Ex Parte Rajamani

Board of Patent Appeals and Interferences

Sep 8, 2008

10286764 (B.P.A.I. Sep. 8, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BALAJI RAJAMANI
____________

Appeal 2008-0975
Application 10/286,764
Technology Center 3600
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Decided: September 8, 2008
____________

Before WILLIAM F. PATE, III, DAVID B. WALKER, and JOHN C.
KERINS, Administrative Patent Judges.

WALKER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1-17 and 20-30. We have jurisdiction under 35
U.S.C. § 6(b) (2002). We affirm.
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Appellant claims a system and method for automatically licensing
appliances or applications (Specification 1:[0001]). Claim 1, reproduced
below with bracketed numbering added, is representative of the subject
matter on appeal.
1. A method of automated licensing of an
appliance or an application comprising:
[a] obtaining for a customer, a customer
identification;
[b] obtaining for a customer a license
entitlement for a purchased appliance or a
purchased application;
[c] providing from the customer to a
licensing client associated with the appliance or
the application the customer identification and the
license entitlement;
[d] producing with the licensing client a
validation key to identify an entity associated with
the appliance or a host of the application;
[e] transmitting the validation key, the
customer identification and the license entitlement
from the licensing client to a licensing server;
[f] processing the validation key, the
customer identification and license entitlement at
the licensing server to determine if the validation
key, the customer identification and license
entitlement are verified; and
[g] in response to determination that the
validation key, the customer identification and the
license entitlement are verified, generating with
the licensing server a license key for the appliance
or application which is transmitted by the licensing
server back to the licensing client which enables
the appliance or application.

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THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Misra US 6,189,146 B1 Feb. 13, 2001

1. Claims 1-15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Appellant’s Admitted Prior Art as shown
in Appellant’s Figure 1 and the accompanying description in
the Specification (AAPA) in view of Misra.
2. Claims 1-17 and 20-30 stand rejected under 35 U.S.C. §
103(a) as unpatentable over Misra.

ISSUE
The issue before us is whether the Examiner erred in rejecting 1)
claims 1-15 under 35 U.S.C. § 103(a) as unpatentable over AAPA in view of
Misra; and 2) claims 1-17 and 20-30 under 35 U.S.C. § 103(a) as
unpatentable over Misra. The dispositive issue is whether the references
teach disputed claim limitations [f] and [g] of claim 1.
Rather than repeat the arguments of Appellant or the Examiner, we
make reference to the Brief and the Answer for their respective details.
Only those arguments actually made by Appellant have been considered in
this decision. Arguments which Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii) (2007).

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FINDINGS OF FACT
We find the following enumerated findings to be supported by at least
a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422,
1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).

1. Figure 1 of Appellant’s Specification is admitted to be prior art, and
illustrates a manually operated prior art system and method 10 for
providing licensing of appliances, such as network appliances or
applications such as network management stations (Specification
[0002] and Figure 1).
2. The licensing performed by the system and method 10 is characterized
by manual interaction between the customer 12, software license
management infrastructure 14, and the network appliance and
application host 16. These manual interactions include license
registration of the appliance or application, which need the customer
12 manually interacting with the software license management
infrastructure 14 and the network appliance or application host 16 to
obtain a lookup appliance/application validation key 20 from the
network appliance or application host 16 and forward the same along
with the customer ID and the license entitlement 24 to the software
license management infrastructure 14 which provides the license key
26 back to the customer 12 (Specification [0002] and Figure 1).
3. The license key 26 is generated by the software license management
infrastructure verifying the customer ID, validation key and
entitlement with stored counterparts thereof by comparison with the
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stored counterparts. After thus receiving the license key 26 from the
license management infrastructure 14, the customer 12 manually
installs the obtained license key 28 in the appliance or application host
16 which subsequently gets used by the software licensing client 18
(Specification [0002] and Figure 1).
4. Misra discloses a software licensing system including a license
generator located at a licensing clearinghouse and at least one license
server and multiple clients located at a company or entity (Misra,
abstract).
5. Misra teaches that one or more intermediate servers can be used,
because some clients may not have network connectivity to the license
server (Misra, col. 4, ll. 31-34).
6. When a client connects to a server, the client presents a valid license
(if it has one). If the client does not have an appropriate license, the
server assists the client in obtaining a license from the license server.
This provides an automated mechanism for clients to obtain and
license servers to distribute licenses to clients (Misra, col. 2, ll. 62-
67).
7. Misra teaches that the client 30 has a license requestor 132, a
challenge handler 134, and a license cache 136. The license requestor
initiates the license request for obtaining a software license from the
license server. This involves connecting to the intermediate server
and presenting a software license and a client ID to the intermediate
server. (Misra, col. 11, ll. 46-51).
8. The client ID submitted by the client is validated against a client ID
within the software license (Misra, col. 11, ll. 51-53).
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9. The client ID is passed on to the license server, which then initiates a
platform challenge. The client’s challenger handler handles the
platform challenge from the license server. It computes a response to
the challenge that contains the client’s image, which can be used by
the license server to authenticate the client (Misra, col. 11, ll. 60-65).
10. If the client is deemed authentic, the license server downloads a
software license to the client. The license generator assigns a unique
license ID to the issued license. Because the licenses are tied to a
specific client through a client ID, digitally signed by the license
server, and encrypted, the software licenses cannot be activated on
other clients (Misra, col. 11, l. 66 – col. 12, l. 7).

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of ordinary skill in the art, and (4) where in evidence,
so-called secondary considerations. Graham v. John Deere Co., 383 U.S. 1,
17-18 (1966). See also KSR, 127 S.Ct. at 1734 (“While the sequence of
these questions might be reordered in any particular case, the [Graham]
factors continue to define the inquiry that controls.”)
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In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” id. at 1739, and reaffirmed principles based on its precedent that “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” Id. The Court
explained:
When a work is available in one field of endeavor,
design incentives and other market forces can
prompt variations of it, either in the same field or a
different one. If a person of ordinary skill can
implement a predictable variation, §103 likely bars
its patentability. For the same reason, if a
technique has been used to improve one device,
and a person of ordinary skill in the art would
recognize that it would improve similar devices in
the same way, using the technique is obvious
unless its actual application is beyond his or her
skill.
Id. at 1740. The operative question in this “functional approach” is thus
“whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id.
In rejecting claims under 35 U.S.C. § 103(a), the examiner bears the
initial burden of establishing a prima facie case of obviousness. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). See also In re Piasecki, 745
F.2d 1468, 1472 (Fed. Cir. 1984). Only if this initial burden is met does the
burden of coming forward with evidence or argument shift to the appellant.
Id. at 1445. See also Piasecki, 745 F.2d at 1472. Obviousness is then
determined on the basis of the evidence as a whole and the relative
persuasiveness of the arguments. See Oetiker, 977 F.2d at 1445; Piasecki,
745 F.2d at 1472.
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ANALYSIS
Rejection of claims 1-15 under 35 U.S.C. § 103(a) as unpatentable
over AAPA in view of Misra
The Appellant argues claims 1-15 as a group. We treat claim 1 as
representative.
The Examiner found that AAPA discloses all of the recited steps of
claim 1 except for the limitations of the licensing client handling the
transmitting of the validation key, customer identification, and license
entitlement to a license server and transmitting a license key from the license
server back to the licensing client (Answer 3-4). The Examiner further
found that the difference between AAPA and what is being claimed is the
automation of a previously recognized manual activity that was done by the
customer in the prior art. The Examiner concluded that it would have been
obvious to one of ordinary skill in the art at the time the invention was made
to modify AAPA by automating the steps of transmitting the validation key,
customer identification, and license entitlement to the license server and
receiving the license key from the license server, because Misra recognizes
and discloses the desirability of automating a licensing process (Answer 4;
citing In re Venner, 262 F.2d 91, 95 (CCPA 1958) for the premise that mere
automation of an activity recognized in the prior art as being performed
manually is not sufficient to patentably distinguish over the prior art).
The Appellant argues that the AAPA of Figure 1 differs from Figure 2
of the invention in that the license key and validation key, which both pass
through the customer in Figure 1, completely bypass the customer in Figure
2. The Appellant further argues that AAPA fails to disclose a licensing
client associated with the appliance or application as claimed in claim 1 (Br.
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6). The Appellant argues that AAPA thus fails to disclose limitations [f] and
[g] in claim 1 above.
The Examiner found that the license key and validation key bypass the
customer in Figure 2 because the applicant has automated these steps and the
manual interaction of the customer for these steps is not needed anymore,
because it has been automated (Answer 12). We agree with the Examiner
that the customer would logically be cut out of processing the license key
and validation key as a natural byproduct of automating the licensing
process. Our reviewing court stated in Leapfrog Enterprises, Inc. v. Fisher-
Price, Inc., 485 F.3d 1157 (Fed. Cir. 2007), that one of ordinary skill in the
art would have found it obvious to combine an old electromechanical device
with electronic circuitry
to update it using modern electronic components in
order to gain the commonly understood benefits of
such adaptation, such as decreased size, increased
reliability, simplified operation, and reduced cost
. . . . The combination is thus the adaptation of an
old idea or invention . . . using newer technology
that is commonly available and understood in the
art.

Id. at 1162. We conclude that here, as in Leapfrog, it would have been
obvious to one of ordinary skill in the art to automate the processing of the
license key and validation key as suggested by the Examiner, particularly in
light of the teaching of Misra to provide an automated licensing system
(Finding of Fact 6).
Also, we do not find persuasive the argument that the combination of
AAPA in view of Misra fails to teach or suggest the licensing client,
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because, as discussed more fully below, Misra alone renders obvious the
licensing client (Findings of Fact 6 and 7).
The Appellant thus has failed to show error in the Examiner’s
rejection of claim 1. Claims 2-15 are not argued separately and, thus fall
with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2007). See also In re Young,
927 F.2d 588, 590 (Fed. Cir. 1991).

Rejection of claims 1-17 and 20-30 under 35 U.S.C. § 103(a) as
unpatentable over Misra
The Appellant argues claims 1-17 and 20-30 as a group. We treat
claim 1 as representative.
The Examiner equates 1) the client ID of Misra to the customer ID of
the claimed invention; 2) the software license of Misra to the license
entitlement of the claimed invention; and 3) the data involved in the
platform challenge of Misra to the validation key of the claimed invention
(Answer 7; citing Misra, col. 11, ll. 49-51 and 60-65). The Examiner found
that upon verification of the validation key, customer ID, and license
entitlement, a license key (new license) is sent to the client 30 from the
license server (Answer 7).
The Examiner concedes that Misra does not teach that the processing
of the validation key, customer ID, and the license entitlement takes place at
the licensing server, and that Misra uses two servers where the Appellant
claims using the license server to handle data verification processing
(Answer 8). The Examiner found that Misra teaches, at column 4, lines 31-
34, that an intermediate server is used because some clients may not have
network connectivity to the license server (Id.). The Examiner therefore
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found that Misra teaches one of skill in the art that the intermediate server is
not essential and can be removed if the clients have network connectivity to
the licensing server. The Examiner concluded that it would have been
obvious to one of ordinary skill in the art at the time the invention was made
to have the license server handle the data verification processing as opposed
to two servers (Id.).
The Appellant argues that Misra does not teach or suggest limitations
[f] or [g] of claim 1 (Br. 3-4). More specifically, Appellant argues that
Misra fails to teach or suggest that the license entitlement is verified (Br. 4).
According to Appellant, the client ID submitted by the client is validated
against a client ID within the software license (Br. 4, citing Misra, col. 11, ll.
51-53), but the software license itself is not verified. The Appellant argues
that the software license of Misra is only used to provide a value for
comparison to the client ID and is not itself verified (Br. 4).
The Examiner found that, in the system of Misra, when a license is
initially presented to the intermediate server 32, it must be determined
whether the license is valid or not. If the license is expired, this fact is
verified by the server, and the server then assists the client in obtaining a
new and valid license (license key). The Examiner found that this satisfies
what is claimed as far as “verifying” the license entitlement at the server
(Answer 11).
We agree with the Examiner. We find that validating the client ID
submitted by the client against a client ID within the software license (which
the Appellant concedes is taught by Misra) meets the claim limitation for
validating the license entitlement (Finding of Fact 8). The only apparent
difference between the prior art and limitations [f] and [g] is the use of an
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intermediate server and license server rather than a license server alone. We
agree with the Examiner that it would have been obvious to do away with
the intermediate server and to combine the functions of the two servers in a
single license server in view of the cited teachings of Misra (Finding of Fact
5).
Appellant further argues that Misra fails to teach or suggest that the
software license is transmitted to the license server (28) (Br. 5). This
argument is not commensurate with the scope of claim 1, which requires that
a license key for the appliance or application, not the software license or
license entitlement, is transmitted by the licensing server back to the
licensing client which enables the appliance or application. To the extent
that the Appellant argues that the license entitlement is not verified, we do
not find the argument persuasive for the reasons stated above (Finding of
Fact 8).
The Appellant thus has failed to show error in the Examiner’s
rejection of claim 1. Claims 2-17 and 20-30 are not argued separately and,
thus fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii). See also In re
Young, 927 F.2d at 590.

CONCLUSIONS
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 1-15 as unpatentable over AAPA in view of Misra and
claims 1-17 and 20-30 as unpatentable over Misra.

DECISION
The decision of the Examiner to reject 1-17 and 20-30 is affirmed.
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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) (2007).

AFFIRMED

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