James R. Bowes et al.

Patent Trials and Appeals Board

Mar 3, 2020

13034115 - (D) (P.T.A.B. Mar. 3, 2020)

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.
13/034,115 02/24/2011 James R. Bowes 05220.890 (P843) 1168
14400 7590 03/03/2020
LOWENSTEIN SANDLER LLP / Red Hat
Patent Docket Administrator
One Lowenstein Drive
Roseland, NJ 07068
EXAMINER
JAKOVAC, RYAN J
ART UNIT PAPER NUMBER
2445
NOTIFICATION DATE DELIVERY MODE
03/03/2020 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):
patents@lowenstein.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAMES R. BOWES and JUSTIN HARRIS

Appeal 2018-007223
Application 13/034,115
Technology Center 2400

Before CARL W. WHITEHEAD JR, DAVID M. KOHUT, and
IRVIN E. BRANCH, Administrative Patent Judges.

BRANCH, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–4, 9–12, 17, 21–25, 28, 33, 35, and
36, which are all of the pending claims. Appeal Br. 18; Final Act. 1. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use “Appellant” to reference the applicant as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
“Red Hat Inc.” Appeal Br. 3.
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Application 13/034,115
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STATEMENT OF THE CASE
APPELLANT’S INVENTION
Appellant’s invention relates to third party management of software
product subscriptions. Spec. ¶¶ 1–3, 12–13. Claim 1, reproduced below, is
illustrative of the claimed subject matter.
1. A method comprising:
determining, by a processing device, entitlements configuration
data for a computing system to configure registered entities
with a product in view of a client configuration data, wherein
the entitlements configuration data comprising a product
entitlement authorizing consumption by the computing system
of a product associated with a plurality of product assets,
wherein the determining comprises:
identifying an extension point associated with a vendor
of the product, wherein the extension point represents a
point in the entitlements configuration data to add
extensions data to extend distribution of the product as
reflective of subscription data associated with the
computing system, wherein the extensions data further
comprises extension information to define extended
procedures for authenticating an identity of a server for
consuming the product; and
updating the entitlements configuration data in view of
the extension point; and
configuring, by the processing device over a first network to a
second network, a server computing system with the
entitlements configuration data to configure a registered entity
within the second network associated with the server computing
system.
Appeal Br., Claims Appendix.
REJECTIONS
Claim 36 stands rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement. Final Act. 3.
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Claims 1, 9, 17, 33, and 35 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Misra (US 2005/0102240; May 12, 2005), Cognigni
(US 2009/0249327; Oct. 1, 2009), and Desai (US 2011/0321178; Dec. 29,
2011). Final Act. 4–6.
Claims 3, 11, and 22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Misra, Cognigni, Desai, and Chan (US 2009/0177698;
July 9, 2009). Final Act. 7.
Claims 2, 10, 21, and 34 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Misra, Cognigni, Desai, and Coley
(US 2007/0198429 A1; Aug. 23, 2007). Final Act. 8.
Claims 4, 12, and 23–25 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Misra, Cognigni, Desai, and Official Notice.
Final Act. 9.
Claim 28 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Misra, Cognigni, Desai, and Hudson (US 2002/0059499;
May 16, 2002). Final Act. 10.
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
We have only those arguments Appellant actually raised in the Briefs. Any
other arguments Appellant could have made but chose not to make in the
Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv).
OPINION
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments. To the extent consistent with our analysis herein, we adopt as
our own the findings and reasons set forth by the Examiner in (1) the action
from which this appeal is taken (Final Act. 3–107) and (2) the Examiner’s
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Answer in response to Appellant’s Appeal Brief (Ans. 4–10) and concur
with the conclusions reached by the Examiner. We highlight the following
for emphasis.
35 U.S.C. § 112, ¶ 1, REJECTION OF CLAIM 36
Claim 36 depends from claim 1 and adds: “wherein the extensions
data further comprises event publishing extension information to define
procedures for publishing events related to the consumption of the product
by the server.” The Examiner finds a lack of written description support for
claim 36 because the Specification does not describe “procedures for
publishing events[,] let alone procedures for publishing events related to the
consumption of the product by the server.” Ans. 4.
Appellant contends that the Specification discloses the claimed
subject matter at paragraphs 17–21, 23, 25, and 29 by disclosing product
asset management (PAM) that tracks a licensee’s consumption of software
(see e.g., Spec. ¶ 18) and publishes events per event publishing data (see
e.g., id. ¶ 29). Appeal Br. 8–9; Reply Br. 4–5.
Appellant does not persuasively explain, however, the relevance of
the cited paragraphs to “procedures for publishing events.” See Reply Br. 3–
6; id. at 5 (“Based on the above description in paragraphs of the
specification, a person skilled in the art would understand the functional
steps utilized to implement ‘the extensions data that comprises event
publishing extension information to define procedures for publishing events
related to the consumption of the product by the server.”). We are,
therefore, unpersuaded of written description support for the claimed
“publishing procedures” See Pandrol USA LP v. Airboss Railway Products
Inc., 424 F.3d 1161, 1165 (Fed. Cir. 2005) (A written description shows
possession of the claim’s full scope.).
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For the foregoing reasons, we sustain the rejection of claim 36 under
35 U.S.C. § 112, first paragraph.
35 U.S.C. § 103(a) REJECTION OF CLAIMS 1, 9, AND 17
OVER MISRA, COGNIGNI, AND DESAI
Appellant argues claims 1, 9, and 17 as a group for this rejection.
Appeal Br. 10 (heading). We select claim 1 as representative. 37 C.F.R.
§ 41.37(c)(1)(iv). We are unpersuaded of error in this rejection of claim 1.
Appellant contends the Examiner incorrectly cites Desai as teaching
the claimed “extensions data to extend distribution of the product by the
computing system as reflective of subscription data associated with the
computing system.” Appeal Br. 10–12. Specifically, Appellant contends
Desai’s cited extensions are gateways that connect a network’s centralized
application to endpoints, but the gateways do not distribute the application
and therefore do not “extend distribution of the product” as claimed. Id. at
12 (citing Desai ¶¶ 24, 43).
The Examiner responds that Desai’s system assigns an extension to
grant an endpoint use of a licensed application. Ans. 6 (citing Desai ¶¶ 1, 8,
19–20, 22, 40, 42–43). The Examiner thus views this “extension
assignment” as a distribution of software. Id. (quoting Desai abst.).
We are unpersuaded of error. Because the extension assignment
permits an endpoint to log into an application (see e.g., Desai ¶ 22), we
conclude the Examiner reasonably relies on the assignment as a distribution
of software. See also Spec. ¶ 42 (describing a “distributed” product as an
assigned entitlement to software). Appellant does not adequately explain
how such an extension assignment does not amount to distribution of
software.
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With respect to the same claim limitation (above), Appellant also
contends Desai’s extensions comply with business rules that concern an
endpoint’s location, but the rules do not concern “subscription data” and
therefore do not “extend . . . the product . . . reflective of subscription data”
as claimed. Appeal Br. 13. The Examiner responds that Desai’s business
rules enforce licensing rules, which constitute “subscription data.” Ans. 6–7
(citing Desai ¶ 42).
We are unpersuaded of error. Because Desai’s business rules for
extension “may enforce or facilitate licensing rules” (Desai ¶ 42), we
conclude the Examiner reasonably relies on the rules as “subscription data”
(licensing rules). Appellant does not adequately explain how such rules for
enforcing licenses do not amount to subscription data.
Appellant also contends the Examiner presents a conclusory rationale
for adding the relied-upon teachings of Desai to those of Misra and
Cognigni. Appeal Br. 14–15. Appellant further contends the rationale is
premised upon adding software assignment and licensing features that are
not claimed. Id. at 15.
The Examiner responds with the following clarification of the
rationale.
Desai’s technology would allow for dynamic extension
assignment which is an improvement over the static assignment
referenced in paragraph one of Desai. Additionally, Desai’s
technology would add the benefit of efficient license tracking
through the application of business rules applied to the dynamic
pool of extensions.
Ans. 9; see also Final Act. 6 (citing Desai ¶ 8 in support of the rationale).
The response also explains that Misra, Cognigni, and Desai are each
concerned with providing licensed software to endpoints. Id.
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Appellant replies that the Examiner’s response neither: addresses the
argument that claim 1 does not recite a product assignment or licensing; nor
relates the above rationale to Misra and Cognigni. Reply Br. 7–8.
We are unpersuaded of error. The Examiner shows the references
concern similar technologies and objectives, such that the combined features
would be viewed as compatible with one another. See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007) (“[I]f a technique . . . would improve
similar devices in the same way, using the technique is obvious.”). Further,
the Examiner shows Desai’s added teachings would be viewed as conferring
a benefit. See id. at 424 (“The proper question [is] whether a pedal designer
of ordinary skill . . . would have seen a benefit to [the combination].”); see
also Desai ¶ 8 (explaining that Desai’s added feature—its means of
extension assignment—allow extensions to be dynamically assigned). These
are not conclusory assertions of obviousness, as argued, but rather
articulated reasons and rational underpinnings for the addition of Desai’s
teachings. See KSR, 550 U.S. at 417 (contrasting “conclusory statements”
and “articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness”).
Appellant does not persuasively rebut the Examiner’s reasoning and
underpinnings. Appellant rather contends claim 1 does not recite a software
product’s assignment or licensing. Appeal Br. 15; Reply Br. 7–8. Even
assuming Appellant is correct, the claim limitations are irrelevant to whether
the combination of prior art is obvious (and rather relevant to whether the
combination reaches those limitations and, possibly, to whether the claimed
invention and references are analogous art). Further, Appellant is incorrect
in that the Examiner shows (and Appellant does not persuasively rebut) the
claimed “extend[ing] distribution of the product . . . reflective of
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subscription data” reads on a software product’s assignment based on its
licensing. See supra 5–6.
Appellant also contends the Examiner does not relate the above
rationale to Misra and Cognigni. Reply Br. 7–8. However, the Examiner
explains the rationale and explains how each reference concerns a system’s
provision of licensed software to endpoints. Ans. 9.
For the foregoing reasons, we sustain the rejection of claims 1, 9, and
17 under 35 U.S.C. § 103(a).
35 U.S.C. § 103(a) REJECTION OF 4, 12, AND 23–25
OVER MISRA, COGNIGNI, DESAI, AND OFFICIAL NOTICE
Appellant contends the Examiner relies on official notice, for each of
claims 4, 12, and 23–25, but fails to substantiate the notice on the record.
Appeal Br. 16. We are unpersuaded for each of two reasons.
First, as the Examiner responds, “documentary evidence has been
provided previously in the . . . office action of 11/12/2015.” Ans. 10; see
also Non-Final Act., mailed Nov. 12, 2015, 3–4. Appellant does not address
the documentary evidence, nor even address the Examiner’s above response.
See Reply Br. 3 et seq. (replies to the Answer do not address claims 4, 12,
and 23–25).
Second, Appellant does not address the Examiner’s prior response
that: “Applicant has failed to adequately traverse the findings of Official
Notice . . . [by] stating why the noticed fact is not considered to be common
knowledge or well-known in the art. . . . MPEP [§] 2144.03[.]C.”
Non-Final Act. 3. “If . . . [an] applicant’s traverse is not adequate,” as here,
“the art statement is taken to be admitted prior art.” MPEP § 2144.03.C.
We therefore take the official notice as admitted prior art. See also In re
Gunther, 125 F.2d 1020, 1023 (CCPA 1942) (“[T]he examiner stated that it
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Application 13/034,115
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was well known in the art to use dry or superheated steam[.] This statement
was not challenged[.] . . . [W]e must accept such statement of the examiner
as correct.”).
For the foregoing reasons, we sustain the rejection of claims 4, 12,
and 23–25 under 35 U.S.C. § 103(a).
REMAINING 35 U.S.C. § 103(a) REJECTIONS
Appellant does not present separate arguments for the rejections of
claims 2, 3, 10, 11, 21, 22, 28, and 34 under 35 U.S.C. § 103(a). We
accordingly sustain those rejections.
OVERALL CONCLUSION
We affirm the Examiner’s decision to reject claims 1–4, 9–12, 17, 21–
25, 28, 33, 35, and 36.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
36 § 112 ¶ 1 (Written
Description)
36
1, 9, 17,
33, 35
§ 103(a) Misra, Cognigni,
Desai
1, 9, 17,
33, 35

3, 11, 22

Misra, Cognigni,
Desai, Chan
3, 11, 22

2, 10, 21, 34

§ 103(a) Misra, Cognigni,
Desai, Coley
2, 10, 21, 34

4, 12, 23–25

§ 103(a) Misra, Cognigni,
Desai, Official Notice
4, 12, 23–25

28

§ 103(a) Misra, Cognigni,
Desai, Hudson
28

Overall
Outcome
1–4, 9–12,
17, 21–25,
28, 33, 35, 36

Appeal 2018-007223
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TIME PERIOD FOR RESPONSE
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).

AFFIRMED