Ex Parte Shintani et al

Patent Trial and Appeal Board

Jun 28, 2018

13072941 (P.T.A.B. Jun. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/072,941 03/28/2011
36738 7590
ROGITZ & AS SOCIA TES
4420 Hotel Circle Court
SUITE 230
SAN DIEGO, CA 92108
07/02/2018
FIRST NAMED INVENTOR
Peter Shintani
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.
201003718.01 7074
EXAMINER
WINTER, JOHN M
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
07/02/2018 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):
Noelle@rogitz.com
eofficeaction@appcoll.com
J ohn@rogitz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER SHINTANI, ARAN LONDON SADJA, and
LUDOVIC ETIENNE DOUILLET
Appeal2016-003729
Application 13/072,941 1
Technology Center 3600
Before DEBRA K. STEPHENS, DANIEL J. GALLIGAN, and
DAVID J. CUTITTA II, Administrative Patent Judges.
GALLIGAN, Administrative Patent Judge.
DECISION ON APPEAL
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 8-12, which are all of the claims pending in the application. We
have jurisdiction under 35 U.S.C. § 6(b ). Claims 1-7 and 13-17 have been
withdrawn. Final Act. 1.
We AFFIRM. 2
1 The Appeal Brief identifies Sony Corp. as the real party in interest. App.
Br. 2.
2 Our Decision refers to Appellants' Appeal Brief filed July 24, 2015 ("App.
Br."); Appellants' Reply Brief filed February 17, 2016 ("Reply Br.");
Examiner's Answer mailed February 12, 2016 ("Ans."); and Final Office
Action mailed July 8, 2015 ("Final Act.").
Appeal2016-003729
Application 13/072,941
STATEMENT OF THE CASE
Claims on Appeal
Independent claim 8 is reproduced below.
8. Consumer electronics (CE) device comprising:
processor controlling one or more licenseable
components, at least one of which requires a license code to
enable, the license code not being available to the processor at a
point of sale (POS) of the CE device;
display controlled by the processor;
computer readable storage medium bearing instructions
executable by the processor to:
present on the display a list of feature options each having
respective operating code stored on the computer readable
storage medium and each respective operating code being
disabled at time of sale of the CE device;
receive at least one user selection from the list;
receive a license code corresponding to the user selection;
and
use the license code to enable respective operating code
corresponding to a selected feature option.
Harding
Fountian
Lanning
Smith
References
us 5,794,052
US 2007/0107067 Al
US 2009/0171747 Al
US 2010/0235249 Al
Examiner's Rejections
Aug. 11, 1998
May 10, 2007
July 2, 2009
Sept. 16, 2010
Claims 8-12 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Final Act. 4--5.
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Claims 8-12 stand rejected under 35 U.S.C. § 112 second paragraph
as being indefinite. Id. at 5.
Claims 8, 9, 11, and 12 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Smith, Lanning, and Fountian. Id. at 6-8.
Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Smith, Lanning, Fountian, and Harding. Id. at 8-9.
Our review in this appeal is limited only to the above rejections and
the issues raised by Appellants. Arguments not made are waived. See
MPEP § 1205.02; 37 C.F.R. §§ 4I.37(c)(l)(iv) and 4I.39(a)(l).
ANALYSIS
Withdrawn claims 1-7 and 13-17
The Final Rejection, from which this appeal is taken, rejects claims 8-
12 and indicates claims 1-7 and 13-17 are withdrawn. Final Act. 1-2; see
Ans. 2. Accordingly, only claims 8-12 are before us on appeal. Any
asserted rejoinder from the Examiner's restriction requirement (see App.
Br. 2-3; see also Reply Br. 1-2) is not an appealable issue but, rather, is
petitionable to the technology center director (see Manual of Patent
Examining Procedure§ 1002.02(c)(2) (9th ed., rev. 8, Jan. 2018)). We,
therefore, do not address claims 1-7 and 13-1 7.
35 US.C. § 101 Reiection of Claims 8-12
Appellants contend the Examiner erred in determining claims 8-12
are directed to an abstract idea. App. Br. 5-7; Reply Br. 2. We are
persuaded. The Examiner determines that the claims are "directed to the
abstract idea of selecting a feature and activating the feature based upon a
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Application 13/072,941
received code" (Final Act. 4) or to "the process of presenting a list of feature
options, receive a selection and receive a license code based upon the
selection" (Ans. 2). The Examiner's analysis only abbreviates portions of
the claim language and then determines that those abbreviated portions are
an abstract idea, rather than giving full effect to the claim as a whole. For
example, the Examiner does not explain why the claimed limitation reciting
"us[ing] the license code to enable respective operating code corresponding
to a selected feature option," which enables some functionality in the device,
is an abstract idea.
Because the Examiner has not established the claims are directed to an
abstract idea, we do not sustain the Examiner's rejection of claims 8-12 as
being directed to patent-ineligible subject matter under 35 U.S.C. § 101.
35 U.S.C. § 112. Second Paragraph Reiection of Claims 8-12
Claim 8 recites "the license code not being available to the processor
at a point of sale (POS) of the CE device." The Examiner concludes claim 8
is indefinite because the claimed "CE device comprises a POS device, which
is unclear." Ans. 4; see Final Act. 5. Appellants argue a "'POS device' is
not even recited in" the claim and that it is "clear" the claim recites "that the
claimed processor does not have the license code at the point of sale of the
CE device." App. Br. 8.
We are persuaded by Appellants' arguments. The claim recites "a
point of sale (POS) of the CE device" ( emphasis added). The claim does not
recite a point of sale device. Accordingly, the claim does not recite that the
CE device itself includes a point of sale device, but instead the claim refers
to a point of sale for the CE device, i.e., a place where the CE device is sold.
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Accordingly, we are persuaded the Examiner erred in concluding
independent claim 8 and claims 9--12, depending from claim 8, are indefinite
for this reason under 35 U.S.C. § 112, second paragraph.
35 USC § 103(a) Reiection of Claims 8. 10. and 12
Appellants contend the Examiner erred in finding Lanning teaches a
"license code not being available to the processor at a point of sale (POS) of
the CE device" as recited in claim 8. App. Br. 9; Reply Br. 3--4.
Specifically, Appellants argue Lanning's server provides "the information
needed to activate software" (App. Br. 9), but "nothing in this relied-upon
subject matter precludes the server from being at the point of sale" (Reply
Br. 4 (emphasis added); see App. Br. 9)).
We are not persuaded. The Examiner relies on (Final Act. 6-7)
Lanning's description that a "[p]roduct activation component 302," e.g., a
server, "receive[s] a request from a user's processing device ... to activate a
software product" (Lanning ,r 30; see id. ,r 4). Subsequently, Lanning's
product activation server "send[s] an activation code to the user's processing
device to enable all features of the software product installed on the user's
processing device." Id. ,r 30.
Appellants' argument that Lanning's product activation "server can be
at the POS" of the CE device (App. Br. 9; Reply Br. 4) does not address the
Examiner's conclusion that the combination of Smith, Lanning, and
Fountian renders "the license code not being available to the processor at a
point of sale (POS) of the CE device" obvious. See Final Act. 6-7. "What
matters is the objective reach of the claim. If the claim extends to what is
obvious, it is invalid under§ 103." KSR Int 'l Co. v. Teleflex Inc., 550 U.S.
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398, 419 (2007). Here, the claim recites a CE device which has features that
are disabled upon the sale of the device and that are subsequently enabled by
acquiring a license code that was not available to the CE device at the point
of sale of the device. We agree with the Examiner's conclusion that the
combination of Smith, Lanning, and Fountian renders a system that provides
feature activation at some location other than the purchase location obvious.
Final Act. 6-7. That there is a possibility that Lanning's product activation
server "can be" at the CE device's point of sale fails to persuade us that it
would not have been obvious for Lanning' s product activation server to be
remote from, i.e., "not being available at," the CE device's point of sale.
Indeed, Lanning supports that conclusion by describing "activation of the
software product by electronically sending product information to a remote
server." Lanning ,r 1 (emphasis added).
Even further, the Examiner's reliance on Fountian supports the
conclusion that a product activating "license code not being available to the
processor at a point of sale (POS) of the CE device" would have been
obvious. In particular, the Examiner relies on (Final Act. 7) Fountian's
description of "a system interface for selectively enabling features of a
software package" (Fountian ,r,r 34--35), e.g., a system for "activating an
inactive feature originally present in the software package" after the user's
original purchase (Fountian ,r 11; see Fountian ,r 7). Because Fountian
teaches that device features are disabled at the original sale of the device and
then later enabled, Fountian further supports the Examiner's conclusion that
a product activating "license code not being available to the processor at a
point of sale (POS) of the CE device" would have been obvious.
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Accordingly, we are not persuaded the Examiner erred in concluding
the combination of Smith, Lanning, and Fountian renders the subject matter
recited in independent claim 8 obvious. Appellants do not provide separate
arguments for claims 10 and 12. See App Br. 8-11. Therefore, we sustain
the obviousness rejections of claims 8, 10, and 12.
35 US. C. § 103 (a) Reiection of Claim 9
Appellants contend the Examiner erred in finding either Smith or
Fountian teaches "an initial subset of software and software modules needed
to operate licensable components that are disabled at the time of sale," as
recited in claim 9. App. Br. 9-10; Reply Br. 4--5. Specifically, Appellants
argue the Examiner's reliance on Fountian in the Answer "merits no
consideration." Reply Br. 5. Appellants also argue, in Smith, "[ n ]othing at
all about point of sale or anything being disabled" is taught. App. Br. 10.
We are not persuaded. Appellants argue the Examiner's reliance on
Fountian in the Answer "merits no consideration" because it "represents a
new ground of rejection since it relies on new subject matter from a different
reference, which subject matter was not formerly relied on in the [Final]
[R]ejection." Reply Br. 4--5. However, our Rules provide:
Any request to seek review of the primary examiner's failure to
designate a rejection as a new ground of rejection in an
examiner's answer must be by way of a petition to the Director
under § 1.181 of this title .... Failure of appellant to timely file
such a petition will constitute a waiver of any arguments that a
rejection must be designated as a new ground of rejection.
37 C.F.R. § 41.40(a) (2013) (emphases added). Furthermore, that rule is
accompanied by a notice, which provides:
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Application 13/072,941
Final Bd.R. 41.40 sets forth the exclusive procedure for an
appellant to request review of the primary examiner's failure to
designate a rejection as a new ground of rejection via a petition
to the Director under Rule 1.181. This procedure should be used
if an appellant feels an answer includes a new ground of rejection
that has not been designated as such and wishes to reopen
prosecution so that new amendments or evidence may be
submitted in response to the rejection. However, if appellant
wishes to submit only arguments, the filing of a petition under
Rule 1.181 would not be necessary because appellant may submit
the arguments in a reply brief.
Rules of Practice Before the Board of Patent Appeals and Inteiferences in
Ex Parte Appeals, 76 Fed. Reg. 72270, 77278 (November 22, 2011).
Accordingly, we consider the Examiner's findings provided in the Answer.
Turning to the Examiner's Answer, we agree with the Examiner's
finding that Fountian's "full software package" teaches "an initial subset of
software and software modules needed to operate licensable components that
are disabled at the time of sale." Ans. 6 ( citing F ountian ,r 31) ).
Specifically, Fountian describes that its "full software package" is "a
software product with multiple features wherein some of the features may
possibly not be enabled." F ountian ,r 31. Appellants have not provided any
substantive argument explaining why Fountian does not teach the disputed
limitations (see Reply Br. 4--5; App. Br. 9--10). Therefore, we are not
persuaded the Examiner erred in finding F ountian teaches the disputed
limitations.
Additionally, we agree with the Examiner's finding that Smith's
device activation also teaches "an initial subset of software and software
modules needed to operate licensable components that are disabled at the
time of sale." Final Act. 7 (citing Smith ,r,r 37-38). Smith's device
"activation may occur following purchase of the device." Smith Abstract. It
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follows that, at the time of sale, Smith's device has un-activated, i.e.,
disabled, components.
Accordingly, we are not persuaded the Examiner erred in finding that
Smith and Fountian teach "an initial subset of software and software
modules needed to operate licensable components that are disabled at the
time of sale." Therefore, we sustain the obviousness rejection of claim 9.
35 U.S.C. § 103(a) Reiection of Claim 11
Appellants contend the Examiner erred in finding Smith teaches "the
processor sends the user selection to a server and receives the license code
therefrom," as recited in claim 11. App. Br. 10; Reply Br. 5. Specifically,
Appellants argue "[n]othing in Smith" teaches a "license code." App.
Br. 1 O; see Reply Br. 5.
We are not persuaded. Claim 11 depends from claim 8. Regarding
claim 8, we agree with the Examiner's finding that Lanning's "activation
code" teaches a "license code." Final Act. 6 (citing Lanning ,r 30). Turning
to claim 11, the Examiner relies on (Ans. 7) Smith's description of an
electronic device "making activation requests" to a service provider, after
which the electronic device's "processor may receive all information
necessary to activate the electronic device" from the service provider (Smith
,r,r 48--49; see Smith ,r,r 54--55).
Appellants' argument that Smith does not teach a license code (App.
Br. 1 O; see Reply Br. 5) unpersuasively attacks Smith individually when the
Examiner's rejection is based on the combination of Smith, Lanning, and
Fountian. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citation
omitted) ("Non-obviousness cannot be established by attacking references
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individually where the rejection is based upon the teachings of a
combination of references."). In particular, Appellants do not address the
Examiner's combination of Smith, which teaches a device that requests
activation for features and receives information to activate those features,
and Lanning, which teaches activating device features using license code
information, to teach a device's "processor sends the user selection to a
server and receives the license code therefrom." See Final Act. 6-7.
Accordingly, we are not persuaded the Examiner erred in finding that
the combination of Smith, Lanning, and F ountian teaches "the processor
sends the user selection to a server and receives the license code therefrom."
Therefore, we sustain the obviousness rejection of claim 11.
DECISION
We reverse the Examiner's decision rejecting claims 8-12 under 35
U.S.C. § 101 as being directed to patent-ineligible subject matter.
We reverse the Examiner's decision rejecting claims 8-12 under 35
U.S.C. § 112 second paragraph as being indefinite.
We affirm the Examiner's decision rejecting claims 8, 9, 11, and 12
under 35 U.S.C. § 103(a) as being unpatentable over Smith, Lanning, and
Fountian.
We affirm the Examiner's decision rejecting claim 10 under 35 U.S.C.
§ 103(a) as being unpatentable over Smith, Lanning, Fountian, and Harding.
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.
§ 4I.50(f).
AFFIRMED
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