Ex Parte Heyman et al

Patent Trial and Appeal Board

Dec 19, 2016

12788926 (P.T.A.B. Dec. 19, 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.
12/788,926 05/27/2010 Jerrold M. Heyman AUS920100114US1 7646
82553 7590
Walter W. Duft
P.O. Box 378
Clarence Center, NY 14032
12/21/2016 EXAMINER
QAYYUM, ZESHAN
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
12/21/2016 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
Appeal 2014-0081761
Application 12/788,9262
Technology Center 3600
Before BIBHU R. MOHANTY, JAMES A. WORTH, and
MATTHEW S. MEYERS, Administrative Patent Judges.
MEYERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 9—22. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Our decision references Appellants’ Appeal Brief (“Appeal Br.,” filed
May 6, 2014) and Reply Brief (“Reply Br.,” filed July 25, 2014), and the
Examiner’s Answer (“Ans.,” mailed May 30, 2014), and Final Office Action
(“Final Act.,” mailed February 6, 2014).
2 Appellants identify International Business Machines Corporation as the
real party in interest (Appeal Br. 1).
Appeal 2014-008176
Application 12/788,926
CLAIMED INVENTION
Appellants’ claimed invention relates to “techniques for serving and
tracking the use of software licenses for a plurality of processing CPUs and
cores in large-scale computing environments, such as massively parallel
processing computer systems” (Spec. 11).
Claims 9 and 15 are the independent claims on appeal. Claim 9,
reproduced below, with minor formatting changes and added bracketed
notations, is illustrative of the subject matter on appeal:
9. A parallel programming computing system,
comprising:
[a] a plurality of processors within the parallel
programming computing system;
[b] at least one memory store within the parallel
programming computing system having instructions operable
with one or more of the plurality of processors for serving
software licenses within the parallel programming computer
system, the instructions comprising:
[c] maintaining a plurality of license tokens, the
plurality of license tokens used for execution of licensed
software instances across the plurality of processors;
[d] tracking a number of the plurality of license
tokens remaining with a token counter;
[e] monitoring execution of a job, the job including
execution of one or more licensed software instances,
wherein the execution of each licensed software instance
results in consumption of one license token; and
[f] decrementing the token counter subsequent to
execution of the job, the token counter decremented for
each successful execution of the one or more licensed
software instances.
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REJECTIONS
Claims 15—22 are rejected under 35 U.S.C. 101 as being directed to
directed to non-statutory subject matter.
Claims 14, 18 and 22 are rejected under 35 U.S.C. § 112(b) or 35
U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite.
Claims 9—12 and 15—20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Znidarsic (US 2008/0005032 Al, pub. Jan. 3, 2008) and
Sekigawa (US 7,013,294 Bl, iss. Mar. 14, 2006).
Claims 13, 14, 21, and 22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Znidarsic, Sekigawa, and Wyman (US 5,204,897, iss.
Apr. 20, 1993).
ANALYSIS
Indefiniteness
Dependent claims 14 and 22
Dependent claims 14 and 22 each recite “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.”
In rejecting claims 14 and 22 as indefinite, the Examiner finds that “it
is unclear to one of the ordinary skill that how a subset of additional license
token[s] are consume [d] when there is no addition of the additional license
token” (Final Act. 7). However, we agree with Appellants that a person of
ordinary skill in the art would understand what is claimed when claims 14
and 22 are read in light of the Specification.
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Application 12/788,926
In this regard, we agree with Appellants that claims 14 and 22
“specifically recite[] ‘upon addition of the additional license tokens,’”
(Appeal Br. 8), and “if such addition takes place, a subset of additional
license tokens will be consumed” {id. at 9) “corresponding to the negative
balance of the token counter,” as the claims recite. Therefore, we do not
sustain the Examiner’s rejection of dependent claims 14 and 22 under 35
U.S.C. § 112, second paragraph. See, e.g., Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (The test for
definiteness under 35 U.S.C. § 112, second paragraph, is whether those
skilled in the art would understand what is claimed when the claim is read in
light of the specification).
Dependent claim 18
Claim 18 recites “the computer readable program further causing the
multiprocessor computer system to monitor for successful execution of the
job in the multiprocessor computer system with use of a daemon, the
daemon configured to consume the plurality of license tokens and decrement
the token counter.”
In rejecting claim 18 as indefinite, the Examiner finds that “[t]he
scope of the claim is unclear because the daemon is not part of the program
product and does not add any positive step to the claimed steps” (Final Act.
7). However, as Appellants point out, “the claim clearly states that the
daemon is used by the computer readable program, and is thus part of that
program” and “the daemon is said to perform operations that are already
recited in claim 15 as being part of the program” (Appeal Br. 9).
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Therefore, we do not sustain the Examiner’s rejection of dependent
claim 18 under 35 U.S.C. § 112, second paragraph. See Orthokinetics, Inc.,
806 F.2d at 1576.
Non-Statutory Subject Matter
We are not persuaded by Appellants’ argument that the Examiner
erred in rejecting independent claim 15 and dependent claims 16—22 under
35 U.S.C. § 101 because the phrase “computer program product comprising
a computer readable storage medium,” as recited by independent claim 15,
cannot be reasonably interpreted to include transitory propagating signals a
propagation medium or a signal alone (see Appeal Br. 6—8; see also Reply
Br. 4—5). More particularly, Appellants’ argue that the Specification
“draw[s] a clear distinction between a ‘computer readable storage medium,’
as claimed, and a ‘computer readable signal medium,’ which is not claimed”
(Appeal Br. 7 (citing Spec. 43 44)). However, paragraph 43 of the
Specification clearly states that “[t]he computer readable medium may be a
computer readable signal medium or a computer readable storage medium.”
Therefore, in contrast to Appellants’ contention that the Specification
provides “an express intent to exclude propagating signals from the scope of
the other described species of computer readable medium, designated by the
term ‘computer readable storage medium’” (Appeal Br. 8), we agree with
the Examiner that given its broadest reasonable interpretation in light of the
Specification, the phrase “computer readable storage medium,” thus,
includes transitory signals, which are non-statutory subject matter (see Ans.
9-10). See In re Nuijten, 500 F.3d 1346, 1353 (Fed. Cir. 2007) (holding that
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Application 12/788,926
“transitory embodiments are not directed to statutory subject matter”); see
also Ex parte Mewherter, 107 USPQ2d 1857, 1862 (PTAB 2013)
(precedential) (finding a machine readable storage medium non-statutory
under § 101). Further, analyzing claims 15—22 under the framework set
forth in Alice, we determine that the claims are directed to monitoring the
consumption of credits in the context of licensing, that this is a fundamental
economic activity which is patent ineligible subject matter, and that the use
of a computer to implement the monitoring does not transform the invention
into patent eligible subject matter. See Alice Corp., Pty. Ltd. v CLS Bank
Inti, 134 S.Ct. 2347, 2355 (2014).
Accordingly, we sustain the Examiner’s rejection of claims 15—22
under 35 U.S.C. § 101.
Obviousness
Independent claim 9 and dependent claims 10—14
We are persuaded by Appellants’ argument that the Examiner erred in
rejecting independent claim 9 under 35 U.S.C. § 103(a) because Znidarsic,
upon which the Examiner relies, fails to disclose or suggest limitations [c],
[e], and [f] (see Appeal Br. 11—15; see also Reply Br. 6—8).
The Examiner maintains that the rejection is proper, and cites
paragraphs 15, 19-21, and 29-30, as well as claim 3, of Znidarsic as
disclosing the argued limitations (see Final Act. 8—9).
However, we agree with Appellants that the cited portions of
Znidarsic, alone, or in combination with Sekigawa, fail to disclose or
suggest the argued limitations which recite:
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[c] maintaining a plurality of license tokens, the plurality of
license tokens used for execution of licensed software instances
across the plurality of processors;
[e] monitoring execution of a job, the job including execution of
one or more licensed software instances, wherein the execution
of each licensed software instance results in consumption of one
license token; and
If) decrementing the token counter subsequent to execution of the
job, the token counter decrementedfor each successful execution
of the one or more licensed software instances.
(See Appeal Br. 11—15; see also Reply Br. 6—8)
In making this determination, we note that Znidarsic is directed to “a
method and system for enforcing seat-based licensing of software”
(Znidarsic 11). Znidarsic describes that “seat-based licensing” “grants a
user the right to install software a preset number of times,” i.e., “based on
how many times a user can install software” (id. 12). More particularly
Znidarsic discloses
[a] license server stores information about the number of licenses
available. Prior to software installation, a remote system queries
the license server to ensure that the appropriate license is
available. If there is no available license for the software being
installed, the license server returns an indication that the software
is not to be installed, and installation aborts. If there is a license
available, the license count is decremented and the software is
installed. If the installation aborts before successful completion,
the license count is restored to its previous state by incrementing
the count.
(Id. 115). In this regard, Znidarsic discloses that “[ljicense server 200
administers and regulates licenses for applications installed on end-user
systems 204” and “license server 200 and end-user systems 204
communicate with each other during installation or uninstallation of the
software application” (id. 120). Znidarsic further discloses
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[u]pon initiation of installation on an end-user system 204, the
end-user system 204 notifies the license server 200 which
application 206 is being installed, along with the version 308 and
the manufacturer 310. The license server 200 verifies the license
count 202 for that software application and informs the end-user
system 204 whether a license is available or not. Depending on
that information, the software application 206 is either installed
on the end-user system 204 or not.
{Id. 122).
We also note that Sekigawa is directed “to a license management
system which can flexibly issue a license for software to a user in
accordance with a use environment of the user when a software maker
supplies the desired software to the user” (Sekigawa, col. 1,11. 6—10). In one
embodiment, Sekigawa discloses that “sample program was executed by the
model S-4/1000 as the platform. In this case, the SPARC server having four
CPUs was used for this model, and the number of parallel processing and the
number of license (number of key) are different each other in accordance
with the file size.” {id. at col. 15,11. 38-43; see also id. at Figs. 42A-C).
In response to Appellants’ arguments {see Appeal Br. 12—14), the
Examiner states
[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
installs the software because installation also includes execution
of ajob.
(Ans. 12).
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Application 12/788,926
However, as Appellants point out, “Znidarsic’s installer is not the
licensed software, nor is the licensed software the installer” (Reply Br. 6
(citing Znidarsic 25—30; Fig. 3)). In this regard, Znidarsic distinguishes
between “Licensed Software 302” and “Installation Unpackager 312” (see
Znidarsic 126; see also id. at Fig. 3, elements 302, 312). Thus, we agree
with Appellants that “[t]he Examiner is confusing execution of Znidarsic’s
installer with execution of the software being installed” (Reply Br. 6), and as
such, “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 8). Thus, we fail to understand, and the
Examiner does not adequately explain how Znidarsic’s disclosure regarding
its “license server” which “administers and regulates licenses for
applications installed on end-user systems 204” by communicating with end-
user systems 204 “during installation or uninstallation of the software
application” {id. 120) discloses or suggests the argued limitations. We note
the Examiner does not rely on Sekigawa to address the argued limitations.
The Examiner also takes the position that “[functional recitation
using the word ‘for’ or other functional language (e.g. ‘configured to’ or
operable) have been considered but are given no patentable weight because
they fail to add any structural limitations and are thereby regarded as
intended use language” (Ans. 13). However, we agree with Appellants that
“claim 9 recites a programmed machine that has a specified operational
configuration” (Reply Br. 8), and as such, is not merely directed to intended
use language. See Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376,
1380 (Fed. Cir. 2011) (discussing Microprocessor Enhancement Corp. v.
Texas Instruments, Inc., 520 F.3d 1367 (Fed. Cir. 2008)). When the
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functional language is associated with programming or some other structure
required to perform the function, that programming or structure must be
present in order to meet the claim limitation. Id.
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claim 9 under 35 U.S.C. § 103(a). For the same reasons, we
also do not sustain the Examiner’s rejections of claims 10—14, which depend
therefrom.
Independent claim 15 and dependent claims 16—22
Independent claim 15 includes a limitations similar to limitations [c],
[e], and [f] in independent claim 9, and is rejected based on the same
rationale applied with respect to independent claim 9 (see Final Act. 8).
Thus, for the same reasons, we also do not sustain the Examiner’s rejections
of independent claim 15, and claims 16—22, which depend therefrom, under
35 U.S.C. § 103(a).
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DECISION
The Examiner’s rejections of claims 14, 18 and 22 under 35 U.S.C.
§112, second paragraph, are not sustained.
The Examiner’s rejection of claims 15—22 under 35 U.S.C. § 101 is
sustained.
The Examiner’s rejections of claims 9-22 under 35 U.S.C. § 103(a)
are not sustained.
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).
AFFIRMED-IN-PART
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