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