Ex Parte Walker et al

Board of Patent Appeals and Interferences

May 25, 2010

10232647 (B.P.A.I. May. 25, 2010)

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UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLIAM T. WALKER,
ROBERT J. SERKOWSKI,
DAVID L. CHAVEZ,
PHILLIP A. WHELAN, and
ROBIN L. CHALMETA
____________

Appeal 2009-009591
Application 10/232,647
Technology Center 3600
____________

Decided: May 25, 2010
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-009591
Application 10/232,647

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STATEMENT OF THE CASE
William T. Walker, et al. (Appellants) seek our review under 35
U.S.C. § 134 (2002) of the final rejection of claims 1-30. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).

We REVERSE.

Claim 1, the sole independent method claim, is illustrative.
1. A method for controlling a right to use a computational component,
comprising:
(a) providing a primary computational component and at least
one backup computational component, wherein, when the primary
computational component is in an operational mode and validly
licensed, the backup computational component is in a standby mode;
(b) receiving a notification that at least one of the following is
true:
(i) that the primary computational component is no
longer in the operational mode;
(ii) that the backup computational component is in the
operational mode; and
(iii) that the backup computational component will be in
the operational mode;
(c) in response to the notification, determining that a license
error has occurred; and
(d) thereafter and while the primary computational component
is not in the operational mode, reading a license error timer value
associated with the backup computational component,
(i) when the value of the timer is not at least a first value
and when the backup computational component is otherwise validly
licensed, permitting the backup computational component to be in the
operational mode and
(ii) when the value of the timer has reached at least the
first value, no longer permitting the backup computational component
to be in the operational mode.
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Application 10/232,647
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THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Coley
Kobayashi
US 5,790,664
US 6,148,415
Aug. 4, 1998
Nov. 14, 2000
The following rejection is before us for review:
1. Claims 1-30 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Kobayashi and Coley.

ISSUE
The main issue is whether the cited prior art combination discloses or
leads one of ordinary skill in the art to a method comprising the steps
“receiving a notification that at least one of the following is true: (i) that the
primary computational component is no longer in the operational mode; (ii)
that the backup computational component is in the operational mode; and
(iii) that the backup computational component will be in the operational
mode; [and] in response to the notification, determining that a license error
has occurred”. A similar issue is raised with respect to the rejection of the
apparatus claims 14-24. The computer readable medium claims 25-30, are
another issue.

FINDINGS OF FACT
The Examiner found that Kobayashi discloses all aspects of the
claimed method but for those involving a license. Answer 4-5. Coley is
cited for its disclosure of a software licensing system. Answer 5.
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Application 10/232,647
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Kobayashi discloses a data processing machine connected to backup
data processing machine. When failure occurs in the data processing
machine, the backup machine takes over. See col. 3, ll. 45-51. Coley
discloses a system for tracking software whereby software is enabled if it is
validly licensed and disabled if not. See Fig. 2.
Neither Kobayashi nor Coley disclose “receiving a notification that at
least one of the following is true: (i) that the primary computational
component is no longer in the operational mode; (ii) that the backup
computational component is in the operational mode; and (iii) that the
backup computational component will be in the operational mode; [and] in
response to the notification, determining that a license error has occurred”.
The Examiner has not addressed the level of ordinary skill in the art.
Examiner concluded that “it would have been obvious for one skilled
in the art to construct a spare processor system that uses software licensing
to control the access and management of the primary/secondary system.”
Answer 5.

ANALYSIS
We will not sustain the rejection.
As for the method claims 1-11, the Examiner does not provide an
apparent reason with logical underpinning for combining the Kobayashi’s
system of data processing and Coley’s system for tracking software such that
one of ordinary skill in the art would be led to a method comprising
“receiving a notification that at least one of the following is true: (i) that the
primary computational component is no longer in the operational mode; (ii)
that the backup computational component is in the operational mode; and
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Application 10/232,647
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(iii) that the backup computational component will be in the operational
mode; [and] in response to the notification, determining that a license error
has occurred” (claim 1). While Kobayashi discloses the situation where a
data processor (e.g., a primary computational component) is no longer in
operational mode (at which point the backup is operational) and Coly
discloses disabling software without a valid license, there is no apparent
reason why one of ordinary skill in the art would be led to receive a
notification of a situation where a data processor (e.g., a primary
computational component) is no longer in operational mode and in response
thereto determine that a license error has occurred. Cf. In re Lee, 277 F.3d
1338, 1344 (Fed. Cir. 2002) (“[Tlhe Board must not only assure that the
requisite findings are made, based on evidence of record, but must also
explain the reasoning by which the findings are deemed to support the
agency's conclusion.”) Accordingly, a prima facie case of obviousness for
the method claims has not been established in the first instance.
Claims 12 and 13 are directed to a “computer readable claim storing
computer executable instructions for performing the steps of Claim 1” and
an “integrated logic circuit comprising circuitry to perform the steps of
Claim 1,” respectively. The prima facie cases of obviousness for the subject
matter of claims 12 and 13 suffer for the same reason we discussed supra
with respect to claims 1-11. Accordingly the rejection of claims 12 and 13
will not be sustained.
We will not sustain the rejection of the apparatus claims 14-24. Not
only has the Examiner not separately treated these claims, but similar to the
method claims, they call for
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(b) an activation agent operable to determine when the primary
computational component is no longer in the operational mode and
generate a notification;
(c) a license error timer associated with the backup computational
component to determine how long a license error is in effect; and
(d) a mode setting agent operable to determine that the backup
computational component in a license error mode in response to the
notification.
A prima facie case of obviousness for the apparatus claims 14-24 has not
been established in the first instance for the reason discussed supra with
respect to the rejection of claims 1-11.
We are compelled to reverse the rejection of the computer readable
medium claims 25-30. Notwithstanding the Appellants’ urging (See App.
Br. 12), these claims have not been addressed. The Examiner’s discussion in
the Answer is not germane to these claims because the claim limitations the
Examiner addresses are not included in, for example, independent claim 25.
Claim 25 does not, for instance, call for receiving a notification and in
response thereto determining an occurrence of a licensing error. Claim 25 is
simply drawn to a computer readable medium containing an identifier and a
backup flag. The Examiner has not explained why a computer readable
medium with an identifier and a flag would have been obvious to one of
ordinary skill in the art given the cited prior art combination. Because a
prima facie case of obviousness for the computer readable medium claims
has not been established in the first instance, we will not sustain the rejection
of claims 25-30.

DECISION
We reverse the Examiner’s §103 rejection.

Appeal 2009-009591
Application 10/232,647
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ORDER
REVERSED

mev

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