Ex Parte Hohlfeld et al

Patent Trial and Appeal Board

Sep 26, 2016

13118738 (P.T.A.B. Sep. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/118,738 05/31/2011
23696 7590 09/28/2016
QUALCOMM INCORPORATED
5775 MOREHOUSE DR.
SAN DIEGO, CA 92121
FIRST NAMED INVENTOR
Matthew W. HOHLFELD
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.
103100Ul 1157
EXAMINER
WILLIAMS, JEFFERY L
ART UNIT PAPER NUMBER
2495
NOTIFICATION DATE DELIVERY MODE
09/28/2016 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):
us-docketing@qualcomm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW W. HOHLFELD, YIN LING LIONG,
GIRIDHARD. MANDYAM, andMATTHEWH. SMALL1
Appeal2015-005352
Application 13/118,738
Technology Center 2400
Before CARL W. WHITEHEAD JR., JON M. JURGOV AN, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-35, which are all of the claims pending in the application. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Technology
The application relates to "managing licensed items" such as
"ringtones, wallpaper, games, etc." Spec. i-fi-12, 4. In particular, a "layered
licensing agent may operate in combination with the legacy licensing
component to enforce licensing policies from both new and legacy licensing
infrastructures/systems." Id. ,-r 25.
1 Appellants state the real party in interest is Qualcomm Inc. App. Br. 3.
Appeal2015-005352
Application 13/118,738
Representative Claim
Claim 1 is representative and reproduced below with the limitations at
issue emphasized:
1. A method for licensing, comprising:
detecting a licensable item on a device;
accessing a legacy license associated with the licensable
item, wherein the legacy license corresponds to a legacy
licensing policy;
accessing a layered license associated with the licensable
item, wherein the layered license corresponds to a layered
licensing policy, and wherein the layered licensing policy
provides a licensing feature not provided by the legacy licensing
policy;
integrating the legacy licensing policy and the layered
licensing policy into an integrated license; and
enforcing the integrated license by a legacy licensing
component operating in combination with a layered licensing
component, wherein the legacy licensing component manages
features of the licensable item governed by the legacy license and
the layered license component manages features of the
licensable item governed b)) the la;)ered license.
Rejections
Claims 1-8, 10, 12-27, 29, and 31-35 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Bruchlos et al. (US 2005/0071276 Al; Mar. 31,
2005). Final Act. 4.
Claims 1, 2, 4, 5, 7, 14, 15, 21, 23, 24, 26, 33, and 34 stand rejected
under 35 U.S.C. § 102(b) as anticipated by Lee (EP 1 942 429 A2; July 9,
2008). Final Act. 9.
Claims 9, 11, 28, and 30 stand rejected under 35 U.S.C. § 103(a) as
obvious over Bruchlos. Final Act. 11. 2
2 Claims 17 and 19-35 were rejected under 35 U.S.C. § 112, second
paragraph (Final Act. 2), but the Examiner withdrew that objection. Ans. 2.
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Application 13/118,738
ISSUES
1. Did the Examiner err in finding Bruchlos or Lee discloses
"enforcing the integrated license by a legacy licensing component operating
in combination with a layered licensing component, wherein the legacy
licensing component manages features of the licensable item governed by
the legacy license and the layered license component manages features of
the licensable item governed by the layered license," as recited in claim 1?
2. Did the Examiner err in finding Bruchlos discloses
"determining an item type corresponding to the licensable item" and
"determining the legacy licensing policy and the layered licensing policy
based upon a match between the item type and a license type corresponding
to the licensable item," as recited in claim 16?
ANALYSIS
Claim 1: Bruchlos
Claim 1 recites "enforcing the integrated license by a legacy licensing
component operating in combination with a layered licensing component,
wherein the legacy licensing component manages features of the licensable
item governed by the legacy license and the layered license component
manages features of the licensable item governed by the layered license."
The Examiner finds "the term 'legacy license' simply represents the
notion that a particular license is existing or old"; the term "layered license"
means "a license that the Appellant intends to 'layer' or combine with
another license"; and "an 'integrated license' is a license that combines a
'legacy' license and a 'layered' license." Ans. 6. The Examiner further
finds that "legacy licenses" and "layered licenses" are not mutually
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Application 13/118,738
exclusive. Id. For example, '"legacy licenses' can clearly be called 'layered
licenses' when they are layered or combined with other licenses." Id.
Based on these interpretations, the Examiner correctly finds that
Bruchlos discloses taking multiple existing licenses (i.e., "legacy" licenses),
such as a "Cumulative License" or "Concurrent License," and combining
them into a new license called a combination license (i.e., an "integrated"
license). Ans. 7 (citing Bruchlos i-fi-140, 48, FIG. 10). Each ofBruchlos'
existing licenses would thus be both a "legacy" license and a "layered"
license. Id. While Appellants replace the claim terms with the Examiner's
terminology and assert "[t]here is no such disclosure or suggestion in
Bruchlos" (Reply Br. 3---6), Appellants' mere assertion that the prior art does
not teach a particular element without meaningful explanation is
unpersuasive. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011); In re Lovin,
652 F.3d 1349, 1357 (Fed. Cir. 2011).
Appellants further contend "[t]here is no discussion in Bruchlos
regarding how the license components are enforced, much less that any
license component is enforced by one type of licensing component
'operating in combination with' another type of licensing component." App.
Br. 14. However, Appellants do not sufficiently address the Examiner's
findings that "Bruchlos explicitly states that all of these individual licenses
within the combined or 'integrated' license are enforced" (Ans. 8 (citing
Bruchlos i-fi-f 127-131, 148, 157, 164)) and that the Specification teaches the
claimed components can be any form of software, hardware, or combination
thereof. Ans. 7-8 (citing Spec. i1 54; App. Br. 8). Thus, both the "legacy"
and "layered" licenses within the "integrated" license of Bruchlos are
enforced, and any software or hardware doing that enforcement constitutes
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Application 13/118,738
the respective claimed "components." Bruchlos need not go into more detail
than the claims, and here the claims are satisfied by any software or
hardware doing the enforcement.
Thus, while we agree with Appellants that the "wherein" clause "is
not an optional feature" (App. Br. 13), we are not persuaded that the
Examiner erred in finding Bruchlos disclosed the "wherein" clause.
Accordingly, we sustain the Examiner's rejection over Bruchlos for
claim 1, and claims 2-15 and 17-35, which Appellants argue are patentable
for similar reasons. See App. Br. 14; 37 C.F.R. § 41.37(c)(l)(iv).
Claim 1: Lee
The Examiner also concluded Lee independently anticipated claim 1,
including the "enforcing" limitation. We agree with the Examiner that
Appellants' arguments against Lee are substantially similar to its arguments
for Bruchlos, and we are not persuaded for the same reasons. See App. Br.
14--17; Ans. 10. For example, Lee discloses a "digital rights management
(DRM) system ... for controlling the use of digital content within the scope
of contracts between a user and a content provider." Lee ,-r 3. "The DRM
system encodes content to be distributed, and permits only a user having a
rights object (RO) to decode the distributed content, thereby preventing
software piracy .... The RO is a type of license for using content." Id. ,-r 4.
Lee discloses that different ROs can also be combined in various ways. Id.
i-fi-152-57. The Examiner finds such "old ROs" are both "legacy" licenses
and "layered" licenses, and the "new composite ROs" are "integrated"
licenses. Ans. 10. The Examiner also finds Lee discloses enforcement of
the ROs because the "DRM system ... permits only a user having a rights
object (RO) to decode the distributed content, thereby preventing software
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piracy such as illegal copy and illegal distribution." Lee if 4; Ans. 10.
Given these findings, Appellants have not persuaded us of any error in the
Examiner finding Lee discloses the "enforcing" limitation for the same
reasons as Bruchlos discussed above.
Accordingly, we sustain the Examiner's rejection over Lee of claim 1,
and claims 2, 4, 5, 7, 14, and 15, which Appellants argue are patentable for
similar reasons. See App. Br. 17; 37 C.F.R. § 41.37(c)(l)(iv).
While the Examiner found claims 21, 23, 24, 26, 33, and 34
anticipated by Lee, those claims depend from independent claim 20, which
the Examiner did not address against Lee. See Final Act. 9. A dependent
claim cannot be anticipated if the claims from which it depends are not
anticipated. See Hartness Int'! Inc. v. Simplimatic Eng'g Co., 819 F.2d
1100, 1108 (Fed. Cir. 1987). Thus, in the event of further prosecution, we
leave it to the Examiner to consider in the first instance whether independent
claim 20 is anticipated by Lee before addressing dependent claims.
Claim 16
Claim 16 recites "determining an item type corresponding to the
licensable item" and "determining the legacy licensing policy and the
layered licensing policy based upon a match between the item type and a
license type corresponding to the licensable item."
The Examiner relies on Bruchlos for disclosing these limitations. The
Examiner finds "Bruchlos clearly discloses identifying the different types of
services or 'events' (i.e. 'licensable items' of different types) that a user has
request[ed]." Ans. 11 (citing Bruchlos iii! 84, 89, 101, 127-131). Bruchlos
discloses that "[ m Jeter events contain the service name and the operation
name of the service that was called, timestamps, as well as the ID of the
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contract used to handle the request. Meter events vary by type, so various
ways of charging a service call are possible." Bruchlos i-f 89 (emphasis
added). Such meter event types include "[s]tart/end events ... when access
to a service is charged by the amount of time used to perform the service"
and "ad-hoc events ... when access is charged for by the number of times
that the service is accessed." Id. i-fi-1 90-91. Bruchlos also discloses
evaluating "each license policy" (id. i-f 128) and calculating usage
consumption based on the Metering Service, which may affect which license
is applied. Id. i-fi-1129-131. As above, Appellants have inserted the
Examiner's terminology into the disputed claim limitation yet failed to
sufficiently explain how the Examiner's findings fail to teach those
limitations. E.g., Reply Br. 9.
Accordingly, we sustain the Examiner's rejection of claim 16.
DECISION
For the reasons above, we affirm the Examiner's decision rejecting
claims 1-3 5. In the event of further prosecution, we leave it to the Examiner
to consider in the first instance whether independent claim 20 or its
dependent claims are anticipated by Lee.
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.
§ 41.50(±).
AFFIRMED
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