts
with the publisher to obtain an electronic license signed by the publisher to
an enforcer that is located in the client computer. (Abstract).
FF2. Venkatesan discloses that, “Once a user has downloaded a
watermarked object, then, in order to use that object, the user, through
his(her) client PC, electronically transacts, through Internet 30 and links 310
and 323, with publisher's web server 335. Specifically, in return for payment
of a specific licensing fee to the publisher, web server 335 downloads to the
client PC an electronic license (L), cryptographically signed by the publisher
to an "enforcer" located in that PC.” Col. 14:35-45.

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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FF3. Venkatesan in Col. 14:53-54 discloses that the enforcer has active
objects such as executable programs and that the enforcer can reside “in an
operating system itself executing in the client PC.”
FF4. Venkatesan in Col. 14:52-54 does not disclose that when the software
program is invoked that it obtains a license by creating a license request.
FF5. Venkatesan in Col. 20:9-14 does not disclose that the enforcer resides
on the software program. Venkatesan discloses that the enforcer is located
with the operating system of the PC (Col. 18:52-57, Fig. 4).
FF6. Venkatesan in Col. 19:25-56 discloses an authenticated boot process
to assure its own security and chains of trust.
FF7. Venkatesan in Col. 19:25-56 does not disclose that there is validating
of the software publisher who signed the license by comparing, the publisher
ID in the publisher certificate contained within the license, with the
publisher ID in the software product.

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987). Analysis of whether a claim is patentable over
the prior art under 35 U.S.C. § 102 begins with a determination of the scope
of the claim. We determine the scope of the claims in patent applications
not solely on the basis of the claim language, but upon giving claims their
“broadest reasonable construction” in light of the specification as it would be
interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The properly interpreted claim
must then be compared with the prior art.
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ANALYSIS
Claims 1-23
The Appellant argues that the rejection of claims 1, 12, and 16 is
improper because Venkatesan fails to disclose “a software program and an
authorization program within the software” and where “upon invocation of
the software product on a computer,” the authorization program generates “a
license request” as recited in the claims. Brief 15. The Appellant argues
that Venkatesan discloses that “the user” initiates the license request with the
publisher through the client PC. Brief 15. The Appellant also argues that in
Venkatesan that the “enforcer” which looks for watermarks in an object
cannot be considered to the “authorization program” because the enforcer
program is not part of the protected software object. Brief 15-16.
In contrast the Examiner has determined that Venkatesan has
disclosed the cited claim limitations. The Examiner has determined that the
cited claim language makes no reference to a software object that has been
downloaded to a client PC to generate a license request. Answer 9.
Regardless, the Examiner has determined that Venkatesan discloses this
feature at Col. 11:14-41 and Col. 14:52-54. The Examiner has also
determined that the “enforcer” of Venkatesan is analogous to the claimed
authorization program. Answer 10.
We agree with the Appellants. Claim 1 specifically requires that
“upon invocation of the software product on a computer…generating by the
authorization program a license request.” Brief 15. Thus the claim
specifically requires that when the software product is invoked, the
authorization program generates a license request. In contrast Venkatesan
discloses that once the user has downloaded the watermarked object that the
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user through his or her client PC electronically transacts through the Internet
30 and links to the publisher’s web server. In return for payment the client
PC is downloaded an electronic license L to an “enforcer” located in that PC
(FF2). Venkatesan in Col. 14:52-54 does disclose that the enforcer has
active objects such as executable programs (FF3). However, this cited
portion of Venkatesan does not disclose that when the software program is
invoked that the authorization program obtains a license by creating a
license request (FF4). In Venkatesan, it is the user that obtains the license
(FF1), not the authorization program when the software program is invoked
(FF4) as the claim requires. For these reasons, the rejection of claim 1 is not
sustained. Claims 12 and 16 contain limitations similar to those in claim 1
and the rejection of these claims, as well as dependent claims 2-11, 13-15
and 17-23, is not sustained for these same reasons.

Claims 24-26
The Appellant argues that the rejection of claim 24 is improper
because Venkatesan fails to disclose the limitation is step (c) iii which
recites: “validating the software publisher who signed the license by
comparing the publisher ID in the publisher certificate contained within the
license with the publisher ID in the software product”. Brief 9.
In contrast the Examiner has determined that Venkatesan discloses
this limitation in Col. 19, lines 25-56. Answer 12. The Examiner also
asserts that this limitation is disclosed “in the cited reference because
without providing a cryptographic tie to the authority, software piracy and
illegal access would be prevalent.” Answer 12.
We agree with the Appellants. Venkatesan does disclose an
authenticated boot process to assure its own security and chains of trust
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(FF6). However, claim 24 requires more than just generic security or chains
of trust and specifically requires “validating the software publisher who
signed the license by comparing the publisher ID in the publisher certificate
contained within the license with the publisher ID in the software product”.
The portion of Venkatesan cited by the Examiner does not specifically
disclose that there is validation of the software publisher who signed the
license by comparing the publisher ID in the publisher certificate contained
within the license with the publisher ID in the software product (FF7) as the
claim requires. Venkatesan has disclosed that the client PC is downloaded
an electronic license L to an “enforcer” located in that PC (FF2) and it is not
specifically disclosed that a publisher ID resides in the software product.
For this reason, the rejection of claim 24 and dependent claims 25-26 is not
sustained.

CONCLUSIONS OF LAW
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 1-26 under 35 U.S.C. § 102(b) as anticipated by
Venkatesan.

DECISON
The Examiner’s rejection of claims 1-26 is reversed.

REVERSED

Appeal 2009-2343
Application 10/072,597
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APJ Initials:
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