12273632 (P.T.A.B. May. 24, 2017)

Ex Parte Kumhyr et al

Patent Trial and Appeal BoardMay 24, 2017

12273632 (P.T.A.B. May. 24, 2017)

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. 12/273,632 11/19/2008 David Bruce Kumhyr AUS920080689US1 8691 75916 7590 IBM AUS IPLAW (GLF) c/o Garg Law Firm, PLLC 4521 Copper Mountain Lane Richardson, TX 75082 05/26/2017 EXAMINER REAGAN, JAMES A ART UNIT PAPER NUMBER 3621 NOTIFICATION DATE DELIVERY MODE 05/26/2017 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): dpandy a @ garglaw. com uspto@garglaw.com garglaw @gmail.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAVID BRUCE KUMHYR, LISA M. CHAVEZ, JOHN MICHAEL SPISAK, PAMELA ANN NESBITT, and RHONDA L. CHILDRESS Appeal 2015-008082 Application 12/273,6321 Technology Center 3600 Before, ANTON W. FETTING, JOSEPH A. FISCHETTI, and BIBHU R. MOHANTY, Administrative Patent Judges. FISCHETTI, Administrative Patent Judge. DECISION ON APPEAL 1 Appellants identify International Business Machines Corporation of Armonk, New York as the real party in interest. Br. 2. 1 Appeal 2015-008082 Application 12/273,632 STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 1—3, 5, 7—12, 14, 16—20, and 22. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF DECISION We REVERSE. THE INVENTION Appellant claims the invention relates generally to an improved data processing system (from spec.). Claim 1 reproduced below, is representative of the subject matter on appeal. 1. A computer implemented method for relating code with intellectual property assets, the computer implemented method comprising: identifying an intellectual property asset; locating a portion of code from an entire code of a software application, the portion of code corresponding to the intellectual property asset; marking the portion of code with information identifying the intellectual property asset, wherein the marking invokes a license manager such that a license managed by the license manager for the portion of code is locked during execution of the portion of code; executing the portion of the code during the execution of the software application; recording the execution of the portion of code, the recording indicating a use of the intellectual property asset, the recording comprising: Appeal 2015-008082 Application 12/273,632 locking the license at the beginning of the execution of the portion of code; releasing the license at the conclusion of the execution; and logging a use of the license, the logging including the information identifying the intellectual property asset; and analyzing the recording according to a set of analysis control factors. THE REJECTION The following rejections are before us for review. Claims 1—3, 5, 7—12, 14, 16—20, and 22 are rejected under 35 U.S.C. § 101. ANALYSIS In rejecting claims 1—3, 5, 7—12, 14, 16—20, and 22 under 35 U.S.C. §101, the Examiner found, “All of these computer functions are well- understood, routine, conventional activities previously known to the industry. In summary, each step does no more than require a generic computer to perform generic computer functions.” (Answer 4). We disagree with the Examiner. We find instead that the claims, when considered as a whole, are directed to a technological improvement in selectively accessing portions of software code constituting intellectual property by locking and unlock same using a license manager. Appeal 2015-008082 Application 12/273,632 In Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), the Supreme Court clarified the law regarding patentable subject matter. In doing so, the Supreme Court reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1300 (2012), “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of these concepts.” Alice Corp., 134 S. Ct. at 2355. The first step in the analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts,” id., e.g., to an abstract idea. If the claims are not directed to an abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the second step where the elements of the claims are considered “individually and ‘as an ordered combination”’ to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Alice Corp., 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1297). The Court acknowledged in Mayo, that “all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Mayo, 132 S. Ct. at 1293. Therefore, the Federal Circuit has instructed that claims are to be considered in their entirety to determine “whether their character as a whole is directed to excluded subject matter.” McRO, Inc. v. Bandai Namco Games America, Inc., 2016 WL 4896481, *6 (Fed. Cir. September 13, 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). Here, the claimed invention relates to a “method for relating code with intellectual property assets.” (Appx. claim 1; Specification 1: |1). The Appeal 2015-008082 Application 12/273,632 Specification describes, many licensing configurations may be associated with an application depending on the nature of the use of the application. For example, a corporation may procure an application with licenses for one hundred seats. Per seat licensing allows the licensed number of instances of the application to execute concurrently at the maximum. Specification 1—2:14. The claimed invention addresses this shortcoming by marking a portion of code from an entire code of a software application, the marked portion of code corresponding to the intellectual property asset wherein the marking invokes a license manager such that a license managed by the license manager for the portion of code is locked during execution of the portion of code. (Appx, claim 1). The Federal Circuit noted in McRO that the abstract idea exception has been applied to prevent patenting of claims that abstractly cover results where “it matters not by what process or machinery the result is accomplished” {McRO, 2016 WL 4896481 at *8 (quoting O Reilly v. Morse, 56 U.S. (15 How.) 62, 113 (1854))). The court in that case, thus, looked to whether the claim at issue focused on a specific method that improves the relevant technology, i.e., computer animation, or instead was directed to a result or effect that itself is the abstract idea and merely invokes generic processes and machinery {id.). There, the court concluded that the claim, when considered as a whole, was directed to a technological improvement over the existing, manual 3-D animation techniques and used limited rules in a process specifically designed to achieve an improved technological result in conventional industry practice. As such, the court found that the claim Appeal 2015-008082 Application 12/273,632 was not directed to an abstract idea. Id. at *10. Similarly here, claim 1 is directed to a specific improvement in a way to allow access to intellectual property assets by marking the portion of code with information identifying the intellectual property asset, wherein the marking invokes a license manager such that a license managed by the license manager for the portion of code is locked during execution of the portion of code; — an improvement designed to address a shortcoming in conventional practice and achieve an improved technological result. See, Specification 1—2:14. This is not a situation where “it matters not by what process or machinery the result is accomplished.” Instead, similar to the situation in McRO, it is the claimed marking of the portion of code with information and not the use of generic network components, which improves the existing technological process by identifying the intellectual property asset using the code marking to invoke a license manager such that a license managed by the license manager for the portion of code is locked during execution of the portion of code and released at the conclusion of the execution. Although not dispositive,2 claim 1 also does not broadly preempt all processes for achieving access to encoded intellectual property.3 Claim 1 is limited to a specific code processing by locating a portion of code from an entire code of a software application, the portion of code 2 The Federal Court has noted that although preemption may signal patent ineligible subject matter, “the absence of complete preemption does not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). 3 The Specification describes possible alternative solutions, “for generating many licensing configurations may be associated with an application depending on the nature of the use of the application.” (Spec. 2:14). Appeal 2015-008082 Application 12/273,632 corresponding to the intellectual property asset; marking the portion of code with information identifying the intellectual property asset, wherein the marking invokes a license manager such that a license managed by the license manager for the portion of code is locked during execution of the portion of code; executing the portion of the code during the execution of the software application; recording the execution of the portion of code, the recording indicating a use of the intellectual property asset, the recording comprising: locking the license at the beginning of the execution of the portion of code; and releasing the license at the conclusion of the execution. We find that claim 1, when considered as a whole, is directed to a method for improving an existing technological process, i.e., a process designed to solve the prior art problem of identifying a coded intellectual property asset using the code marking to invoke a license manager and is rooted in technology. Therefore, we do not sustain the Examiner’s rejection of claim 1 under 35 U.S.C. § 101 and those claims which depend therefrom. CONCLUSIONS OF LAW We conclude the Examiner did not err in rejecting claims 1—3, 5, 7— 12, 14, 16-20, and 22 under 35 U.S.C. § 101. DECISION The decision of the Examiner to reject claims 1—3, 5, 7—12, 14, 16—20, and 22 is reversed. Appeal 2015-008082 Application 12/273,632 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)(l)(iv). REVERSED.