Ex Parte Etchegoyen

Patent Trial and Appeal Board

Nov 28, 2016

13239260 (P.T.A.B. Nov. 28, 2016)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/239,260 09/21/2011 Craig S. Etchegoyen UN-NP-SU-068 (Large) 1398
96051 7590
Uniloc USA Inc.
Legacy Town Center
7160 Dallas Parkway
Suite 380
Plano, TX 75024
11/30/2016 EXAMINER
HUANG, TSAN-YU J
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
11/30/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
sean.burdick@unilocusa.com
tkiatkulpiboone@unilocusa.com
kris.pangan@unilocusa.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CRAIG S. ETCHEGOYEN
Appeal 2015-0012061
Application 13/239,260
Technology Center 3600
Before MICHAEL W. KIM, PHILIP J. HOFFMANN, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
KIM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
This is an appeal from the final rejection of claims 1—16. We have
jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
The invention relates generally to a system for auditing software
licenses. Spec., para. 2.
1 The Appellant identifies Uniloc USA, Inc. and Microsoft Corporation as
the real parties in interest. Appeal Br. 3.
Appeal 2015-001206
Application 13/239,260
Claim 1 is illustrative:
Claim 1. A system for auditing software usage on multiple
network devices, comprising:
a communication module;
an audit database accessible by the communication
module, the audit database storing audit numbers for the multiple
network devices, each audit number derived from a software
identifier identifying the software and from a device identifier,
each software identifier representing a particular licensing
instance of the software and number of seats licensed for the
instance, each device identifier being generated from a
combination of user-configurable and non-user-configurable
machine parameters and identifying a particular one of the
multiple network devices, each audit number representing an
activation of the software;
a display module;
at least one processor in operative communication with the
communication module and the display module; and
a memory in operative communication with the at least
one processor and comprising executable code for the at least one
processor to:
instruct the communication module to access the database;
read the audit numbers;
sort the audit numbers according to at least one of
activated license seats and unactivated license seats;
read a number of seats licensed for each software
identifier; and
instruct the display module to display licensed seats versus
activations according to the sorted audit numbers.
Claims 1—16 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wesinger (US 2006/0265337 Al, pub. Nov. 23, 2006),
Gorman (US 2002/0143780 Al, pub. Oct. 3, 2002), and Omshehe
(US 2002/0069172 Al, pub. June 6, 2002).
We REVERSE.
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Appeal 2015-001206
Application 13/239,260
ANALYSIS
Each of independent claims 1 and 9 recites an “audit number derived
from a software identifier . . each software identifier representing a . . .
number of seats licensed for the instance.” We are persuaded by Appellant’s
arguments that the portions of Wesinger cited by the Examiner do not
disclose the claimed software identifier. App. Br. 17—18. More specifically,
while Wesinger discloses implementing fixed and floating licenses with an
authorized number of seats (e.g., Wesinger | 0012), the Examiner has not
explained adequately how any number of seats associated with these fixed
and floating licenses is incorporated into any audit number, as required by
each of independent claims 1 and 9.
Furthermore, we are persuaded by Appellant’s argument that the
Examiner erred in asserting that the claimed “audit number” is non­
functional descriptive material that is not entitled to patentable weight.
Reply Br. 7—9. In making a determination regarding non-functional
descriptive material, one relevant part of the inquiry is whether there is a
“functional relationship” between the process and the descriptive material.
MPEP § 2111.05 (citing In re Kao, 639 F.3d 1057, 1072-74 (Fed. Cir.
2011); King Pharmaceuticals Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1278
(Fed. Cir. 2010)). In the case of independent claims 1 and 9, we are
persuaded that there is such a functional relationship, in that the claimed
“audit number” is explicitly used in the processes of reading, sorting,
determining the number of seats licensed, and displaying a comparison of
licensed seats to activations, later recited in each of independent claims 1
and 9. Accordingly, because there is a functional relationship between the
claimed “audit number” and underlying processes of independent claims 1
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Appeal 2015-001206
Application 13/239,260
and 9, we are persuaded that the claimed “audit number” cannot be
considered non-functional descriptive material.
For these reasons, we do not sustain the rejection of independent
claims 1 and 9, or claims 2—8 and 10—16 dependent respectively therefrom.
DECISION
We REVERSE the rejection of claims 1—16 under 35 U.S.C. § 103(a).
REVERSED
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