11149479 (B.P.A.I. Nov. 22, 2010)

Ex Parte Ewert et al

Board of Patent Appeals and InterferencesNov 22, 2010

11149479 (B.P.A.I. Nov. 22, 2010)

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. 11/149,479 06/09/2005 Clair Lewis Ewert ROC920040310US1 1688 7590 11/23/2010 Grant A. Johnson IBM Corporation, Dept. 917 3605 Highway 52 North Rochester, MN 55901-7829 EXAMINER CHEUNG, CALVIN K ART UNIT PAPER NUMBER 3621 MAIL DATE DELIVERY MODE 11/23/2010 PAPER 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. PTOL-90A (Rev. 04/07) 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. UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte CLAIR LEWIS EWERT, JAMES ROBIN, FRITSCH, LARS ROGER IVERSEN, JAMES M. KIDD, and MERRILL DEAN LINDBERG ____________ Appeal 2010-004302 Application 11/149,479 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI and BIBHU R. MOHANTY, Administrative Patent Judges. FISCHETTI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-004302 Application 11/149,479 2 STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 1, 2, 4-13, 15-23. Claims 3 and 14 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). (2002). SUMMARY OF DECISION We AFFIRM. THE INVENTION Appellants claim a system and method for establishing, verifying, and managing computer software access rights, and more specifically, for creating and managing electronic proof of entitlements to computer software. (Specification 1:4-6). Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A method for managing entitlements to computer software, comprising: receiving a request from a customer for entitlement to use a computer software product on one or more computer platforms; generating an electronic proof of entitlement that enables use of the computer software product only on the specified one or more computer platforms, wherein the electronic proof of entitlement comprises a customer identifier and a hardware serial number, the hardware serial number being uniquely associated with the computer platform for which a customer seeks entitlement to use the computer software product; and Appeal 2010-004302 Application 11/149,479 3 providing access to the electronic proof of entitlement from a customer facility. THE REJECTION The Examiner relies upon the following as evidence of unpatentability: Horstmann US 6,009,401 Dec. 28, 1999 Cooper US 2001/0051996 A1 Dec. 13, 2001 Herrero US 2003/0005427 A1 Jan. 2, 2003 Birkholz US 2003/0023963 A1 Jan. 30, 2003 The following rejections are before us for review. The Examiner rejected claims 1-2, 7-13 and 16-21 under 35 U.S.C. § 103(a) as being unpatentable over Herrero and Birkholz. The Examiner also rejected claims 4-6 and 15 under 35 U.S.C. § 103(a) as being unpatentable over Herrero in view of Birkholz and Horstmann. The Examiner rejected claims 22-23 under 35 U.S.C. § 103(a) as being unpatentable over Herrero and in view of Birkholz, Horstmann, and Cooper. ISSUE Did the Examiner err in rejecting claims 1, 2, 7-13 and 16-21 as being unpatentable over Herrero and Birkholz on the grounds that a person with ordinary skill in the art would understand that once Proof of Entitlement information is inputted into the web page in Herrero, it becomes electronic Appeal 2010-004302 Application 11/149,479 4 proof of entitlement because it is then information which is sent electronically over the Internet? FINDINGS OF FACT We find the following facts by a preponderance of the evidence: 1. The Specification does not define the term “electronic proof of entitlement”. 2. The Specification only describes the term “electronic proof of entitlement” or “ePoE” in the context of an embodiment example rather by definition, stating that it is created by the management system 100 such that it “can be stored as records in the LMS database 136.” (Specification 6:18- 19) 3. The Specification states that the ePoE can be printed. (Specification 7: 9) 4. An ordinary and customary definition of the term “electronic” as defined by Merriam Webster’s Dictionary is: “of, relating to, or being a medium (as television) by which information is transmitted electronically ”. (http://www.merriam-webster.com/dictionary/electronic). 5. Herrero discloses manually entering an entitlement ID into fields in an internet based web page. (¶¶ [0058, 0059]). ANALYSIS We affirm the rejections of claims 1, 2, 4-13 and 15-23. Appeal 2010-004302 Application 11/149,479 5 Initially, we note that the Appellants argue claim 1 as representative (Appeal Br. 10), and thus we select representative claim 1 to decide the appeal of independent claims 10, 11, and 17, which stand or fall with claim 1. Appellants argue that: …Herrero requires that the customer manually enter a conventional, physical entitlement (i.e., the purchase order number referenced in Fig. 8) provided via alternative means. This is simply not the claimed "electronic" proof of entitlement as that term is defined and used in the Specification. (Appeal Br. 11-12). We thus are directed to the Specification for guidance. In so doing, we find however that the Specification does not define the term “electronic proof of entitlement”, but rather uses the term in the context of an embodiment example rather than definition. That is, the Specification at page 6 only describes that an electronic proof of entitlement or “ePoE” is created by the management system such that it “can be stored as records in the LMS database 136.” (FF 2). The “can be stored” feature described in the Specification relates only to how the data is managed, and not to its definition. Data which is copied from a physical document and inputted into the LMS database 136 would have the same storable effect. Furthermore, while the Specification at pages 2 and 7 describes the benefits of replacing the physical documentation with the ePoE, it nevertheless states that the ePoE may be printed (FF 3), thereby diminishing the asserted desired effect of using the PoE information in only electronic form. We find an ordinary Appeal 2010-004302 Application 11/149,479 6 and customary definition of the term “electronic” as defined by Merriam Webster’s Collegiate Dictionary is: “of, relating to, or being a medium (as television) by which information is transmitted electronically ”. (FF 4). As such, we interpret the phrase “electronic proof of entitlement” as proof of entitlement information which is transmitted electronically. With this understanding, we find that Herrero discloses manually entering an entitlement ID into fields in an internet based web page. (FF 5). Nothing in claim 1 requires that the electronic proof of entitlement information be automatically populated as argued by Appellants. We thus find that once this information is inputted into the web page in Herrero (FF 5), it becomes electronic proof of entitlement because it then becomes proof of entitlement information which is sent electronically over the Internet. We also affirm the rejections of dependent claims 2, 4-9, 12-13, 15- 16, and 18-23 since Appellants have not challenged such with any reasonable specificity (see In re Nielson, 816 F.2d 1567, 1572, (Fed. Cir. 1987)). CONCLUSIONS OF LAW We conclude that the Examiner did not err in rejecting claims 1, 2, 4- 13 and 15-23 under 35 U.S.C. § 103(a). DECISION Appeal 2010-004302 Application 11/149,479 7 The decision of the Examiner to reject claims 1, 2, 4-13 and 15-23 is AFFIRMED. AFFIRMED MP Grant A. Johnson IBM Corporation, Dept. 917 3605 Highway 52 North Rochester MN 55901-7829