Ex Parte Heyman et al

Patent Trial and Appeal Board

Sep 22, 2016

13427980 (P.T.A.B. Sep. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/427,980 03/23/2012 Jerrold M. Heyman
82553 7590 09/26/2016
Walter W. Duft
P.O. Box 378
Clarence Center, NY 14032
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
AUS920100114US2 6244
EXAMINER
QAYYUM, ZESHAN
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
09/26/2016 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):
wduft@duftlawoffice.com
xbmufss@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JERROLD M. HEYMAN, MICHAEL L. NELSON, and
ANDREW G. TONKIN
Appeal2014-007271
Application 13/427,980 1
Technology Center 3600
Before MURRIEL E. CRAWFORD, JAMES A. WORTH, and
BRUCE T. WIEDER, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's rejection of claims 1-8. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
CLAIMED SUBJECT MATTER
Appellants' claimed "invention generally relates to software licensing
techniques used in computer systems." (Spec. i-f 1.)
1 According to Appellants, the real party in interest is International Business
Machines Corporation. (Appeal Br. 2.)
Appeal2014-007271
Application 13/427,980
Claim 1 is the sole independent claim on appeal. It recites:
1. A method for serving software licenses in a computer
system, comprising:
maintaining a plurality of license tokens within the
computer system, the plurality of license tokens used for
execution of licensed software instances in the computer system;
tracking, with a token counter, a number of the plurality of
license tokens remaining for use in the computer system;
monitoring execution of a job in the computer system, the
job including execution of one or more licensed software
instances on the computer system, wherein the execution of each
licensed software instance results in consumption of a predefined
number of license tokens; and
decrementing the token counter subsequent to execution
of the job in the computer system, the token counter decremented
for each successful execution of the one or more licensed
software instances.
REJECTIONS
Claims 1, 5, and 6 are rejected under 35 U.S.C. § 102(b) as anticipated
by Znidarsic (US 2008/0005032 Al, pub. Jan. 3, 2008).
Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Znidarsic.
Claims 2 and 3 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Znidarsic and Sekigawa (US 7,013,294 Bl, iss. Mar. 14, 2006).
Claims 7 and 8 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Znidarsic and Wyman (US 5,204,897, iss. Apr. 20, 1993).
Claims 4 and 8 are rejected under 35 U.S.C. § 112, second paragraph,
as indefinite for failing to particularly point out and distinctly claim the
subject matter which the applicant regards as the invention.
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Application 13/427,980
ANALYSIS
The§ 102(b) and§ 103(a) rejections
The Examiner finds that paragraphs 29 and 30 and claim 3 of
Znidarsic disclose the monitoring and decrementing steps of claim 1. (Final
Action 7.)
Znidarsic discloses:
When a user, either a system administrator or an end user,
initiates installation of that software application, the system 204
checks with the license server 200 to determine whether a license
is available (506) . ... If a license is available, the license count
202 is decremented by one (508) and the licensed software 302
is installed (510). . . . If the installation was unsuccessful, the
license count 202 is incremented to restore the now unused
license to the count 202 (512).
(Znidarsic i-f 29.)
Appellants argue that "[i]n Znidarsic, a license is not consumed each
time the licensed software executes. As stated, a license in Znidarsic is only
issued only at software install time, prior to the licensed software ever
executing." (Appeal Br. 9.) Appellants further argue that "Znidarsic's
license count decrementing is performed at software installation time; it is
not decremented subsequent to a job for each successful execution of one or
more licensed software instances, as recited in paragraph (2)." (Id. at 10.)
The Examiner answers that
[ t ]he specification does not provide a description of "execution
of a job including execution of one or more license software
instances" and therefore does not limit the interpretation to
executing the licensed software to perform its intended function.
Therefore, the claim limitation of "executing of a job in the
computer system, the job including execution of one or more
licensed software instances" given its broadest reasonable
interpretation, can be understood to include an installation that
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Application 13/427,980
installs the software because installation also includes execution
of a job.
(Answer 11-12.)
Appellants disagree and argue that claim 1 claims "a software
licensing model that is based on a use count" (Reply Br. 6, citing Spec.
i-fi-18, 13) while "Znidarsic's license count is not based on licensed software
execution; it is based on software installation without regard to how many
times the license software is executed." (Id. at 7 .)
We give claims their "broadest reasonable interpretation consistent
with the specification." In re Hyatt, 211F.3d1367, 1372 (Fed. Cir. 2000).
Under this standard, "claim language should be read in light of the
specification as it would be interpreted by one of ordinary skill in the art."
In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983).
The "Background of the Invention" section of the Specification
describes that software licensing enforcement mechanisms "generally fall
within two distinct licensing models." (Spec. i12.) "The first model is the
nodelock concept, where the software is restricted to a specific machine for
execution - which is generally determined at installation time. An
additional restriction on a nodelock license may be how many instances of
the program can be executed simultaneously." (Id. i13, emphasis added.)
In describing "one aspect of the present invention," the Specification
states that "[i]n operation, the licensee would purchase a large number of
tokens (i.e., license keys) that are then consumed as the application
executes." (Id. i18.)
Thus, the Specification distinguishes program installation from
instances of program execution. Therefore, we do not agree that "'execution
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Application 13/427,980
of one or more licensed software instances' given its broadest reasonable
interpretation, can be understood to include an installation that installs the
software." (See Answer 12.)
In view of our claim interpretation, the Examiner does not indicate
where Znidarsic discloses "monitoring execution of a job in the computer
system, the job including execution of one or more licensed software
instances" or "decrementing the token counter ... for each successful
execution of the one or more licensed software instances." (See Claim 1,
emphasis added.)
Therefore, we reverse the rejection of claim 1 and dependent claims 5
and 6 under § 102(b ).
Additionally, the Examiner does not rely on either Sekigawa or
Wyman to cure the above discussed deficiency in Znidarsic. Nor does the
Examiner explain why the above discussed deficiency would be cured by
applying Znidarsic under an obviousness standard. Therefore, for the reason
discussed above, we reverse the rejections of dependent claims 2--4, 7,
and 8.
The § 112, second paragraph, rejections
Dependent claims 4 and 8 are rejected under§ 112, second paragraph.
Claim 4 recites: "The method of claim 1, further comprising
monitoring for successful execution of the job in the computer system with
use of a daemon, the daemon configured to consume the plurality of license
tokens and decrement the token counter."
The Examiner finds that "[ t ]he scope of the claim is unclear because
the daemon is not the part of the method." (Final Action 6.)
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Application 13/427,980
Appellants argue that
the claim clearly states that "the computer readable program
caus[ es] the multiprocessor computer system to monitor for
successful execution of the job in the multiprocessor computer
system with use of a daemon .... " Thus, the claim clearly states
that the daemon is used by the computer readable program.
(Appeal Br. 6.)
Claim 4 does not recite a "computer readable program" or a
"multiprocessor computer system." Thus, Appellants' argument is not
commensurate with the scope of the claim and, therefore, is not persuasive
of error.
recite:
With regard to claim 8, claim 8 depends from claim 7. Claims 7 and 8
7. The method of claim 1, wherein the job is allowed to
complete execution in the computer system responsive to more
license tokens being required for the execution of the licensed
software instances than are available in the plurality of license
tokens, and \~1herein the token counter records a negative balance
for the number of tokens required in the job beyond those
remaining in the plurality of license tokens.
8. The method of claim 7, wherein a subset of additional
license tokens are consumed upon addition of the additional
license tokens to the plurality of license tokens, the subset of
additional license tokens corresponding to the negative balance
of the token counter.
The Examiner finds that "it is unclear to one of the ordinary skill that
[sic] how a subset of additional license token are consume [sic] when there
is no addition of the additional license token[.]" (Final Action 6.)
Appellants disagree and argue that "the clause in question specifically
recites 'upon addition of the additional license tokens."' (Appeal Br. 6.)
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Application 13/427,980
We agree with the Examiner. Claim 8 recites that "additional license
tokens are consumed upon addition of the additional license tokens." But
claim 8 does not include a step of adding additional license token and the
phrase "the additional license tokens" lacks antecedent basis.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 8 under§ 112, second paragraph.
DECISION
The Examiner's rejection of claims 1, 5, and 6 under 35 U.S.C.
§ 102(b) is reversed.
The Examiner's rejections of claims 2--4, 7, and 8 under 35 U.S.C.
§ 103(a) are reversed.
The Examiner's rejections of claims 4 and 8 under 35 U.S.C. § 112,
second paragraph, are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv)(2013).
AFFIRMED-IN-PART
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