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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Ex parte CRAIG S. ETCHEGOYEN
`
`Appeal2014-001653
`Application 12/784,426
`Technology Center 3600
`
`Before ANTON W. PETTING, JOSEPH A. FISCHETTI, and
`NINA L. MEDLOCK, Administrative Patent Judges.
`PETTING, Administrative Patent Judge.
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`DECISION ON APPEAL
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`STATEMENT OF THE CASE 1
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`Craig S. Etchegoyen (Appellant) seeks review under 35 U.S.C. § 134 of
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`a final rejection of claims 1-18, the claims pending in the application on
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`appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b ).
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`1 Our decision will make reference to the Appellant's Appeal Brief ("App.
`Br.," filed July 22, 2013) and Reply Brief ("Reply Br.," filed November 11,
`2013), and the Examiner's Answer ("Ans.," mailed September 11, 2013),
`and Final Action ("Final Act.," mailed February 20, 2013).
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`APPLE EXHIBIT 1111
`Page 1 of 10
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`The Appellant invented a way of software activation. Specification
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`para. 2.
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`An understanding of the invention can be derived from a reading of
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`exemplary claim 1, which is reproduced below (bracketed matter and some
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`paragraphing added).
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`1. A license server for activating use of software on a
`computing device, the license server comprising:
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`one or more processors;
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`and
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`a computer readable medium operatively coupled to the
`processors;
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`wherein the license server is configured so that, in response to a
`communication link being available between the license server
`and the computing device, the license server:
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`[ 1] receives from the computing device, via the
`communication link, an activation request including
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`(a) a software identifier identifying the software,
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`(b) a device identifier identifying the computing
`device and being based on a combination of at
`least one user-configurable parameter of the
`computing device and at least one non-user(cid:173)
`configurable parameter of the computing device,
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`and
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`( c) a license key for the software;
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`[2] accesses a database storing previously received
`software identifiers, device identifiers, and license keys;
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`[3] determines an activation instruction through
`application of a usage policy, wherein application of the
`usage policy includes a comparison between the
`activation request and one or more records within the
`database;
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`2
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`APPLE EXHIBIT 1111
`Page 2 of 10
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`and
`[ 4] sends the activation instruction to the computing
`device.
`App. Br. 16 (Claims App.).
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`The Examiner relies upon the following prior art:
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`Demeyer US 2005/0076334 Al
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`Apr. 7, 2005
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`Carpenter US 7,017,044 Bl
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`Mar. 21, 2006
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`Jorden
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`US 2007/0143228 Al
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`June 21, 2007
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`Nikitin
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`US 2010/0293622 Al
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`Nov. 18, 2010
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`Claims 1, 2, 6, 7, 9-11, 15, 16, and 18 stand rejected under 35 U.S.C.
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`§ 102(b) as anticipated by Demeyer.
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`Claims 1, 2, 6, 7, 9-11, 15, 16, and 18 stand rejected under 35 U.S.C.
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`§ 103(a) as unpatentable over Demeyer, Carpenter, and Jorden.
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`Claims 3-5, 8, 12-14, and 17 stand rejected under 35 U.S.C. § 103(a) as
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`unpatentable over Demeyer, Jorden, Carpenter, and Nikitin.
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`Claims 1-18 stand rejected under obviousness type double patenting.
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`ISSUES
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`The issues of anticipation and obviousness tum primarily on the
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`patentable weight afforded labels attached to data in structural and process
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`claims and to the extent such labels are afforded weight, whether the art
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`shows they were used or predictable.
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`3
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`APPLE EXHIBIT 1111
`Page 3 of 10
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`FACTS PERTINENT TO THE ISSUES
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`The following enumerated Findings of Fact (FF) are believed to be
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`supported by a preponderance of the evidence.
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`Facts Related to the Prior Art
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`Demeyer
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`01. Demeyer is directed to licensing software. Demeyer para. 1.
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`02. Demeyer describes using a software identifier and machine
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`identifier in licensing schemes. The machine identifier may be a
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`serial number or a parameter such as a service code. Demeyer
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`paras. 39 and 52.
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`03. Demeyer describes storing licensing identifiers in a registration
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`database. Demeyer para. 45.
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`04. Demeyer describes providing licensing on a per-use basis. For
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`example, each time an end user executes a functionality module,
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`the registration procedure may include incrementing and recording
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`a count in a registration database for use in determining ongoing
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`licensing fees. Demeyer para. 54.
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`05. Demeyer describes, the licensing system may execute some
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`combination of registration and enabling steps each time a
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`technology module is used. In this embodiment, registration
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`information for each use is stored in the registration database and
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`billed to the software provider. Demeyer para. 64.
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`4
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`APPLE EXHIBIT 1111
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`Carpenter
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`06. Carpenter is directed to "securing specific files in a storage
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`medium device to prevent use of unauthorized copies." Carpenter
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`1:7-10.
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`07. Carpenter describes an inherent physical signature that
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`statistically differentiates each hard disk drive (HDD) from
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`another. Carpenter 2:35--46.
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`Jorden
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`08.
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`Jorden is directed to product activation. Jorden para. 1.
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`09.
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`Jorden describes using a license key as part of a license
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`activation process. Jorden paras. 43 and 52.
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`ANALYSIS
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`Claims 1, 2, 6, 7, 9-11, 15, 16, and 18 rejected under 35 USC§ 102(b) as
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`anticipated by Demeyer
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`Claims 1, 2, 6, 7, 9-11, 15, 16, and 18 rejected under 35 USC§ 103(a) as
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`unpatentable over Demeyer, Carpenter, and Jorden
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`Claim 1 is an apparatus claim with two recited parts, viz. processors and
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`computer readable media. Claim 1 recites that the apparatus is configured to
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`be able to perform four steps, viz. receiving an activation request, accessing
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`a database, determining an activation instruction, and sending that
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`instruction.
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`5
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`APPLE EXHIBIT 1111
`Page 5 of 10
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`As to structural inventions, such claims must be distinguished from the
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`prior art in terms of structure rather than function, see, e.g., In re Schreiber,
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`128 F.3d 1473, 1477-78 (Fed. Cir. 1997). In order to satisfy the functional
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`limitations in an apparatus claim, however, the prior art apparatus as
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`disclosed must be capable of performing the claimed function. Id. at 1478.
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`When the functional language is associated with programming or some other
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`structure required to perform the function, that programming or structure
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`must be present in order to meet the claim limitation. Typhoon Touch
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`Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011) (discussing
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`Microprocessor Enhancement Corp. v. Texas Instruments, Inc., 520 F .3d
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`1367 (Fed. Cir. 2008)). In some circumstances, generic structural
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`disclosures may be sufficient to meet the functional requirements, see Ergo
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`Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1364 (Fed. Cir.
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`2012) (citing Telcordia Techs., Inc. v. Cisco Sys., Inc., 612 F.3d 1365, 1376-
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`77 (Fed. Cir. 2010)).
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`Also, a structural invention is not distinguished by the work product it
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`operates upon, such as data in a computer. "[E]xpressions relating the
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`apparatus to contents thereof during an intended operation are of no
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`significance in determining patentability of the apparatus claim." Ex parte
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`Thibault, 164 USPQ 666, 667 (Bd. App. 1969). Furthermore, "inclusion of
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`material or article worked upon by a structure being claimed does not impart
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`patentability to the claims." In re Otto, 312 F.2d 937, 940 (CCPA 1963).
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`Claim 10 recites six steps, viz., establishing a link; receiving an
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`activation request; accessing a database; applying a usage policy;
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`determining an activation instruction; and sending the instruction. The
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`6
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`APPLE EXHIBIT 1111
`Page 6 of 10
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`receiving step further recites that what is received is X, Y, and Z, where X is
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`labeled as a software identifier, Y is labeled as a license key, and Z is
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`labeled as a device identifier based on two parameters. Thus, the claim is
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`really directed to sending some instruction that is retrieved based on data
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`that are received; i.e. a conventional data query. Nothing in the claim
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`depends on, or enforces the perceptual labels the claim suggests. Mental
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`perceptions of what data represent are non-functional and given no weight.
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`King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010)
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`("[T]he relevant question is whether 'there exists any new and unobvious
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`functional relationship between the printed matter and the substrate."')
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`(citations omitted). See also In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir.
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`1994) (describing printed matter as "useful and intelligible only to the
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`human mind") (quoting In re Bernhart, 417 F.2d 1395, 1399 (CCPA 1969)).
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`Data labels are just examples of such mental perceptions. Data, being a
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`succession of binary digits, are just those digits, not perceptual labels of
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`those digits. The binary digits may impose some functional consequence,
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`but absent some recitation of how so, such consequence is not an issue.
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`None of the recited structure and steps is contested. Instead, Appellant
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`argues that the art does not describe the particular data that are received.
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`Again, the particular data have no weight in a structural claim so long as the
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`art's structure has the capacity to perform the functions recited. This is
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`uncontested. As to the process claim, again the labels attached to data are
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`mental perceptions accorded no patentable weight. The recitations of the
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`data are only of what one aspires the data to represent, but the claim is
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`unaffected by, and does not affect the data labels. Although the identifiers
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`nominally recite identifying something, the claim is unaffected by, and does
`7
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`APPLE EXHIBIT 1111
`Page 7 of 10
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`not affect such identification. Thus, any functional effect of such
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`identification is outside the scope of the claim. Even the recitation that the
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`device identifier identifying the computing device be based on a
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`combination of at least one user-configurable parameter of the computing
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`device and at least one non-user-configurable parameter of the computing
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`device is an aspirational recitation of how one hopes a datum was
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`constructed outside the scope of the claim. And even here, the recitation is
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`only that the identifier is based on, rather than constructed from such
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`parameters and does not require unique identification. Thus, for example,
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`identification of an operating system (non-user configurable) and machine
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`name (user configurable) would be within the claim scope.
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`As the Examiner finds, Demeyer shows the use of both hardware serial
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`number and software created service codes for identifying devices. Also,
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`Demeyer shows the use of software, hardware, and license identifiers in
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`verifying licenses. It was at least predictable to combine the various pieces
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`of data individually known as being suitable for licensing to achieve their
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`combined effect. The Examiner also, in a back-up obviousness analysis,
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`finds that Carpenter and Jorden describe using non-changeable hardware
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`parameters as identifiers and license keys as identifiers.
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`We are not persuaded by Appellant's argument that the cited recitations
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`are functionally required for implementing Appellant's invention. App. Br.
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`13. Whether the recited data are required for implementing Appellant's
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`invention as disclosed is not pertinent to the issue of whether the data
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`functionally affect or are affected by the claims as drafted. Whether
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`8
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`APPLE EXHIBIT 1111
`Page 8 of 10
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`additional structure and steps are disclosed, but not claimed, that would alter
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`this analysis is not pertinent.
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`Claims 3-5, 8, 12-14, and 17 rejected under 35 USC§ 103(a) as
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`unpatentable over Demeyer, Jorden, Carpenter, and Nikitin
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`This rejection is not separately contested. Appellant nominally contests
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`this rejection at App. Br. 14, but the analysis refers to the obviousness type
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`double patenting rejection.
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`Claims 1-18 rejected under obviousness type double patenting
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`We do not reach this provisional rejection.
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`CONCLUSIONS OF LAW
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`The rejection of claims 1, 2, 6, 7, 9-11, 15, 16, and 18 under 35 U.S.C.
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`§ 102(b) as anticipated by Demeyer is proper.
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`The rejection of claims 1, 2, 6, 7, 9-11, 15, 16, and 18 under 35 U.S.C.
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`§ 103(a) as unpatentable over Demeyer, Carpenter, and Jorden is proper.
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`The rejection of claims 3-5, 8, 12-14, and 17 under 35 U.S.C. § 103(a)
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`as unpatentable over Demeyer, Jorden, Carpenter, and Nikitin is proper.
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`The rejection of claims 1-18 under obviousness type double patenting is
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`not reached.
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`9
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`APPLE EXHIBIT 1111
`Page 9 of 10
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`Appeal2014-001653
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`The rejection of claims 1-18 is affirmed.
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`DECISION
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`No time period for taking any subsequent action in connection with this
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`appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
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`§ 1.136(a)(l)(iv) (2011).
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`AFFIRMED
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`APPLE EXHIBIT 1111
`Page 10 of 10
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