Ex Parte Gaetano

Board of Patent Appeals and Interferences

Jan 12, 2012

10641853 (B.P.A.I. Jan. 12, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/641,853 08/15/2003 Arthur Louis Gaetano JR. IT-03-003 2920
40604 7590 01/13/2012
MITEL NETWORKS CORPORATION
7300 WEST BOSTON STREET
CHANDLER, AZ 85226
EXAMINER
AGWUMEZIE, CHARLES C
ART UNIT PAPER NUMBER
3685
MAIL DATE DELIVERY MODE
01/13/2012 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)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ARTHUR LOUIS GAETANO JR.
____________________

Appeal 2010-004240
Application 10/641,853
Technology Center 3600
____________________

Before: ANTON W. FETTING, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/641,853

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STATEMENT OF CASE
Appellant seeks our review under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 6-10 and 19-23. Claim 24 is canceled.
Claims 1-5, 11-18, and 25-32 are withdrawn. We affirm and designate our
affirmance as a new ground of rejection (37 C.F.R. § 41.50(b)).
THE INVENTION
Appellant claims a system and method for software site licensing
(Spec. 1:4). Claims 6 and 19 are illustrative:
6. A software site license system comprising:
a license sales site generating and transmitting a software
license;
a target site computer having a software site application,
said software license corresponding to said software site
application and said target site computer;
a programming workstation receiving said software
license from said sales site and uploading said license to said
target; and
a storage coupled to said target site, said storage
including a plurality of licenses received from said workstation,
said plurality of licenses comprising at least one previously
uploaded license corresponding to a previous version of said
software site application on said target, and said previously
uploaded license capable of reload to said target without
additional contact with said license sales site or another license
transfer from said workstation.
19. A process for reloading a previously uploaded software site
license corresponding to a software application, said process
comprising;
executing a management application on a programming
workstation;
coupling said programming workstation to a target
computer having said software application thereon;
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displaying on said programming workstation a list
comprising a plurality of stored licenses applicable for and
stored at said target computer;
viewing said list and selecting from said list said
previously uploaded stored license from said plurality of stored
licenses;
applying said previously uploaded license at said target
computer as a current license; and
updating said list of said plurality of licenses to reflect
the reload.
REFERENCES
The Examiner relies on the following prior art:
Stupek
Misra
US 5,960,189
US 6,189,146 B1
Sep. 28, 1999
Feb. 13, 2001
Klave
Peinado
US 2003/0135728 A1
US 2005/0097368 A1
Jul. 17, 2003
May 5, 2005

REJECTIONS
The following rejections are before us for review.
Rejection of claims 6-81 under 35 U.S.C. § 103(a) over Misra and
Peinado.
Rejection of claims 9 and 10 under 35 U.S.C. § 103(a) over Misra,
Peinado, and Stupek.
Rejection of claims 19, 20 and 23 under 35 U.S.C. § 103(a) over
Misra and Klave.
Rejection of claims 21, and 22 under 35 U.S.C. § 103(a) over Misra,
Klave, and Stupek.

1 This ground was incorrectly labeled in the Answer, but the Examiner
corrected it in the Miscellaneous Communication mailed October 2, 2009.
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ISSUE
Did the Examiner err in finding that Misra discloses that old licenses
in local client storage are replaced during version upgrades, based on a
policy assumption that upgraded licenses will work for previous software
versions?
FINDINGS OF FACT
We find the following facts by a preponderance of the evidence.
1. Misra’s “license generator located at a licensing clearinghouse”
discloses the claimed license sales site generating and transmitting a
software license. (Col. 2, ll. 22-23).
2. Misra’s client 30, which “is responsible for managing the storage of that
license” discloses the claimed target site computer having a software
site application, said software license corresponding to said software
site application and said target site computer. (Col. 4, ll. 64-67).
3. Misra’s license server 28 discloses a programming workstation
receiving said software license from said sales site and uploading said
license to said target. (Col. 4, ll. 23-24).
4. Misra discloses the relationship of the license sales site/licensing
clearinghouse 22, the target site computer/client 30, and the
programming workstation/license server 28 as shown in Figure 1.
Annotated Figure 1 of Misra is reproduced below:
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6. Misra discloses that license cache 136 stores the claimed a plurality of
licenses received from said workstation/license server, in that the
“license requestor 132 verifies the signature on the license to confirm
that it came from the license server 28 and stores the software license in
the license cache 136. It is the responsibility of the license requester
132 to manage the licenses stored in the cache 136.” (Col. 12, ll. 8-12).
7. Misra discloses that the license cache 136 is kept in persistent storage
(col. 12, ll. 15-16).
8. Misra discloses that when a license is upgraded to a license for a new
version, the “client 30 replaces the old license with the upgraded one in
the license cache 136 (step 252).” (Col. 16, ll. 65-67).
9. Misra discloses that “licenses are assumed to be backward compatible.
That is, a next generation 5.X license is always accepted by a current
generation 4.X server.” (Col. 17, ll. 1-3).
10. Misra discloses storing information about licenses in storage at the
target/client 30, in that “licenses are organized in the license cache 136
according to information about the license issuing authority and product
ID.” (Col. 12, ll. 12-14).
11. Klave discloses a system for loading individual software components on
a device (para. [0008]).
12. Klave discloses a “loading table” which “may be a license table
including a list of licenses relating to the individual software
components.” (Para. [0011]).
13. Klave discloses displaying and viewing the list of licenses, and selecting
from the list of licenses, stating, the “loading table 206 is then read 606
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and a corresponding feature list is displayed to the user. The user may
then enable or disable 608 features as desired.” (Para. [0047]).
14. Misra discloses a predetermined number of licenses based on the
number of licenses purchased, stating the “license server 28 monitors
the software licenses that have been granted to clients. The license
server 28 can distribute licenses to new clients as long as it has available
non-assigned licenses.” (Col. 4, ll. 23-26).
15. Klave discloses a system for loading individual software components in
computers (para. [0008]).
16. Stupek discloses the claimed generating a summary of proposed
modifications which will result from applying said previously uploaded
license at said target and displaying said summary, in that “the upgrade
advisor 11 presents a report and/or graphical display to the user. This
output is in the form of upgrade recommendations, each supported by an
explanation of the reasons for upgrade.” (Col. 4, ll. 6-9).
ANALYSIS
Claims 6-8 – New Ground
The rejection is affirmed as to claims 6-8. Appellant does not
separately argue claims 7 and 8 that depend from independent claim 6. We
select claim 6 as representative, and claims 7 and 8 fall therewith. See 37
C.F.R. § 41.37(c)(1)(vii).
Appellant argues that “neither Misra nor Peinado, either alone or in
combination, teach, suggest or disclose all the elements” of the claims.
(App. Br. 13). Appellant’s argument is based on the Examiner’s statement
that Misra does not disclose the claimed storage coupled to said target site,
and that Peinado fails to “disclose that a previously uploaded license is
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available for reload to the client without additional contact with the license
server.” (App. Br. 9-11) (emphasis omitted).
We are not persuaded by Appellant's argument. First, Misra discloses
a license sales site at the licensing clearinghouse 22, the programming
workstation at the license server 28, and the target site computer at the client
30 (FF 1-4). Misra further discloses the claimed storage coupled to said
target site, said storage including a plurality of licenses received from said
workstation at license cache 136 (FF 5-7).
Furthermore, we find that Misra also discloses a process for upgrading
licenses from an older version to a newer version and, as part of this upgrade
process, the old license in cache 136 is replaced by the new license which is
backward compatible with the old license (FF 8, 9). We find that whether
old licenses are replaced or retained, based on whether new licenses for new
software versions work or does not work with older versions of software, is
not a patentable distinction. A backwards-compatible license is a license for
a new software version that also permits use of an old software version on
which the newer version is based. It is common sense that if a new software
version license only operates on the new version, the old license must be
retained to enable the new version to operate on top of the old version. The
obvious and predictable alternative would be to make the new license
backward compatible as taught by Misra. KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 401 (2007) (“If a person of ordinary skill in the art can implement
a predictable variation, and would see the benefit of doing so, § 103 likely
bars its patentability.”). We therefore find that claim 6 is obvious over
Misra, and find Peinado’s disclosure is cumulative.
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Since our analysis of the references differs from that of the Examiner,
we designate our affirmance as a new rejection under 37 CFR § 41.50(b).
Claims 9 and 10
We affirm the rejection of claims 9 and 10. Appellant does not
separately argue claim 10 that depends from claim 9. We select claim 9 as
representative and claim 10 falls therewith. See 37 C.F.R. § 41.37(c)(1)(vii).
Claim 9 recites, inter alia, “a summary of proposed modifications which will
result from a reload of said previously uploaded license.”
The Examiner relied on Stupek to disclose this limitation (Ans. 7-8).
Appellant argues that Stupek does not disclose this limitation because “a
‘summary of proposed modifications’ is quite different than ‘the reasons for
an upgrade’” (App. Br. 14).
We are not persuaded by Appellant’s argument. The limitation of a
summary of proposed modifications in claim 9 is non-functional descriptive
material because it describes data content that is part of claim 6 and which is
not itself a structural component. Misra discloses information about licenses
stored in the storage (FF 10), and thus discloses that it stores content at least
similar to a summary of proposed modifications, thus meeting the claim 9
requirement.
Claims 19 and 20
We also affirm the rejection of claims 19 and 20. Appellant does not
separately argue claim 20 that depends from independent claim 19. We
select claim 19 as representative and claim 20 falls therewith. See 37 C.F.R.
§ 41.37(c)(1)(vii).
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The Examiner found that Misra discloses the limitations of claim 19,
except for the displaying, viewing, and selecting requirements, which the
Examiner found in Klave (Ans. 9-10).
Appellant first argues, “Klave does not discuss the ability to reload a
previously uploaded software site license corresponding to a software
application, nor does the Examiner recite any specific passages of Klave to
support that it does.” (App. Br. 16).
Appellant’s argument is not well taken because Appellant is attacking
the references individually when the rejection is based on a combination of
references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981). The
Examiner found that Misra discloses executing, coupling, applying, and
updating, and relied on Klave for the displaying, viewing, and selecting
limitations (Ans. 9-10). Therefore, Appellant’s argument as to Klave is
unpersuasive.
Additionally, claim 19 does not require “the ability to reload a
previously uploaded software site license” because this language only
appears in the preamble, but not in the body of the claim. If the body of a
claim fully and intrinsically sets forth all of the limitations of the claimed
invention, and the preamble merely states, for example, the purpose or
intended use of the invention, rather than any distinct definition of any of the
claimed invention’s limitations, then the preamble is not considered a
limitation and is of no significance to claim construction. Pitney Bowes, Inc.
v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). Therefore,
Appellant’s argument as to reloading is unpersuasive because the reloading
is not required in the body of the claim, because the claim does not limit
from where the license was uploaded.
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Nonetheless, even if this were not the case, we find Misra discloses
that licenses are uploaded to the programming workstation ... from said
sales site (FF 3), which we construe as an uploaded license that meets the
claim requirement.
Appellant further argues, “Misra does not teach storing licenses
locally at the client, but rather discloses that the license server must forward
the previously uploaded license to the intermediate server which then passes
it on to the client.” (App. Br. 16). We disagree because Misra discloses
storing a plurality of licenses “locally at the client” at cache 136 (FF 10).
Claim 23
Dependent claim 23 recites, inter alia, “wherein said plurality of
stored licenses comprises a predetermined number of licenses and as a new
license is added an older license is deleted.”
Appellant argues, the “Examiner cites Misra Figure 8 and Table 1 for
support of this limitation. A review of Figure 8 and Table 1 fails to provide
any support for the limitation . . .” (App. Br. 16). We are not persuaded by
Appellant’s argument. Misra discloses a predetermined number of licenses
are stored (FF 14) and that, in normal operation, when a license is upgraded
the older, lower-level license is replaced (FF 8), thus meeting the claim
requirements.
Claims 21 and 22
We affirm the rejection of claims 21 and 22. Appellant does not
separately argue claim 21. We select claim 22 as representative and claim
21 falls therewith. See 37 C.F.R. § 41.37(c)(1)(vii).
Claim 21 recites, inter alia, “generating a summary of proposed
modifications which will result from applying said previously uploaded
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license at said target and displaying said summary.” This is similar to the
system of claim 9, which recites the component of the “summary.”
Appellant argues claim 21 based on the arguments presented with
respect to claims 9 and 10 (App. Br. 13, 17). We are not persuaded of error
in the Examiner’s rejection because while the method of claim 21 requires
generating and displaying summary information about a software upgrade,
the information in the summary is non-functional descriptive material that
does not affect the process of generating and displaying a summary.
Moreover, Stupek discloses an upgrade advisor component that
presents/displays a report with an explanation of reasons for a software
upgrade (FF 16), meeting the claim requirement.
CONCLUSIONS OF LAW
The Examiner did not err in rejecting claims 6-8 under 35 U.S.C.
§ 103(a) over Misra and Peinado.
The Examiner did not err in rejecting claims 9 and 10 under 35 U.S.C.
§ 103(a) over Misra, Peinado, and Stupek.
The Examiner did not err in rejecting claims 19, 20, and 23 under 35
U.S.C. § 103(a) over Misra, Peinado, and Klave.
The Examiner did not err in rejecting claims 21 and 22 under 35
U.S.C. § 103(a) over Misra, Klave, and Stupek.
DECISION
For the above reasons, the Examiner’s rejection of claims 6-10 and
19-23 is AFFIRMED, and we designate our affirmance as containing a new
ground of rejection.
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This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 CFR § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner . . . .
(2) Request rehearing. Request that the proceeding be reheard under §
41.52 by the Board upon the same record . . . .

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)(iv).

AFFIRMED; 37 C.F.R. § 41.50(b)

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