Adobe Inc.

Patent Trials and Appeals Board

Jun 30, 2020

2020001852 (P.T.A.B. Jun. 30, 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.
13/925,085 06/24/2013 Xuejun Xu B066C1 8078
108982 7590 06/30/2020
SBMC
116 W. Pacific Avenue
Suite 200
Spokane, WA 99201
EXAMINER
RAVETTI, DANTE
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
06/30/2020 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@sbmc-law.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte XUEJUN XU and
KATHERINE K. NADELL

Appeal 2020-001852
Application 13/925,085
Technology Center 3600
____________

Before RICHARD M. LEBOVITZ, FRANCISCO C. PRATS, and
RACHEL H. TOWNSEND, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
The Examiner rejected the claims under 35 U.S.C. § 101 as reciting
patent ineligible subject matter, and under 35 U.S.C. § 112 as lacking a
written description and as indefinite. Pursuant to 35 U.S.C. § 134(a),
Appellant1 appeals from the Examiner’s decision to reject the claims. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 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 Adobe Inc.
Appeal Br. 3.
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STATEMENT OF THE CASE
The Examiner finally rejected the claims as follows:
1. Claim 21, 24, 25, 28, 30, 33, 34, 36, 37, 39, and 41–50 under 35
U.S.C. § 101 because the claimed invention is directed to an abstract idea
without significantly more. Final Act. 4.
2. Claims 21, 24, 25, 28, 30, 33, 34, 36, 37, 39, and 41–50 under 35
U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to
comply with the written description requirement. Final Act. 18.
3. Claims 21, 24, 25, 28, 30, 33, 34, 36, 37, 39, and 41–50 under 35
U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which the inventor or a joint inventor, or for pre-AIA the applicant
regards as the invention. Final Act. 26.
Claim 21 is representative and reads as follows (bracketed numbers
added for reference to the limitations in the claim):
21. A method implemented by a server computing device, the
method comprising:
[1] receiving, by the server computing device, a request to
transfer a software license installed on a first client computing
device from the first client computing device to a second client
computing device, the request including an identifier of the
software license;
[2] determining, by the server computing device, whether
the identifier is valid; and
[3] based on the determining that the identifier is valid:
[4] creating a deactivation message by the server
computing device;
[5] sending the deactivation message from the
server computing device to the first client computing device, the
deactivation message causing the first client computing device to
deactivate the software license installed on the first client
computing device;
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[6] receiving a deactivation response from the first
client computing device after the software license installed on the
first client computing device is deactivated;
[7] in response to receiving the deactivation
response, incrementing a license instance count for the software
license;
[8] creating an activation message by the server
computing device containing the identifier; and
[9] sending the activation message containing the
identifier from the server computing device to the second client
computing device, the activation message causing the second
client computing device to activate the software license to make
an associated application usable on the second client computing
device.
§ 101 REJECTION
Principles of Law
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
However, not every discovery is eligible for patent protection. Diamond v.
Diehr, 450 U.S. 175, 185 (1981). “Excluded from such patent protection are
laws of nature, natural phenomena, and abstract ideas.” Id. The Supreme
Court articulated a two-step analysis to determine whether a claim falls
within an excluded category of invention. Alice Corp. Pty. Ltd. v. CLS Bank
Int’l, 573 U.S. 208 (2014); Mayo Collaborative Servs. v. Prometheus Labs,
Inc., 566 U.S. 66, 75–77 (2012).
In the first step, it is determined whether the claims at issue recite one
of those patent-ineligible concepts. Alice, 573 U.S. at 217. If it is determined
that the claims recite an ineligible concept, then the second step of the two-
part analysis is applied in which it is asked “[w]hat else is there in the claims
before us?” Id. (citation omitted) (alteration in original).

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The Court explained that this step involves
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, 573 U.S. at 217–218 (citing from Mayo, 566 U.S. at 75–77) (alteration
in original).
Alice, relying on the analysis in Mayo of a claim directed to a law of
nature, stated that in the second part of the analysis, “the elements of each
claim both individually and ‘as an ordered combination’” must be
considered “to determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Alice, 573 U.S. at 217
(citation omitted).
The PTO published guidance on the application of 35 U.S.C. § 101.
USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50, 51–57 (2019) (“Eligibility
Guidance”). This guidance provides additional direction on how to
implement the two-part analysis of Mayo and Alice.
Step 2A, Prong One, of the 2019 Guidance, looks at the specific
limitations in the claim to determine whether the claim recites a judicial
exception to patent eligibility. In Step 2A, Prong Two, the claims are
examined to identify whether there are additional elements in the claims that
integrate the exception into a practical application, namely, is there a
“meaningful limit on the judicial exception, such that the claim is more than
a drafting effort designed to monopolize the judicial exception.” Eligibility
Guidance, 84 Fed. Reg. 54 (2. Prong Two).
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If the claim recites a judicial exception that is not integrated into a
practical application, then as in the Mayo/Alice framework, Step 2B of the
Eligibility Guidance instructs us to determine whether there is a claimed
“inventive concept” to ensure that the claims define an invention that is
significantly more than the ineligible concept, itself. Eligibility Guidance, 84
Fed. Reg. 56.
With these guiding principles in mind, we proceed to determine
whether the claimed subject matter in this appeal is eligible for patent
protection under 35 U.S.C. § 101.
Discussion
Claim 21 is directed to a “method.” Following the first step of the
Mayo/Alice analysis, we find that the “method” claim is also a “process,”
and therefore falls into one of the broad statutory categories of patent-
eligible subject matter under 35 U.S.C. § 101. We, thus, proceed to Step 2A,
Prong One, of the Eligibility Guidance.
Step 2A, Prong One
In Step 2A, Prong One, of the Eligibility Guidance, the specific
limitations in the claim are examined to determine whether the claim recites
a judicial exception to patent eligibility, namely whether the claim recites an
abstract idea, law of nature, or natural phenomenon.
In the Final Action, the Examiner stated “the claimed invention is
directed to ‘mental process of controlling the consumption of content
through licensing (e.g. DRM)’ without significantly more.” Final Act. 5
(emphasis removed). The Examiner further stated the claim limitations recite
the abstract idea of mathematical concepts and mental processes. Id. at 7.
The Examiner did not identify which of the claim limitations are
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mathematical or mental processes, but rather highlighted substantially all the
steps of claim 21 as reciting an abstract idea, with no analysis explaining the
reason for this determination. Id. at 6–7. In the Answer, the Examiner
repeated in part what was said in the Final Action, but left out the phrase
“mental process”, stating that the claims are “directed to the abstract idea of
controlling the consumption of content through licensing (e.g. DRM),
without significantly more.” Ans. 7.
The Examiner did not establish that any of the claim limitations recite
a mental process or mathematical concept, two of the enumerated categories
of abstract ideas listed in the Eligibility Guidance. 84 Fed. Reg. 52. The
claim comprises making a request to a server to transfer a software license
(step [1]), determining whether a valid software license accompanied the
request (step [2]), and if the request is valid (step [3]), creating deactivation
and activation messages, and sending and receiving them (steps [4]–[6], [8],
[9]). These recited steps in claim 21 deactivate and activate software (steps
[5] and [9]) by sending messages, steps which could not be performed
mentally because they execute an operation on software which is loaded on a
computing device. For this reason, we find that the steps could not
practically be performed in a human mind. Thus, we do not agree that the
steps of the claim, under their broadest reasonable interpretation, recite the
abstract idea of a “mental process.”
While we do not agree with the Examiner’s categorization of the
abstract idea recited in claim 21, we do agree that claim 21 recites an
abstract idea. Claim 21 is directed to a method in which a software license is
transferred from one computing device to another (step [1]: “receiving, by
the server computing device, a request to transfer a software license installed
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on a first client computing device from the first client computing device to a
second client computing device”). A software license authorizes a user to
use a software producer’s software. We consider this type of activity to be a
“legal interaction,” one of the examples of the abstract ideas of “[c]ertain
methods of organizing human activity” (Eligibility Guidance, 84 Fed. Reg.
52) because the transfer of the license gives the transferee legal permission
to use the software. Accordingly, having determined that claim 21 recites an
abstract idea, we proceed to Step 2A, Prong Two, of the Eligibility
Guidance.
Step 2A, Prong Two
Prong Two of Step 2A under the 2019 Eligibility Guidance asks
whether there are additional elements that integrate the exception into a
practical application. As in the Mayo/Alice framework, we must look at the
claim elements individually and “as an ordered combination” to determine
whether the additional elements integrate the recited abstract idea into a
practical application. The Eligibility Guidance explains that “[a] claim that
integrates a judicial exception into a practical application will 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.” Eligibility Guidance, 84
Fed. Reg. 54. Integration into a practical application is evaluated by
identifying whether there are additional elements individually, and in
combination, which go beyond the judicial exception. Eligibility Guidance,
84 Fed. Reg. 54–55.
The PEG Update explains that “first the specification should be
evaluated to determine if the disclosure provides sufficient details such that
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one of ordinary skill in the art would recognize the claimed invention as
providing an improvement.” Update to Subject Matter Eligibility 12.2
We begin with the Specification. The Specification discloses that
“software producers rely on software activation techniques to help combat
piracy while minimizing the hassle to legitimate users of their software.”
Spec. ¶ 2. The Specification explains that one technique “involves sending a
license number or key for the software over the Internet to an activation
server” which “verifies the license number or key and sends back an
activation message to the application informing the application about
whether the activation was successful,” unlocking and allowing the user to
use the software. Id.
The Specification states, however, “there is no easy way for the user
to transfer the license of software installed on one machine to another
machine.” Spec. ¶ 3. For example if a user buys a new computer, the user
typically reinstalls the program on the new computer, and uses the serial
number or key to activate it. Id. However, the Specification states that
“allowing this type of activation reduces the amount of control software
producers have over the activation of their software.” Id.
The Specification further explains that one of the problems arising in
software license transfer is “the risk of more instances of application 202
being in an activated state than the software license allows.” Spec. ¶ 24. For
example, the Specification discloses that if the deactivation request is sent to
the server and the server increments the license count before the application

2 October 2019 Update: Subject Matter Eligibility, Available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df (last accessed Jun. 9, 2020) (“PEG Update”).

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is deactivated on the client, it is possible for the client to disconnect from the
server prior to receipt of the deactivation message, and therefore
impermissibly keep the application software activated. Id.
The Specification discloses how Appellant’s invention facilitates
transferring software from one machine (client) to another. Spec. ¶¶ 4, 5.
The Specification explains that this is accomplished by sending, upon receipt
of a request and a valid software identifier, a deactivation message to the
first client computer which “deactivates the software license, thereby
rendering the associated application unusable” on the first client computer.
Spec. ¶¶ 5, 6. After receipt of a deactivation response from the first client
computer (Spec. ¶ 5), an activation message is created and sent to a second
client computer, which “activates the software license to make the associated
application usable on the second client.” Spec. ¶ 8. Thus, another instance of
the software license is not allowed until a deactivation response is received
from the device by the server. These steps are recited in claim 21 (steps [1],
[2], [5]–[7]).
Appellant identifies the problem of software license transfer described
in the Specification as a “digitally-rooted challenge, which . . . involves
transferring a software license from a first client computing device to a
second client computing device.” Appeal Br. 24. Consistent with the
Specification, Appellant states:
For example, if a computing device sends a deactivation request
to an activation server and the activation server increments the
license instance count before the application is actually
deactivated at the computing device, it may be possible for a
user to disconnect a network connection between the computing
device and the network prior to the deactivation message
reaching the computing device. Doing so would result in
another available instance of the application on the activation
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server that could in turn be activated on a second computing
device while the application is still activated on the computing
device.
Appeal Br. 26.
To solve this problem, Appellant states that “claim 21 describes in a
specific manner how a license count is incremented in response to receiving
a deactivation response from the first client computing device after the
software license installed on the first client computing device is
deactivated.” Appeal Br. 26. As explained by Appellant, the stated solution
to the technical problem is reflected in claim 21, specifically in how a
deactivation message is created and sent to the first computing device by the
server to deactivate the software license (steps [4], [5]). A deactivation
response from the device is sent to the server (step [5]). Upon receiving this
response (step [6]), the license instance count is incremented (step [7]) and
the second computing device can activate the software license and
associated program (steps [8], [9]). Therefore, as explained in the
Specification, only after the software license is deactivated on the first
computer can the second computer activate the license and use the
associated program.
The Examiner responded that none of the recited “limitations reflect
an improvement in the functioning of a computer, or an improvement to
other technology or technical field, applies or uses a judicial exception in
some other meaningful way beyond generally linking the use of the judicial
exception to a particular technological environment.” Ans. 7. The Examiner
also stated the additional elements “do not amount to significantly more than
the abstract idea of ‘controlling the consumption of content through
licensing (e.g. DRM)’ to control the consumption of content.” Id. at 8.
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As explained above, the claim is doing more than controlling
“consumption of content” as stated by the Examiner, but rather is providing
a way to transfer a software license from a first device to a second device by
using a deactivation message and deactivation response to determine when
the software can be activated on the latter device. The Examiner denies this
is an improvement to a technical field or technology, but provides no
explanation as to why receiving the deactivation response and incrementing
a license count in response thereto before activating the license on a second
device is not a patent-eligible improvement to software license transfer.
Computer-executable instructions, namely software, is patent-eligible when
a specific implementation of a solution to a problem is claimed (see, e.g.,
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
2016), as is the case here.
Accordingly, because the claim provides a solution to a technical
problem, we conclude that the abstract idea is integrated into a practical
application. The rejection of claim 21 is reversed.
Independent claims 30 and 39 have substantially the same limitations
as claimed 21 and the § 101 rejection of these claims are reversed, as well.
Dependent claim 25, 28, 33, 34, 36, 37, and 41–50 incorporate all the
limitation of the independent claims and therefore the rejection of these
claims is reversed for the same reasons.

WRITTEN DESCRIPTION REJECTION
The Examiner finds that step [5] and [9] of claim 21 lack a written
description. Ans. 9–10. The limitations identified by the Examiner as
defective under 35 U.S.C. § 112 are as follows:
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the deactivation message causing the first client computing
device to deactivate the software license installed on the first
client computing device,

the activation message causing the second client computing
device to activate the software license to make an associated
application usable on the second client computing device.
The Examiner states that the Specification “is silent” about “the
disclosure of the computer and the algorithm (e.g., the necessary steps
and/or flowcharts) that perform the claimed functions in sufficient detail
such that one of ordinary skill in the art can reasonably conclude that the
inventor invented the claimed subject matter.” Ans. 10. The Examiner makes
this same statement for the “implement[ing]” step of claim 30 (Ans. 11) and
the “facilitating” step of claims 30 and 39 (Ans. 12–14). The Examiner cited
M.P.E.P. ¶ 2161 (Ninth Edition, Revision 08.2017, Last Revised January
2018) which has the following pertinent guidance:
When examining computer-implemented functional claims,
examiners should determine whether the specification discloses
the computer and the algorithm (e.g., the necessary steps and/or
flowcharts) that perform the claimed function in sufficient detail
such that one of ordinary skill in the art can reasonably conclude
that the inventor possessed the claimed subject matter at the time
of filing. It is not enough that one skilled in the art could write a
program to achieve the claimed function because the
specification must explain how the inventor intends to achieve
the claimed function to satisfy the written description
requirement. See, e.g., Vasudevan Software, Inc. v.
MicroStrategy, Inc., 782 F.3d 671, 681–683, 114 USPQ2d 1349,
1356, 1357 (Fed. Cir. 2015).
The claimed result of deactivating the software license on the first
computing device is accomplished using a “deactivation message.” The
claimed result of activating the software license on the second computing
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device is accomplished using an “activation message.” How the recited
function is achieved is therefore recited in the claim and described in the
Specification (e.g., Spec. ¶¶ 6, 8). It is true that the Specification does not
disclose the specific computer code which is “causing” the software to be
deactivated and activated. However, the Specification describes how “to
achieve the functionality” (Vasudevan, 782 F3d. at 683), namely by sending
the messages to the first and second client computing devices. The Examiner
did not establish that one of ordinary skill in the art would have reasonably
concluded that the inventor did not possess the claimed subject matter
because of the lack of a specific computer code to deactivate and activate the
licenses residing on the devices. Specifically, Examiner did not establish that
the specific computer code lines to cause the deactivation and activation on
the computing devices is a necessary detail “to allow a person of ordinary
skill in the art to understand what is claimed and to recognize that the
inventor invented what is claimed.” University of Rochester v. G.D. Searle
& Co., Inc., 358 F.3d 916, 928 (Fed. Cir. 2004).
Claim 30 recites “one or more non-transitory computer-readable
storage media comprising instructions that, when executed by the one or
more processors, causes the one or more processors to implement a license
activation server to perform operations.” The Examiner found this lacked a
written description for the same reason as claim 21. Final Act. 21.
We do not agree. Claim 30, like claim 21, recites that the license
activation is caused by a deactivation message. Therefore, for the same
reason as claim 21, we find that the claim recites that the functionality is
achieved using a “deactivation message,” which is sufficient to establish
possession of the claimed limitation.
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Claims 30 and 39 recite “facilitating” the transfer of the software
license. The Examiner found this limitation lacks a written description for
the same reason as claim 21. Final Act. 24.
As discussed above, the steps in the claim recite that the result is
achieved using a “deactivation message”, “deactivation response”, and
“activation message.” The Examiner did not establish that the specific
computer code lines to cause the deactivation and activation on the
computing devices is necessary detail “to allow a person of ordinary skill in
the art to understand what is claimed and to recognize that the inventor
invented what is claimed.” Rochester, 358 F.3d at 928.
It is the Examiner’s “initial burden [to] present[ ] evidence or reasons
why persons skilled in the art would not recognize in the disclosure a
description of the invention defined by the claims.” In re Wertheim, 541
F.2d 257, 263 (CCPA 1976). This burden was not met here. The written
description rejection of claims 21, 24, 25, 28, 30, 33, 34, 36, 37, 39, and 41–
50 is reversed.
INDEFINITENESS REJECTION
The Examiner found that the scope of claim 21 is unclear in the
recitation of “deactivation” and “activation” because the method is
implemented by a server, but the claim recites a first client computing device
and a second client computing device. Ans. 17.
This rejection is reversed. The claim specifically states which
functions are performed by the server and which functions are performed by
the computing devices. Thus, the claim scope is clear and would be readily
understood by one of ordinary skill in the art.
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The Examiner stated that the scope of claim 21 is not clear because
the claim “recites ‘causing’ which is representative of ‘state language’ and
not to an action.” Ans. 18.
The claim scope is clear and the rejection is reversed. The claim
recites that the messages “caus[e]” deactivation and activation of the
software license on the computing device. There is no lack of clarity in this
language; the skilled worker would readily understand that the messages
result in the deactivation and activation of the software license.
Claim 28 recites “wherein the deactivation message includes a
machine type for the first client computing device such that transfer of the
software license is permitted if the machine type for either the first client
computing device or the second client computing device matches the
specified machine type.” The Examiner stated that the recitation of “such
that” in claim 28 makes the claim scope unclear. Ans. 19.
We do not agree and reverse the rejection. The skilled worker would
understand that the “deactivation message” only causes the software license
to be deactivated when the machine types are the same and that the phrase
“such that” conveys this function
Claim 30 recites “one or more processors.” The Examiner stated that
“the scope of the claim is unclear as Appellant's claim recites, ‘first client
device’ and ‘second client device;’ however, Appellant's claim is directed to
‘one or more processors.’” Ans. 20.
The “processors” are recited in the claim as “implement[ing] a license
activation server to perform operations.” The processors perform the server
functions recited in the claim (e.g., “determining that the identifier for the
software license installed on the first client computing device is valid”) and
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the client devices perform the client device functions recited in the claim
(e.g., “receiving a request to transfer a software license from a first client
computing device to a second client computing device”). Thus, the claim
scope is clear and would be readily understood by one of ordinary skill in
the art. The rejection is reversed.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
21, 24, 25,
28, 30, 33,
34, 36, 37,
39, 41–50
101 Eligibility 21, 24, 25,
28, 30, 33,
34, 36, 37,
39, 41–50
21, 24, 25,
28, 30, 33,
34, 36, 37,
39, 41–50
112 Written description 21, 24, 25,
28, 30, 33,
34, 36, 37,
39, 41–50
21, 24, 25,
28, 30, 33,
34, 36, 37,
39, 41–50
112 Indefiniteness 21, 24, 25,
28, 30, 33,
34, 36, 37,
39, 41–50
Overall
Outcome
21, 24, 25,
28, 30, 33,
34, 36, 37,
39, 41–50

REVERSED