MARSANO, SONIA et al.

Patent Trials and Appeals Board

Nov 16, 2020

13337659 - (D) (P.T.A.B. Nov. 16, 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.
13/337,659 12/27/2011 SONIA MARSANO 2010P04418 1427
27350 7590 11/16/2020
LERNER GREENBERG STEMER LLP
Box SA
P.O. BOX 2480
HOLLYWOOD, FL 33022-2480
EXAMINER
AGWUMEZIE, CHINEDU CHARLES
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
11/16/2020 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):
docket@patentusa.com
office@patentusa.com
vrahimis@patentusa.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SONIA MARSANO and FRANCESCO RUSSO
____________

Appeal 2019-004927
Application 13/337,659
Technology Center 3600
____________

Before ANTON W. FETTING, BRUCE T. WIEDER, and
AMEE A. SHAH, Administrative Patent Judges.

FETTING, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE1
Sonia Marsano and Francesco Russo (Appellant2) seek review under
35 U.S.C. § 134 of a final rejection of claims 1–12, the only claims pending

1 Our decision will make reference to the Appellant’s Appeal Brief (“Appeal
Br.,” filed December 21, 2018) and Reply Brief (“Reply Br.,” filed June 10,
2019), and the Examiner’s Answer (“Ans.,” mailed April 11, 2019), and
Final Action (“Final Act.,” mailed July 30, 2018).
Appeal 2019-004927
Application 13/337,659

2

in the application on appeal. We have jurisdiction over the appeal pursuant
to 35 U.S.C. § 6(b).
The Appellant invented a way of handling a computer software
license, and more precisely of an improved management of software licenses
in a computer network. Spec. para. 2.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A method for managing a software license in a computer
network according to client-server protocol, which comprises
the following steps executed at a server side:
[1] with a computer, instituting license types for each software
application according to differently composed bundles of
software applications to be licensed;
[2] with the computer, calculating a price of each of the license
types according to
a specificity of software application,
a size indicating a number of entities associated with one
of the license types for which the price is calculated,
and
a weight assigned to increase in value depending on a
bundle of a plurality of software applications that the
software application belongs to;
[3] with the computer, gathering from at least a software owner
license keys
connected to the licenses for using new software
applications or using upgrades to new versions of the
software applications;

2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Siemens
Aktiengesellschaft (Appeal Br. 1).
Appeal 2019-004927
Application 13/337,659

3

[4] with the computer, storing collected license keys;
[5] with the computer, checking unlicensed accesses to the
software applications
on every accessing client by a comparison between the
collected license keys and the license keys installed
locally to the client;
[6] with the computer, sending first-type warning messages of
license violation
to unlicensed clients when unlicensed accesses to the
software applications are detected;
[7] with the computer, receiving requests for upgrading sizes of
licensed software applications from licensees;
[8] with the computer, calculating an equivalent number of
credits for every size,
which indicates a number of entities associated with one
of the license types,
in a request for upgrading a licensed software application
that is received from a licensee,
a free amount of which being purchasable by the
licensees to be freely allocated to the software
applications independently of their version and bundle;
and
[9] with the computer,
comparing a calculated number of credits with an amount
of credits available to the licensee,
and
if the calculated number of credits is greater than the
amount of credits sending a second-type warning
message of insufficient credits to the licensee.

Appeal 2019-004927
Application 13/337,659

4

The Examiner relies upon the following prior art:
Name Reference Date
Aldis US 2004/0039916 A1 Feb. 26, 2004
Sweeney US 2009/0005001 A1 Jan. 1, 2009
Logan US 2010/0131558 A1 May 27, 2010
Vanderland US 2012/0011013 A1 Jan. 12, 2012
Claims 1–12 stand rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.3
Claims 1–12 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Aldis, Sweeney, Vanderland, and Logan.
ISSUES
The issues of eligible subject matter turn primarily on whether the
claims recite more than abstract conceptual advice of results desired.
The issues of obviousness turn primarily on whether the applied art
describes the claim limitations.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Aldis
01. Aldis is directed to the licensing of multimedia content and
software, and more particularly, to using one or more

3 The Final Rejection only includes claims 1–11. Final Act. 4. Claim 12
depends from claim 1 and only recites request content, of no substantial
consequence to the analysis. Neither party mentions this omission from the
rejection. This is therefore taken to be a typographic error.
Appeal 2019-004927
Application 13/337,659

5

clearinghouses to proactively facilitate licensing of digital content
and/or software between content providers, upstream and
downstream distributors, and end users, and providing reports and
other support to users of the system and method as needed. Aldis
para. 3.
02. Aldis describes creating a license in a license distribution
network, offering the license for acquisition, acquisition or
transferal via the license distribution network, optionally selling
and otherwise providing the license through the license
distribution network to an end user, bundling the license in the
license distribution network, downloading the license to the end
user, validating the license with the license clearinghouse and
activating the license to be used by the end user. Aldis para. 17.
Sweeney
03. Sweeney is directed to a feature credit. Sweeney para. 3.
04. Sweeney describes a billing system that shows wireless devices
that may be completely or partially purchased with a credit total.
The credit total may have incremented to the point that the user
may redeem the credits completely to obtain a specified wireless
device. Alternatively, the total credits may be insufficient to
obtain a specified wireless device. As a result, the user may be
shown a purchase price that may be paid in conjunction with the
redemption of the total credits to purchase the specified device.
For example, if a newly released smart phone/PC is available for
400 credits but the user only has 280 credits, the user may still be
Appeal 2019-004927
Application 13/337,659

6

able to use the smart phone/PC if willing to pay the dollar
equivalent of 120 credits which may be $60. Sweeney para. 42.
Vanderland
01. Vanderland is directed to the licensing and pricing of digital
media, and more particularly, but not exclusively, to a system that
unifies the pricing and licensing of digital media managed by a
digital media system using cash or credits. Vanderland para. 1.
02. Vanderland describes a purchase interface that enables a
customer to pay for a license to a digital media item using either
cash or credits. Vanderland para. 8.
03. Vanderland describes a pricer that responds to requests for
prices. Pricer obtains price information for one or more media
items from purchase database. To provide a license price in cash
for a media item, pricer first obtains the price in credits from price
database and then looks up the associated cash value in the credits
to cash conversion table. Pricing for a media item is based on the
price tier to which it belongs and the size of the media item.
There are three price tiers: a lower priced “value” price tier; a
moderately priced “mid” price tier; and a higher priced “premium”
price tier. Each different size of a media item has a different price
within the price tier. Pricing is established by defining price tiers,
and prices for different sizes within each price tier, rather than
being established individually for each media item. Vanderland
para. 65.
Appeal 2019-004927
Application 13/337,659

7

Logan
04. Logan is directed to the management of copyright licensing in
connection with businesses that display and/or perform
copyrighted works. Logan para. 1.
05. Logan describes a system indicating whether an existing license
with a licensing body is being adequately used and if not, the
system suggesting that such license be terminated. Logan para.
142.
ANALYSIS

Claims 1–12 rejected under 35 U.S.C. § 101 as directed to a judicial
exception without significantly more
STEP 14
Claim 1, as a method claim, nominally recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. The issue before us
is whether it is directed to a judicial exception without significantly more.
STEP 2
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, . . .
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, “[w]hat
else is there in the claims before us?” To answer that question,
. . . consider the elements of each claim both individually and

4 For continuity of analysis, we adopt the steps nomenclature from 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Revised Guidance”).
Appeal 2019-004927
Application 13/337,659

8

“as an ordered combination” to determine whether the
additional elements “transform the nature of the claim” into a
patent-eligible application. [The Court] described step two of
this analysis as a search for an “‘inventive concept’”—i.e., an
element or combination of elements that is “sufficient to ensure
that the patent in practice amounts to significantly more than a
patent upon the [ineligible concept] itself.”
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014) (citations
omitted) (citing Mayo Collaborative Servs. v. Prometheus Labs, Inc.,
566 U.S. 66 (2012)). To perform this test, we must first determine what the
claims are directed to. This begins by determining whether the claims recite
one of the judicial exceptions (a law of nature, a natural phenomenon, or an
abstract idea). Then, if the claims recite a judicial exception, determining
whether the claims at issue are directed to the recited judicial exception, or
whether the recited judicial exception is integrated into a practical
application of that exception, i.e., that the claims “apply, rely on, or use the
judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception.” Revised Guidance, 84 Fed. Reg.
at 54. If the claims are directed to a judicial exception, then finally
determining whether the claims provide an inventive concept because the
additional elements recited in the claims provide significantly more than the
recited judicial exception.
STEP 2A Prong 1
At a high level, and for our preliminary analysis, we note that method
claim 1 recites instituting license types, calculating prices, gathering and
storing license key data, checking data representing unlicensed accesses,
sending message data, receiving request data, calculating credit data,
Appeal 2019-004927
Application 13/337,659

9

comparing data, and sending more message data. Instituting license types is
generating and modifying data. Calculating price data and credit data are
forms of mathematical analysis. Gathering data is receiving data. Checking
and comparing data are rudimentary data analysis. Sending data is
transmitting data. Thus, claim 1 recites generating, modifying, analyzing,
receiving, storing, and transmitting data. None of the limitations recites
technological implementation details for any of these steps, but instead recite
only results desired by any and all possible means.
From this we see that claim 1 does not recite the judicial exceptions of
either natural phenomena or laws of nature.
Under Supreme Court precedent, claims directed purely to an abstract
idea are patent ineligible. As set forth in the Revised Guidance, which
extracts and synthesizes key concepts identified by the courts, abstract ideas
include (1) mathematical concepts,5 (2) certain methods of organizing
human activity,6 and (3) mental processes.7 Among those certain methods
of organizing human activity listed in the Revised Guidance are commercial
or legal interactions. Like those concepts, claim 1 recites the concept of

5 See, e.g., Gottschalk v. Benson, 409 U.S. 63, 71–72 (1972); Bilski v.
Kappos, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio
Corp. of Am., 306 U.S. 86, 94 (1939); SAP America, Inc. v. InvestPic, LLC,
898 F.3d 1161, 1163 (Fed. Cir. 2018).
6 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219–20; Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014); Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1383 (Fed. Cir.
2017); In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1160–61 (Fed.
Cir. 2018).
7 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371–72 (Fed. Cir. 2011); Intellectual Ventures I LLC
v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
Appeal 2019-004927
Application 13/337,659

10

managing commercial licenses. Specifically, claim 1 recites operations that
would ordinarily take place in advising one to adjust the number of licenses
according to usage. The advice to adjust the number of licenses according to
usage involves instituting license types for each software application, which
is a commercially economic act, and calculating a price of each of the
license types, which is an act ordinarily performed in the stream of
commerce. For example, claim 1 recites “instituting license types for each
software application,” which is an activity that would take place whenever
one is commercially selling licenses. Similarly, claim 1 recites “calculating
a price of each of the license types,” which is also characteristic of
commercial licensing.
The Examiner determines the claims to be directed to calculating a
price of each of the license types and calculating equivalent number of
credits available. Final Act. 5. The preamble to claim 1 recites that it is a
method for managing a software license. The steps in claim 1 result in
managing commercial licenses by adjusting the number of licenses
according to usage absent any technological mechanism other than a
conventional computer for doing so.
As to the specific limitations, limitations 3 and 7 recite receiving data.
Limitations 1, 2, 4–6, 8, and 9 recite generic and conventional generating,
modifying, analyzing, storing, and transmitting of license data, which advise
one to apply generic functions to get to these results. The limitations thus
recite advice for adjusting the number of licenses according to usage. To
advocate adjusting the number of licenses according to usage is conceptual
advice for results desired and not technological operations.
Appeal 2019-004927
Application 13/337,659

11

The Specification at paragraph 2 describes the invention as relating to
handling a computer software license, and more precisely to improved
management of software licenses in a computer network. Thus, all this
intrinsic evidence shows that claim 1 recites managing commercial licenses.
This is consistent with the Examiner’s determination.
This in turn is an example of commercial or legal interactions as a
certain method of organizing human activity because managing commercial
licenses is a way of commercially selling licenses. The concept of managing
commercial licenses by adjusting the number of licenses according to usage
is one idea for selling such licenses. The steps recited in claim 1 are part of
how this might conceptually be premised.
Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. Interval Licensing LLC v. AOL,
Inc., 896 F.3d 1335, 1338 (Fed. Cir. 2018) (managing control over content
usage).
From this we conclude that at least to this degree, claim 1 recites
managing commercial licenses by adjusting the number of licenses
according to usage, which is a commercial and legal interaction, one of
certain methods of organizing human activity identified in the Revised
Guidance, and, thus, an abstract idea.
STEP 2A Prong 2
The next issue is whether claim 1 not only recites, but is more
precisely directed to this concept itself or whether it is instead directed to
Appeal 2019-004927
Application 13/337,659

12

some technological implementation or application of, or improvement to,
this concept, i.e., integrated into a practical application.8
At the same time, we tread carefully in construing this
exclusionary principle lest it swallow all of patent law. At
some level, “all inventions . . . embody, use, reflect, rest upon,
or apply laws of nature, natural phenomena, or abstract ideas.”
Thus, an invention is not rendered ineligible for patent simply
because it involves an abstract concept. “[A]pplication[s]” of
such concepts “‘to a new and useful end,’” we have said,
remain eligible for patent protection.
Accordingly, in applying the § 101 exception, we must
distinguish between patents that claim the “‘buildin[g]
block[s]’” of human ingenuity and those that integrate the
building blocks into something more . . . .
Alice, 573 U.S. at 217 (citations omitted).
Taking the claim elements separately, the operation performed by the
computer at each step of the process is expressed purely in terms of results,
devoid of implementation details. Steps 3 and 7 are pure data gathering
steps. Limitations describing the nature of the data do not alter this. Steps
1, 4, 6, and 9 recite basic conventional data operations such as generating,
updating, transmitting, and storing data. Steps 2, 5, 8, and 9 recite generic
computer processing expressed in terms of results desired by any and all
possible means and so present no more than conceptual advice. All
purported inventive aspects reside in how the data is interpreted and the
results desired, and not in how the process physically enforces such a data
interpretation or in how the processing technologically achieves those
results.

8 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
Appeal 2019-004927
Application 13/337,659

13

Viewed as a whole, Appellant’s claim 1 simply recites the concept of
managing commercial licenses by adjusting the number of licenses
according to usage as performed by a generic computer. This is no more
than conceptual advice on the parameters for this concept and the generic
computer processes necessary to process those parameters, and do not recite
any particular implementation.
Claim 1 does not, for example, purport to improve the functioning of
the computer itself. Nor does it effect an improvement in any other
technology or technical field. The 24+ pages of specification only spell out
different generic equipment9 and parameters that might be applied using this
concept and the particular steps such conventional processing would entail
based on the concept of managing commercial licenses by adjusting the
number of licenses according to usage under different scenarios. They do
not describe any particular improvement in the manner a computer
functions. Instead, claim 1 at issue amounts to nothing significantly more
than an instruction to apply managing commercial licenses by adjusting the
number of licenses according to usage using some unspecified, generic
computer. Under our precedents, that is not enough to transform an abstract
idea into a patent-eligible invention. See Alice, 573 U.S. at 225–26.
None of the limitations reflects an improvement in the functioning of
a computer, or an improvement to other technology or technical field,
applies or uses a judicial exception to effect a particular treatment or
prophylaxis for a disease or medical condition, implements a judicial
exception with, or uses a judicial exception in conjunction with, a particular
machine or manufacture that is integral to the claim, effects a transformation

9 The Specification describes using servers and PC’s. Spec. para. 56.
Appeal 2019-004927
Application 13/337,659

14

or reduction of a particular article to a different state or thing, or applies or
uses the judicial exception in some other meaningful way beyond generally
linking the use of the judicial exception to a particular technological
environment, such that the claim as a whole is more than a drafting effort
designed to monopolize the exception.
We conclude that claim 1 is directed to achieving the result of
managing commercial licenses by advising one to adjust the number of
licenses according to usage, as distinguished from a technological
improvement for achieving or applying that result. This amounts to
commercial or legal interactions, which fall within certain methods of
organizing human activity that constitute abstract ideas. The claim does not
integrate the judicial exception into a practical application.
STEP 2B
The next issue is whether claim 1 provides an inventive concept
because the additional elements recited in the claim provide significantly
more than the recited judicial exception.
The introduction of a computer into the claims does not generally alter
the analysis at Mayo step two.
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implemen[t]” an abstract idea
“on . . . a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
Appeal 2019-004927
Application 13/337,659

15

ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
featur[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice, 573 U.S. at 223–24 (citations omitted).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea . . . on a
generic computer.” Alice, 573 U.S. at 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer for generating, modifying, analyzing, receiving, storing, and
transmitting data amounts to electronic data query and retrieval—one of the
most basic functions of a computer. All of these computer functions are
generic, routine, conventional computer activities that are performed only
for their conventional uses. See Elec. Power Grp. LLC v. Alstom S.A., 830
F.3d 1350, 1353 (Fed. Cir. 2016); see also In re Katz Interactive Call
Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a
possible narrower construction of the terms ‘processing,’ ‘receiving,’ and
‘storing,’ . . . those functions can be achieved by any general purpose
computer without special programming.”). None of these activities is used
in some unconventional manner nor does any produce some unexpected
result. Appellant does not contend it invented any of these activities. In
short, each step does no more than require a generic computer to perform
generic computer functions. As to the data operated upon, “even if a process
of collecting and analyzing information is ‘limited to particular content’ or a
particular ‘source,’ that limitation does not make the collection and analysis
Appeal 2019-004927
Application 13/337,659

16

other than abstract.” SAP America, Inc. v. InvestPic LLC, 898 F.3d 1161,
1168 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellant’s claim 1 add nothing that is not already present when the steps
are considered separately. The sequence of data generation-modification-
analysis-reception-storage-transmission is equally generic and conventional.
See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014)
(sequence of receiving, selecting, offering for exchange, display, allowing
access, and receiving payment recited an abstraction); Inventor Holdings,
LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017)
(sequence of data retrieval, analysis, modification, generation, display, and
transmission); Two-Way Media Ltd. v. Comcast Cable Communications,
LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing,
controlling, and monitoring). The ordering of the steps is therefore ordinary
and conventional.
We conclude that claim 1 does not provide an inventive concept
because the additional elements recited in the claim do not provide
significantly more than the recited judicial exception.
REMAINING CLAIMS
Claim 1 is representative. The remaining method claims merely
describe process parameters. We conclude that the method claims at issue
are directed to a patent-ineligible concept itself, and not to the practical
application of that concept.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
Appeal 2019-004927
Application 13/337,659

17

computer components configured to implement the same idea.
This Court has long “warn[ed] . . . against” interpreting § 101
“in ways that make patent eligibility ‘depend simply on the
draftsman’s art.’”
Alice, 573 U.S. at 226. As a corollary, the claims are not directed to any
particular machine.
LEGAL CONCLUSION
From these determinations we further determine that the claims do not
recite an improvement to the functioning of the computer itself or to any
other technology or technical field, a particular machine, a particular
transformation, or other meaningful limitations. From this we conclude the
claims are directed to the judicial exception of the abstract idea of certain
methods of organizing human activity as exemplified by the commercial and
legal interaction of managing commercial licenses by advising one to adjust
the number of licenses according to usage, without significantly more.
APPELLANT’S ARGUMENTS
As to Appellant’s Appeal Brief arguments, we adopt the Examiner’s
determinations and analysis from Final Action 4–7 and Answer 3–4 and
reach similar legal conclusions. We now turn to the Reply Brief.
We are not persuaded by Appellant’s argument that “Appellants find
nothing abstract about sending warning messages of license violation to
unlicensed clients when unlicensed access to the software applications are
detected. Moreover, Appellants find nothing abstract about sending a
warning message of insufficient credits to the licensee.” Reply Br. 2. This
is a conclusory argument. A warning message is perceptible only in the
mind of the beholder. “Information, whether displayed in the form of price
Appeal 2019-004927
Application 13/337,659

18

values or P&L values, is abstract.´ Trading Techs. Int’l, Inc. v. IBG LLC,
921 F.3d 1378, 1384 (Fed. Cir. 2019).
We are not persuaded by Appellant’s argument that “Claim 10 places
specific limitations on the foundation server, the application server, and the
license management server.” Reply Br. 2. The limitations are specific only
in the sense they are specified using words. The limitations only recite
software steps performed, and do not limit the physical structures.
We are not persuaded by Appellant’s argument that “sending warning
messages of license violation to unlicensed clients when unlicensed accesses
to the software applications are detected is a practical application.” Reply
Br. 3. We are similarly not persuaded by Appellant’s argument that
“sending a warning message of insufficient credits to the licensee is also a
practical application.” Reply Br. 4. These are variations of the above
argument that sending messages is not abstract, and are equally unpersuasive
here.
We are not persuaded by Appellant’s argument that “checking any
attempt to violate a software license is a practical application.” Reply Br. 4.
Appellant is arguing only that the abstract concept so described has some
benefits. But this is not sufficient to confer eligibility. “That the automation
can ‘result in life altering consequences,’ is laudable, but it does not render it
any less abstract.” Univ. of Fla. Research Found., Inc. v. Gen. Elec. Co.,
916 F.3d 1363, 1369 (Fed. Cir. 2019).
We are not persuaded by Appellant’s argument that “sending back a
warning for insufficient credits is also a practical application.” Reply Br. 5.
This is a variation of the above argument that sending messages is not
abstract, and is equally unpersuasive here.
Appeal 2019-004927
Application 13/337,659

19

Appellant describes much of the Specification in Reply Brief 5–7
without relating those descriptions to arguments for eligibility. As no
arguments are presented, we have nothing pertinent to consider here.
We are not persuaded by Appellant’s argument that
a free amount of the credits is purchasable by the licensees and
is freely allocated to the software applications independently of
their version and bundle. This provides greater flexibility for
the customer, and results in a less complex and less restraining
process for purchasing credits in order to upgrade software
licenses. Additionally, since purchasing credits in order to
upgrade software licenses is less complex, the invention avoids
the consumer confusion that would otherwise result in a time
consuming and human resource consuming call to a helpdesk
for clarification. Also, the claimed invention enables the size of
the applications to be changed without changing the existing
licenses. Thus, the claimed invention provides a significant
improvement in the technical field of managing software
licenses.
Reply Br. 7 (emphasis omitted). Managing licenses is a management field,
not a technical field. This is a variation of the above argument that the
concept so described is useful, and is equally unpersuasive here.

Claims 1–12 rejected under 35 U.S.C. § 103(a) as unpatentable over Aldis,
Sweeney, Vanderland, and Logan
We are persuaded by Appellant’s argument that the art fails to
describe limitations 7 and 8 of claim 1. Reply Br. 8–14. The Examiner
applies Sweeney and Vanderland as describing these limitations. Final Act.
11–13. Although Vanderland does refer to size in determining prices,
Vanderland refers to size of digital media, not size of the number of licenses
as recited in the claims. Sweeney only describes the arithmetic aspects of
these limitations. The cited art does not describe “calculating an equivalent
Appeal 2019-004927
Application 13/337,659

20

number of credits for every size, which indicates a number of entities
associated with one of the license types.” Limitation 8.
CONCLUSIONS OF LAW
The rejection of claims 1–12 under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more is proper.
The rejection of claims 1–12 under 35 U.S.C. § 103(a) as unpatentable
over Aldis, Sweeney, Vanderland, and Logan is improper.
CONCLUSION
The rejection of claims 1–12 is affirmed.
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–12 101 Eligibility 1–12
1–12 103 Aldis, Sweeney,
Vanderland, Logan
1–12
Overall Outcome 1–12

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) (2011).

AFFIRMED