Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments/Amendments
Regarding previous interpretation of the claims under 35 USC 112(f), Applicant’s arguments are found persuasive and the claims will hereby no longer be interpreted under 35 USC 112(f).
Regarding prior rejection of claim 3 under 35 USC 112(b), Applicant’s amendments overcome the prior rejection and the rejection is hereby withdrawn.
Regarding rejection of the claims under 35 USC 101, Applicant submits that the claims recite significantly more than the abstract idea through sending an activation control that renders the industrial software product usable. The Examiner respectfully disagrees. The activation control does not improve the functioning or performance of the system nor does it improve a technical field. Rather, sending the activation control does no more than generally link the abstract idea to the particular field of use and simply perform the abstract idea of access rights/controls (e.g. providing a physical key to a permitted user to operate an industrial machine). Furthermore, the operation of sending an activation control can be performed by any generic, off-the-shelf computing device executing standard computing operations (e.g. transmitting data). Therefore, the claims do not amount to significantly more than the abstract idea and the rejection is maintained.
Applicant’s arguments with respect to rejection of the claims under 35 USC 103 over Sowell in view of NPL U have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Objections
Claim 9 is objected to because of the following informalities:
“The system of claim [[8]] 1, wherein the multiple roles further comprise at least one of a plant manager role, an accountant role, a machine operator role, or a sales associate role.”
Appropriate correction is required.
Applicant is advised that should claim 10 be found allowable, claim 21 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-7, 9-17, and 19-22 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
In the instant case, claims 1-7, 9-10, and 21-22 are directed to a system, claims 11-17 are directed to a method, and claims 19-20 are directed to a non-transitory computer-readable medium. Therefore, these claims fall within the four statutory categories of invention.
Claim 11 recites: A method, comprising:
recording, by a system comprising a processor, an allocation of subscription tokens to an industrial customer, wherein the subscription tokens grant use of one or more industrial software products to the industrial customer;
in response to receiving a request, from a user associated with the industrial customer, to use an industrial software product, of the industrial software products, that has an associated subscription token cost:
determining, by the system, a current number of free subscription tokens, of the subscription tokens, that are available;
determining, by the system, a role of the user and a software access permission associated with the role based on customer rules that define multiple roles and respective software access permissions associated with the multiple roles, wherein the multiple roles comprise at least an electrical engineer role and a mechanical engineer role;
in response to determining that the current number of free subscription tokens is less than the subscription token cost or that the software access permission associated with the role prohibits access to the industrial software product, preventing, by the system, use of the industrial software product by the user;
in response to determining that the current number of free subscription tokens is equal to or greater than the subscription token cost associated with the industrial software product and that the software access permission associated with the role permits access to the industrial software product:
sending, by the system, an activation control that renders the industrial software product usable by the user;
deducting, by the system, the subscription token cost from the current number of free subscription tokens; and
in response to determining that the user has relinquished use of the industrial software product, incrementing, by the system, the current number of free subscription tokens by the subscription token cost.
(Additional elements emphasized in bold)
The above claim describes a process for recording an allocation of subscription tokens to an industrial customer, wherein the subscription tokens grant use of one or more services to the industrial customer; in response to receiving a request, from a user associated with the industrial customer, to use a service that has an associated subscription token cost: determining a current number of free subscription tokens, of the subscription tokens, that are available; determining a role associated with the user and an access permission associated with the role based on a references to customer rules that define multiple roles and respective access permissions associated with the multiple roles, wherein the multiple roles comprise at least an electrical engineer role and a mechanical engineer role; in response to determining that the current number of free subscription tokens is less than the subscription token cost or that the access permission associated with the role prohibits access to the service, preventing use of the service by the user; in response to determining that the current number of free subscription tokens is equal to or greater than the subscription token cost associated with the service and that the access permission associated with the role permits access to the service: activating use of the service by the user; deducting the subscription token cost from the current number of free subscription tokens; and in response to determining that the user has relinquished use of the service, incrementing the current number of free subscription tokens by the subscription token cost. Therefore, claim 11 is directed to the abstract idea of managing subscription services based on access permissions which is grouped within the “certain methods of organizing human activity” grouping of abstract ideas under the “commercial or legal interactions” sub-grouping (i.e. agreements in the form of contracts (“licenses”)) of abstract ideas in prong one of step 2A. Accordingly, the claims recite an abstract idea (See MPEP 2106.04).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A (See MPEP 2106.04), the additional elements of the claim such as system comprising a processor, industrial software product, software access permissions, and activation control merely uses a computer as a tool to perform an abstract idea. The use of industrial software product, software access permissions, and activation control does no more than generally link the abstract idea to a particular field of use (e.g. industrial factory access permissions) due to reciting such elements at no more than a high level of generality (e.g. the industrial software product is merely a digital substitute for a physical licensed product or subscription service and the software access permissions and activation control are merely digital substitutes for physical access permissions and control). Finally, the use of a processor/computer as a tool to implement the abstract idea does not integrate the abstract idea into a practical application because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B (See MPEP 2106.05), the additional elements of a system comprising a processor, industrial software product, software access permissions, and activation control product do not amount to significantly more than the abstract idea. As discussed above, taking the claim elements separately, the use of industrial software product, software access permissions, and activation control does no more than generally link the abstract idea to a particular field of use (e.g. industrial factory access permissions) due to reciting such elements at no more than a high level of generality (e.g. the industrial software product is merely a digital substitute for a physical licensed product or subscription service and the software access permissions and activation control are merely digital substitutes for physical access permissions and control). Finally, the use of a system comprising a processor does no more than use a computer/processor as a tool to implement and/or automate the abstract idea (i.e. “apply it”). Viewed as a whole, the combination of elements recited in the claims merely recites the concept of managing licensing of a subscription service/product using a computer. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)). Therefore, the claim is not patent eligible.
Dependent claims 12-17 further describe characteristics of data (e.g. types of software, licensing agreements, etc.) and the additional elements of cloud platform and local computing device do no more than continue to use computers as tools to implement and/or automate the abstract idea. Accordingly, the dependent claims do not include additional elements that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. Therefore, the dependent claims are also not patent eligible.
The same analysis pertaining to the abstract idea of managing subscription services holds true for claims 1-7, 9-10, and 19-22 as well, with the additional elements of memory and processor merely using a processor/computer as a tool to implement the abstract idea. Therefore, claims 1-7, 9-10, and 19-22 are also not patent eligible.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 22 is rejected 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 22 includes limitations directed to “the industrial device/industrial controller.” However, claim 1, from which claim 22 depends, is explicitly directed to “A system, comprising: a memory that stores executable components; and a processor, operatively coupled to the memory.” Therefore, as the industrial device/industrial controller is not a part of the system of claim 1, the scope of claim 22 is unclear (In re Zletz, 13 USPQ2d 1320 (Fed. Cir. 1989)).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-7, 9-17, and 19-22 are rejected under 35 U.S.C. 103 as being unpatentable over Sowell (US 20110191255 "Sowell") in view of "Token Licensing Concepts and Management" (NPL U) and King et al. (US 20110023123 “King”).
Regarding claims 1, 11, and 19, Sowell discloses: A system, method, and non-transitory computer-readable medium comprising: a memory that stores executable components; and a processor, operatively coupled to the memory, that executes the executable components, the executable components comprising:
a credit tracking component configured to record an allocation of subscription credits to an industrial customer, the subscription credits granting use of one or more industrial software products to the industrial customer (Fig. 5, Fig. 8, 0028, 0040, 0054, 0056, 0083);
and a software deployment component configured to, in response to receipt of a request, from a user associated with the industrial customer, to use an industrial software product, of the industrial software products, having an associated subscription credit cost (Fig. 5, Fig. 8, 0028, 0040, 0054, 0056, 0083): determine a current number of free subscription credits, of the subscription credits, that are available (Fig. 5, Fig. 8, 0054, 0056);
in response to determining that the current number of free subscription credits is equal to or greater than the subscription credit cost associated with the industrial software product...send an activation control that renders the industrial software product usable by the user (Fig. 5, Fig. 8, 0040, 0054, 0056, 0073-0074);
and in response to determining that the current number of free subscription credits is less than the subscription credit cost or that the software access permission associated with the role prohibits access to the industrial software product, prevent use of the industrial software product by the user (0039, 0054),
wherein the credit tracking component is further configured to deduct the subscription credit cost from the current number of free subscription credits in response to enablement of use of the industrial software product by the user (0040, 0073-0074).
Sowell does not disclose: tokens;
and to increment the current number of free subscription tokens by the subscription token cost in response to a determination that the user has relinquished use of the industrial software product.
However, in the same field of endeavor, NPL U discloses: tokens (Pgs. 3-4);
and to increment the current number of free subscription tokens by the subscription token cost in response to a determination that the user has relinquished use of the software product (Pgs. 3-4).
Pgs. 3-4 and Pg. 7 Fig. 4 of NPL U also disclose: a token tracking component configured to record an allocation of tokens to a customer, the tokens granting use of one or more software products to the customer (Pg. 4, “The IBM License Key Server automatically calculates the tokens being checked in and out by different products. Tokens are consumed and released when a product checks in or out licenses from the license server. The users are able to obtain a license as long as there are sufficient, unused tokens available for the entitled token products.”);
and a software deployment component configured to, in response to receipt of a request, from a user associated with the customer, to use an software product, of the software products, having an associated token cost: determine a current number of tokens, of the subscription tokens, that are available (“token pool”);
and in response to determining that the current number of subscription tokens is less than the subscription token cost or that the software access permission associated with the role prohibits access to the software product, prevent use of the software product by the user (Pg. 4, “The users are able to obtain a license as long as there are sufficient, unused tokens available for the entitled token products.”),
wherein the token tracking component is further configured to deduct the token cost from the current number of tokens in response to enablement of use of the software product by the user (Pg. 4, “The IBM License Key Server automatically calculates the tokens being checked in and out by different products. Tokens are consumed and released when a product checks in or out licenses from the license server...When someone stops using a product, the tokens return to the token pool and are available for someone else to use. For example: You have 720 total tokens to be used for IBM DOORS and IBM ClearCase; All 720 installed on the same license server. DOORS requires 10 tokens per user and ClearCase requires 5 tokens per user. In this example, your entitlement enables you to have any combination of users using DOORS and ClearCase at one time. This capability exists as long as you do not exceed 720 tokens.”).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify claims 1, 11, and 19 disclosed by Sowell by including tokens as disclosed by NPL U. One of ordinary skill in the art would have been motivated to make this modification as a simple substitution of one known element for another to obtain predictable results (KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007)).
Sowell in view of NPL U does not disclose: determine a role associated with the user and a software access permission associated with the role based on a reference to customer rules that define multiple roles and respective software access permissions associated with the multiple roles...
and in response to determining...that the software access permission associated with the role permits access to the software product: sending, by the system, an activation control that renders use of the software product usable by the user.
However, in the same field of endeavor, King discloses: determine a role associated with the user and a software access permission associated with the role based on a reference to customer rules that define multiple roles and respective software access permissions associated with the multiple roles (Fig. 2-5, 0024-0027)...
and in response to determining...that the software access permission associated with the role permits access to the software product: sending, by the system, an activation control that renders use of the software product usable by the user (Fig. 6, 0025-0027, 0032).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify claims 1, 11, and 19 disclosed by Sowell in view of NPL U by including determining user roles and software permissions associated with the roles before activating software as disclosed by King. One of ordinary skill in the art would have been motivated to make this modification to prevent users without special privileges from accessing more sensitive software resources (King 0025).
Sowell in view of NPL U and King does not expressly disclose: wherein the multiple roles comprise at least an electrical engineer role and a mechanical engineer role.
However, the difference between a role such as a manager and a role such as an electrical engineer or a mechanical engineer are only found in the non-functional descriptive material and are not functionally involved in the steps recited. The activation of the software contingent on a determination the user has permission would be performed the same regardless of the descriptive material since none of the steps explicitly interact therewith. Limitations that are not functionally interrelated with the useful acts, structure, or properties of the claimed invention carry little or no patentable weight. Thus, this descriptive material will not distinguish the claimed invention from the prior art in terms of patentability. See In re Ngai 367 F.3d 1336, 1339, 70 USPQ2d 1862 (Fed. Cir. 2004); In re Lowry, 32 USPQ2d 1031 (Fed. Cir. 1994); MPEP § 2111.05; Cf. In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 404 (Fed. Cir. 1983).
Therefore, it would also have been obvious to a person of ordinary skill in the art at the time of applicant' s invention to enable use of the software contingent on determination of any role having the necessary access rights, regardless of type of role, because such data does not functionally relate to the steps in the method claimed and because the subjective interpretation of the data does not patentably distinguish the claimed invention.
Regarding claims 2, 12, and 20, Sowell in view of NPL U and King discloses all limitations of claims 1, 11, and 19. Sowell further discloses: wherein the industrial software product is at least one of an industrial control program development application used to create executable control programs for industrial controllers, a human-machine interface (HMI) development application used to create visualization applications for execution on an HMI terminal, a device configuration application, an industrial analytic application, manufacturing execution system (MES) software, an enterprise resource planning (ERP) application, an industrial data historian application, industrial simulation software, industrial emulation software, or an industrial reporting application (0028, 0032-0033).
Regarding claims 3 and 13, Sowell in view of NPL U and King discloses all limitations of claims 1 and 11. Sowell further discloses: wherein the token tracking component is configured to add additional subscription tokens to the allocation of the subscription tokens in response to receipt of a confirmation that the industrial customer has purchased the additional subscription tokens under a licensing agreement between the industrial customer and a vendor of the industrial software product (0068, 0071-0074).
Regarding claims 4 and 14, Sowell in view of NPL U and King discloses all limitations of claims 1 and 11. Sowell further discloses: wherein the industrial software product is hosted by the system on a cloud platform or executes on a local computing device associated with the industrial customer (Fig. 5, Fig. 7-8, 0054, 0056, 0068-0072).
Regarding claims 5 and 15, Sowell in view of NPL U and King discloses all limitations of claims 1 and 11. Sowell further discloses: wherein different subscription token costs are associated with respective different industrial software products of the industrial software products (0062, 0064, 0067-0069).
Regarding claims 6 and 16, Sowell in view of NPL U and King discloses all limitations of claims 1 and 11. Sowell further discloses: wherein the current number of free subscription tokens is equal to a total number of the subscription tokens allotted to the industrial customer minus a sum of subscription token costs of instances of the industrial software products currently in use by users associated with the customers (0040, 0054, 0073-0076).
Regarding claims 7 and 17, Sowell in view of NPL U and King discloses all limitations of claims 6 and 16. Sowell further discloses: wherein the instances include at least one of instances of a same one of the industrial software products or instances of different ones of the industrial software products (0040, 0054, 0073-0076).
Regarding claim 9, Sowell in view of NPL U and King discloses all limitations of claim 1.
Sowell in view of NPL U and King does not expressly disclose: wherein the multiple roles further comprise at least one of a plant manager role, an accountant role, a machine operator role, or a sales associate role.
However, the difference between a role such as a manager and a role such as a plant manager, an accountant, a machine operator, or a sales associate are only found in the non-functional descriptive material and are not functionally involved in the steps recited. The activation of the software contingent on a determination the user has permission would be performed the same regardless of the descriptive material since none of the steps explicitly interact therewith. Limitations that are not functionally interrelated with the useful acts, structure, or properties of the claimed invention carry little or no patentable weight. Thus, this descriptive material will not distinguish the claimed invention from the prior art in terms of patentability. See In re Ngai 367 F.3d 1336, 1339, 70 USPQ2d 1862 (Fed. Cir. 2004); In re Lowry, 32 USPQ2d 1031 (Fed. Cir. 1994); MPEP § 2111.05; Cf. In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 404 (Fed. Cir. 1983).
Therefore, it would also have been obvious to a person of ordinary skill in the art at the time of applicant' s invention to enable use of the software contingent on determination of any role having the necessary access rights, regardless of the type of role, because such data does not functionally relate to the steps in the method claimed and because the subjective interpretation of the data does not patentably distinguish the claimed invention.
Regarding claims 10 and 21, Sowell in view of NPL U and King discloses all limitations of claim 1. Sowell further discloses: wherein the software deployment component is further configured to, in response to receipt of a request from the user to use a feature of the industrial software that is regulated by the subscription tokens and that has an associated feature-level subscription token cost, enable use of the feature in response to determining that the current number of free subscription tokens is equal to or greater than the feature-level subscription token cost, and the token tracking component is further configured to deduct the feature-level subscription token cost from the current number of free subscription tokens in response to enablement of the feature (0054, 0062, 0064, 0067-0069, 0073-0076).
Regarding claim 22, Sowell in view of NPL U and King discloses all limitations of claim 21. Sowell further discloses: wherein the industrial device is an industrial controller, and the feature of the industrial device that has the associated feature-level subscription token cost is one of an ability of the industrial controller to control axes of motion in a motion control system, a networking feature, utilization of expanded memory or processing capability, or utilization of expanded I/O capacity (Fig. 8, 0074-0075, 0079-0083).
The Examiner additionally notes that while claim 22 has been rejected under the prior art above, the claim recites intended use/intended result language outside the scope of the claimed invention and as such does not differentiate claims from the prior art. Applicant(s) are reminded that intended use and intended result language does not have patentable weight. MPEP 2114 (II) states: "A claim containing a 'recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus' if the prior art apparatus teaches all the structural limitations of the claim,” See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter, 1987); Texas Instruments Inc. v. International Trade Commission, 26 USPQ2d 1010 (Fed. Cir. 1993); Amazon.com Inc. v. Barnesandnoble.com Inc., 57 USPQ2d 1747 (CAFC 2001). ("A (whereby/wherein) clause that merely states the result of the limitations in the claim adds nothing to the patentability or substance of the claim"); Griffin v. Bertina, 62 USPQ2d 1431 (Fed. Cir. 2002).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAYLOR RAK whose telephone number is (571)270-1575. The examiner can normally be reached Monday-Friday 11:00-7:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, John W Hayes can be reached at (571)-272-6708. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/T.R./Examiner, Art Unit 3697
/JOHN W HAYES/Supervisory Patent Examiner, Art Unit 3697
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