DETAILED ACTION
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 .
Status of Claims
This communication is responsive to the submission filed April 3, 2026.
Claims 1, 3, 5, 8, 11, 13, 15-16, and 18-19 are amended.
Claims 4, 6-7, 10, 14, 17, and 20 are canceled.
Claims 21-27 are new.
Claims 1-3, 5, 8-9, 11-13, 15-16, 18-19, and 21-27 are pending.
Response to Remarks
35 U.S.C. § 101
Applicant contends that the claims are directed towards patent eligible subject matter. First, Applicant contends that “send a license request to a licensing server” and “activate the first license” cannot be performed in the human mind. While Examiner agrees that such functions cannot be performed in the human mind, the non-final Office Action stated that the claims recited a combination of Mental Processes as well as Certain Methods of Organizing Human Activities. Here, these two specific limitations are examples of Certain Methods of Organizing Human Activities as they recite legal obligations because they recite sending a request for a license, i.e., a legally-binding contract, and activating the license, i.e., the legal requirements for executing the software are satisfied. Therefore, Applicant’s contention that such claim limitations do not recite abstract ideas is unpersuasive.
Applicant also contends that the newly amended subject matter of translating the extracted license features of the first license into a vendor-agnostic format that decouples license management on the first IED from the licensing server” is not an abstract idea. Examiner respectfully disagrees as the translating is recited at a sufficiently high level of generality that it may be practically performed in the human mind, i.e., a Mental Process. Therefore, Applicant’s contention is unpersuasive.
Accordingly, this ground of rejection is maintained.
35 U.S.C. § 103
Applicant’s arguments with respect to claim(s) 1-3, 5, 8-9, 11-13, 15-16, 18-19, and 21-27 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 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 1-3, 5, 8-9, 11-13, 15-16, 18-19, and 21-27 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract ideas without significantly more. There are two criteria for subject matter eligibility. The first is that the claimed invention must be to one of the four statutory categories, i.e., a process, machine, manufacture, or composition of matter. See MPEP 2106(I). Second, the claimed invention also must qualify as patent-eligible subject matter, i.e., the claim must not be directed to a judicial exception unless the claim as a whole includes additional limitations amounting to significantly more than the exception. See MPEP 2106(I). Here, claims 1-3, 5, 8-9, and 21-24 are directed towards a machine, claims 11-13, 15-16, 18, and 25-26 are directed towards a machine, and claims 19 and 27 are directed towards a process. Therefore, the analysis proceeds to determine whether the claims recite abstract ideas.
Per Claim 1: Claim 1, as a whole, is directed towards the abstract idea of obtaining and activating a license. In particular, the claim recites identifying activation codes and signatures for a device. The claim then sends a license request that includes an activation code and a signature to a licensing entity. The machine identifies a response received and validates and activates a license for the device. The claim then extracts license features from the license and translates it into a different format. The claim then sends the extracted license features in the translated format to the device. In other words, the claim recites Certain Methods of Organizing Human Activities recognized as reciting abstract ideas. More specifically, the following underlined claim elements recite abstract ideas while the non-underlined claim elements recite additional elements according to MPEP 2106.04(a).
memory coupled to processing circuitry, wherein the processing circuitry is configured to:
identify activation codes for IEDs of a power system;
identify hardware signatures of the IEDs;
send a first license request file to a licensing server, the first license request file comprising a first activation code of the activation codes and a first hardware signature of a first IED of the IEDs;
identify a response file received based on the first license request file;
validate a first license for the first IED based on the response file;
activate the first license for the first IED based on the response file;
extract license features of the first license;
translate the extracted license features of the first license into a vendor-agnostic format that decouples license management on the first IED from the licensing server; and
send the extracted license features to the first IED in the vendor-agnostic format to enable independent management of the first license at the first IED.
Because the claim recites abstract ideas, the analysis proceeds to determine whether the claim recites additional elements that recite a practical application of the abstract ideas. According to MPEP 2106.04(d), additional elements that recite an instruction to apply the abstract ideas using a computer, that recite insignificant extra-solution activities, or that generally link the use of the abstract ideas to a particular technological environment or field of use are not indicative of a practical application. Here, the claim recites the additional elements of memory, processing circuitry, licensing server, and IED. However, these additional elements serve to apply the abstract idea using computers. In other words, they amount to an instruction to apply the abstract ideas using computers. Therefore, the claim as a whole fails to recite a practical application of the abstract ideas.
The analysis then proceeds to determine whether the additional elements, when considered individually and in combination, recite significantly more than the abstract ideas. According to MPEP 2106.05, additional elements that recite an instruction to apply the abstract ideas using a computer, that recite insignificant extra-solution activities, that generally link the use of the abstract ideas to a particular technological environment or field of use, or that recite well-understood, routine, and conventional activities are not indicative of reciting significantly more than the abstract ideas. Claim elements previously considered to recite insignificant extra-solution activities are reevaluated at this step to determine whether they recite well-understood, routine, and conventional activities. Such findings must be supported by the evidentiary requirements set forth in the Berkheimer Memo. Here, the claim recites the additional elements of memory, processing circuitry, licensing server, and IED. However, these additional elements serve to apply the abstract idea using computers. In other words, they amount to an instruction to apply the abstract ideas using computers. Therefore, the additional claim elements, when considered individually and in combination, fail to recite significantly more than the abstract ideas.
Accordingly, claim 1 is rejected as being directed towards patent ineligible subject matter.
Per Claim 11: Claim 11 recites abstract ideas similar to those discussed above in connection with claim 1. Claim 11 also recites the following additional elements:
IEDs of a power system, the IEDs comprising one or more licensed applications without license vendor code embedded into the IEDs;
a web portal;
a licensing server storing licenses for the one or more licensed applications; and
a middleware device comprising memory coupled to processing circuitry, wherein the processing circuitry is configured to:
However, these additional elements also fail to recite a practical application of the abstract ideas or significantly more than the abstract ideas. Specifically, these additional elements are tools that are being used to implement the abstract ideas. In other words, these additional elements amount to an instruction to apply the abstract ideas using computers. Therefore, these additional elements fail to recite a practical application or significantly more than the abstract ideas.
Accordingly, claim 11 is rejected as being directed towards patent ineligible subject matter.
Per Claim 19: Claim 19 recites abstract ideas similar to those discussed above in connection with claim 1 and does so in the context of a process. However, claim 19 fails to recite any additional elements not already considered in connection with claim 1. Therefore, claim 19 also fails to recite a practical application or significantly more than the abstract ideas.
Accordingly, claim 19 is rejected as being directed towards patent ineligible subject matter.
Per Claims 2-10, 12-18, and 20: Claims 2-10, 12-18, and 20 have also been analyzed for subject matter eligibility. However, these claims also fail to recite patent eligible subject matter for the following reasons:
Claims 2 and 12 recite that the claimed device and the electronic device are on the same network, which amounts to an instruction to apply the abstract ideas using computers.
Claims 3 and 13 recite the abstract ideas identified above in connection with the independent claims but for a second license request for a second device. Therefore, these claims also fail to recite patent eligible subject matter.
Claims 5 and 15 recite the abstract idea of sending a request for the activation codes, which is a Certain Method of Organizing Human Activities.
Claim 16 recites the abstract idea of sending the request for the activation code to the first device, which is a Certain Method of Organizing Human Activities.
Claims 8 and 18 recite the abstract idea of sending a request for a hardware signature to the first device and receiving the hardware signature from the first device, which is a Certain Method of Organizing Human Activities.
Claim 9 recites the abstract idea of establishing a connection to a licensing entity, which is a Certain Method of Organizing Human Activities.
Claim 21 recites an outcome of the vendor-agnostic format. The recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words "apply it". See MPEP 2106.05(f).
Claim 22 recites an outcome of the vendor-agnostic format. The recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words "apply it". See MPEP 2106.05(f).
Claim 23 recites that the claimed machine is a digital twin of the licensed device, which amounts to an instruction to apply the abstract ideas using computers.
Claim 24 recites an outcome of the vendor-agnostic format. The recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words "apply it". See MPEP 2106.05(f).
Claim 25 recites an outcome of the vendor-agnostic format. The recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words "apply it". See MPEP 2106.05(f).
Claim 26 recites an outcome of the vendor-agnostic format. The recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words "apply it". See MPEP 2106.05(f).
Claim 27 recites an outcome of the vendor-agnostic format. The recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words "apply it". See MPEP 2106.05(f).
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.
Claim(s) 1-3, 9, 11-13, 19, 21-22, and 24-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Pub. No. 2014/0283133 to Rodriguez et al. in view of U.S. Patent Pub. No. 2020/0285716 to Punathil et al.
Per Claim 1: Rodriguez discloses:
A middleware device for managing licenses to applications on intelligent electronic devices (IEDs) for power system equipment, the middleware device comprising memory coupled to processing circuitry, wherein the processing circuitry is configured to: (see Rodriguez at ¶ 34: Remote software enabling system 300 includes communication interface 311, processing system 312, memory 313, and user interface 314.)
identify activation codes for IEDs of a power system; (see Rodriguez at ¶ 17: A request and/or code 108 may be sent to licensing system 110 requesting an activation code to enable the dormant software. Request 108 may be generated by the ICS 140 and/or programming system 130 and transmitted via Internet, or other means, including device 120.)
identify hardware signatures of the IEDs; (see Rodriguez at ¶ 18: Request 108 may also include other information about the system including type and number of ICSs 140, type and number of industrial devices 141, customer, application, integrator, original manufacturer, original programmer, system characteristics, hardware component IDs, a code which includes information regarding the above, etc.)
send a first license request file to a licensing server, the first license request file comprising a first activation code of the activation codes and a first hardware signature of a first IED of the IEDs; (see Rodriguez at ¶¶ 17-18: A request and/or code 108 may be sent to licensing system 110 requesting an activation code to enable the dormant software. Request 108 may be generated by the ICS 140 and/or programming system 130 and transmitted via Internet, or other means, including device 120. Request 108 may also include other information about the system including type and number of ICSs 140, type and number of industrial devices 141, customer, application, integrator, original manufacturer, original programmer, system characteristics, hardware component IDs, a code which includes information regarding the above, etc.)
identify a response file received based on the first license request file; (see Rodriguez at ¶ 20: The activation code may then be entered or otherwise transferred 125 to programming system 130 and/or ICS 140.)
validate a first license for the first IED based on the response file; (see Rodriguez at ¶ 20: The activation code may then be authenticated at programming system 130 and/or ICS 140, and based on a positive authentication, the dormant software may be enable to allow programming or other changes to ICS 140.)
activate the first license for the first IED based on the response file; (see Rodriguez at ¶ 20: The activation code may then be authenticated at programming system 130 and/or ICS 140, and based on a positive authentication, the dormant software may be enable to allow programming or other changes to ICS 140.)
send the [[extracted]] license features to the first IED [[in the vendor-agnostic format]] to enable independent management of the first license at the first IED. (Examiner’s Note: the claim limitation “to enable independent management of the first license at the first IED” has been considered and determined to recite a desired result of sending the extracted license features to the first IED. Therefore, it fails to distinguish over the prior art. However, for compact prosecution purposes, the following citation is provided: see Rodriguez at ¶ 33: Alternatively, the activation code may be passed on to the ICS 140 for authentication either by the user or the programming computer 230, and software on ICS 140 may be authenticated and enabled.)
However, Rodriguez fails to disclose but Punathil, an analogous art of licensing, discloses:
extract license features of the first license; (see Punathil at ¶ 64: The cognitive remote services 110 of the endpoint 57 of the cloud computing environment 58 understands natural language text, is capable of translating licensing text into a normalized language, such as English, from a variety of locales, and is capable of digesting the input text to extract words, phrases, sentences and paragraphs that contain usage restrictions on the licensed content.)
translate the extracted license features of the first license into a vendor-agnostic format that decouples license management on the first IED from the licensing server; and (see Punathil at ¶ 64: The cognitive remote services 110 of the endpoint 57 of the cloud computing environment 58 understands natural language text, is capable of translating licensing text into a normalized language, such as English, from a variety of locales, and is capable of digesting the input text to extract words, phrases, sentences and paragraphs that contain usage restrictions on the licensed content.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Rodriguez so that the license terms are translated into a normalized language to enable end users of the licensed end devices to understand the license terms.
Per Claim 11: Claim 11 recites subject matter similar to that recited in independent claim 1. Claim 11 recites the following additional elements which Rodriguez discloses:
A system for managing licenses to applications on intelligent electronic devices (IEDs) for power system equipment, the system comprising: (see Rodriguez at Abstract: Systems, methods, and software for enabling software for industrial automation systems and equipment are provided herein.)
IEDs of a power system, the IEDs configured to operate without license vendor code embedded into the IEDs; (see Rodriguez at ¶ 15: Industrial device 141 may be installed in an industrial plant or facility. The construction, design, and programming of ICS 140 and industrial device 141 may have been accomplished in another facility away from the industrial site where the equipment is installed, such as an integration site.)
a licensing server storing licenses for one or more licensed applications; and (see Rodriguez at ¶ 14: Remote software enabling environment 100 includes licensing and/or activation system 110, programming or configuration system 130, industrial control system (ICS) 140, industrial device 141, and another device 120.)
a middleware device comprising memory coupled to processing circuitry, wherein the processing circuitry is configured to: (see Rodriguez at ¶ 14: Remote software enabling environment 100 includes licensing and/or activation system 110, programming or configuration system 130, industrial control system (ICS) 140, industrial device 141, and another device 120.)
Per Claim 19: Claim 19 recites subject matter similar to that discussed above in connection with claim 1 and does so in the context of a method which Rodriguez discloses (see Abstract: Systems, methods, and software for enabling software for industrial automation systems and equipment are provided herein.)
Per Claims 2 and 12: The combination of Rodriguez and Punathil discloses the subject matter of claims 1 and 11, from which claims 2 and 12 depend, respectively. Rodriguez further discloses:
wherein the middleware device is an IED configurator tool (ICT), and wherein the middleware device and the first IED are in a secure network. (see Rodriguez at ¶ 17: Programming software may be installed but dormant, on ICS 140 and/or programming system 130, which may be capable of changing the programming of ICS 140 and/or programming system 130. See also ¶ 40: Referring back to FIG. 3, communication interface 311 may include communication connections and equipment that allows for communication with external systems and devices. Examples of communication interface 311 include network interface cards, wired interfaces, wireless interfaces, transceivers, antennas, power amplifiers, RF circuitry, optical networking equipment, and other present or future communication circuitry.)
Per Claims 3 and 13: The combination of Rodriguez and Punathil discloses the subject matter of claims 1 and 11, from which claims 3 and 13 depend, respectively. Rodriguez further discloses:
send, to the licensing server, a second license request comprising a second activation code of the activation codes and a second hardware signature of a second IED of the IEDs; (see Rodriguez at ¶¶ 17-18: A request and/or code 108 may be sent to licensing system 110 requesting an activation code to enable the dormant software. Request 108 may be generated by the ICS 140 and/or programming system 130 and transmitted via Internet, or other means, including device 120. Request 108 may also include other information about the system including type and number of ICSs 140, type and number of industrial devices 141, customer, application, integrator, original manufacturer, original programmer, system characteristics, hardware component IDs, a code which includes information regarding the above, etc.)
identify a second response file received based on the second license request; (see Rodriguez at ¶ 20: The activation code may then be entered or otherwise transferred 125 to programming system 130 and/or ICS 140.)
validate a second license for the second IED based on receiving the second response file; (see Rodriguez at ¶ 20: The activation code may then be authenticated at programming system 130 and/or ICS 140, and based on a positive authentication, the dormant software may be enable to allow programming or other changes to ICS 140.)
activate the second license for the second IED based on the response file; (see Rodriguez at ¶ 20: The activation code may then be authenticated at programming system 130 and/or ICS 140, and based on a positive authentication, the dormant software may be enable to allow programming or other changes to ICS 140.)
send the [[extracted]] features of the second license to the second IED to enable independent management of the second license at the second IED. (Examiner’s Note: the claim limitation “to enable independent management of the first license at the first IED” has been considered and determined to recite a desired result of sending the extracted license features to the first IED. Therefore, it fails to distinguish over the prior art. However, for compact prosecution purposes, the following citation is provided: see Rodriguez at ¶ 33: Alternatively, the activation code may be passed on to the ICS 140 for authentication either by the user or the programming computer 230, and software on ICS 140 may be authenticated and enabled.)
However, Rodriguez fails to disclose but Punathil discloses:
extract license features of the second license; (see Punathil at ¶ 64: The cognitive remote services 110 of the endpoint 57 of the cloud computing environment 58 understands natural language text, is capable of translating licensing text into a normalized language, such as English, from a variety of locales, and is capable of digesting the input text to extract words, phrases, sentences and paragraphs that contain usage restrictions on the licensed content.)
translate the extracted license features of the second license into the vendor- agnostic format that decouples license management on the first IED and on the second IED from the licensing server; and (see Punathil at ¶ 64: The cognitive remote services 110 of the endpoint 57 of the cloud computing environment 58 understands natural language text, is capable of translating licensing text into a normalized language, such as English, from a variety of locales, and is capable of digesting the input text to extract words, phrases, sentences and paragraphs that contain usage restrictions on the licensed content.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Rodriguez so that the license terms are translated into a normalized language to enable end users of the licensed end devices to understand the license terms.
Per Claim 9: The combination of Rodriguez and Punathil discloses the subject matter of claim 1, from which claim 9 depends. Rodriguez further discloses:
wherein the processing circuitry is further configured to establish a connection with a licensing server offline to retrieve license information associated with the first license. (see Rodriguez at ¶ 19: In this example, licensing and/or activation system 110 and programming system 130 may not be communicatively linked, such as by the Internet or other system. However, licensing system 110 and device 120 may be communicatively linked via the Internet or other communication system. The code may be communicated to other device 120 via email, text message, short message service, extended message service, multimedia message service, enhanced message service, test message service, and/or via a mobile or other telephone, and/or any other method or system, and/or combinations thereof.)
Per Claim 21: The combination of Rodriguez and Punathil discloses the subject matter of claim 1, from which claim 21 depends. However, Rodriguez fails to disclose but Punathil discloses:
wherein the vendor-agnostic format eliminates embedding of license vendor code in the first IED. (Examiner’s Note: this claim limitation has been considered and determined to recite a desired result of the vendor-agnostic format. Therefore, it fails to distinguish over the prior art. However, for compact prosecution purposes, the following citation is provided: see Punathil at ¶ 64: The cognitive remote services 110 of the endpoint 57 of the cloud computing environment 58 understands natural language text, is capable of translating licensing text into a normalized language, such as English, from a variety of locales, and is capable of digesting the input text to extract words, phrases, sentences and paragraphs that contain usage restrictions on the licensed content.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Rodriguez so that the license terms are translated into a normalized language to enable end users of the licensed end devices to understand the license terms.
Per Claim 22: The combination of Rodriguez and Punathil discloses the subject matter of claim 21, from which claim 22 depends. However, Rodriguez fails to disclose but Punathil discloses:
wherein the vendor-agnostic format eliminates updating of firmware in the first IED responsive to a modification of the first license in the licensing server. (Examiner’s Note: this claim limitation has been considered and determined to recite a desired result of the vendor-agnostic format. Therefore, it fails to distinguish over the prior art. However, for compact prosecution purposes, the following citation is provided: see Punathil at ¶ 64: The cognitive remote services 110 of the endpoint 57 of the cloud computing environment 58 understands natural language text, is capable of translating licensing text into a normalized language, such as English, from a variety of locales, and is capable of digesting the input text to extract words, phrases, sentences and paragraphs that contain usage restrictions on the licensed content.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Rodriguez so that the license terms are translated into a normalized language to enable end users of the licensed end devices to understand the license terms.
Per Claim 24: The combination of Rodriguez and Punathil discloses the subject matter of claim 1, from which claim 24 depends. Rodriguez further discloses:
wherein the first license is associated with a first vendor, and (see Rodriguez at ¶ 3: Prior to installation and active service of many of these industrial automation devices and systems, companies may design, program, and build the machine at a remote location from the industrial site where the system is to be installed and operate. The controls may be programmed and acceptance tested at the remote location prior to installation.)
However, Rodriguez fails to disclose but Punathil discloses:
wherein the vendor-agnostic format eliminates updating of vendor-specific software in the first IED responsive to a vendor change from the first vendor to a second vendor. (Examiner’s Note: this claim limitation has been considered and determined to recite a desired result of the vendor-agnostic format. Therefore, it fails to distinguish over the prior art. However, for compact prosecution purposes, the following citation is provided: see Punathil at ¶ 64: The cognitive remote services 110 of the endpoint 57 of the cloud computing environment 58 understands natural language text, is capable of translating licensing text into a normalized language, such as English, from a variety of locales, and is capable of digesting the input text to extract words, phrases, sentences and paragraphs that contain usage restrictions on the licensed content.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Rodriguez so that the license terms are translated into a normalized language to enable end users of the licensed end devices to understand the license terms.
Per Claim 25: The combination of Rodriguez and Punathil discloses the subject matter of claim 11, from which claim 25 depends. Claim 25 recites the subject matter of claims 21 and 22, discussed above, and is rejected for similar reasons.
Claim(s) 5 and 15-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rodriguez and Punathil as applied to claims 1 and 11 above, and further in view of U.S. Patent Pub. No. 2005/0192099 to Nguyen et al.
Per Claims 5 and 15: The combination of Rodriguez and Punathil discloses the subject matter of claims 1 and 11, from which claims 5 and 15 depend, respectively. However, the combination of Rodriguez and Punathil fails to disclose but Nguyen, an analogous art of licensing, discloses:
send, to one of the first IED or the licensing server, a request for the activation codes, (see Nguyen at ¶ 25: The master gaming controller may be further designed or configured to request a product activation code from a remote gaming device for the first game software module.)
wherein the one of the first IED or the licensing server provides an activation response based on the request for the activation codes. (see Nguyen at ¶ 25: The master gaming controller may be further designed or configured to request a product activation code from a remote gaming device for the first game software module.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Rodriguez so that an activation code is requested using the techniques disclosed in Nguyen. One of ordinary skill in the art would have been motivated to do so to request data needed for license activation.
Per Claim 16: The combination of Rodriguez, Punathil, and Nguyen discloses the subject matter of claim 15, from which claim 16 depends. However, the combination Rodriguez and Punathil fails to disclose but Nguyen discloses:
wherein the request for the activation codes is sent to one of the first IED or the licensing server. (see Nguyen at ¶ 25: The master gaming controller may be further designed or configured to request a product activation code from a remote gaming device for the first game software module.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Rodriguez so that an activation code is requested using the techniques disclosed in Nguyen. One of ordinary skill in the art would have been motivated to do so to request data needed for license activation.
Claim(s) 8 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rodriguez and Punathil as applied to claims 1 and 11 above, and further in view of U.S. Patent Pub. No. 2006/0053080 to Edmonson et al.
Per Claims 8 and 18: The combination of Rodriguez and Punathil discloses the subject matter of claims 1 and 11, from which claims 8 and 18 depend, respectively. However, the combination of Rodriguez and Punathil fails to disclose but Edmonson, an analogous art of licensing, discloses:
send a request for the first hardware signature to the first IED; and (see Edmonson at ¶ 111: In response, the user device 1005 requests 1035 a device ID from the secondary device 1010.)
receive the first hardware signature from the first IED based on the request for the first hardware signature. (see Edmonson at ¶ 111: The secondary device responds 1040 with its device ID.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Rodriguez so that the hardware ID is requested using the techniques disclosed in Edmonson. One of ordinary skill in the art would have been motivated to do so to ensure all data necessary for license activation is collected.
Claim(s) 23 and 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Rodriguez and Punathil as applied to claims 21 and 11 above, and further in view of U.S. Patent Pub. No. 2025/0341827 to Hatfield et al.
Per Claim 23: The combination of Rodriguez and Punathil discloses the subject matter of claim 21, from which claim 23 depends. However, the combination of Rodriguez and Punathil fail to disclose but Hatfield, an analogous art of digital twins, discloses:
wherein the middleware device is operative as an IED digital twin of the first license. (see Hatfield at ¶ 53: Embodiments of the digital twin library 2121 can store one or more digital twin asset file 2123 as shown in FIG. 1. The one or more digital twin asset file 2123 can include a digitized contract or agreement, agreed upon between the buyer (or licensee) of the one or more physical asset 152 and the manufacturer, seller or licensor providing the one or more physical asset 152.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Rodriguez so that the programming system functions as a digital twin of the industrial device using the techniques disclosed in Hatfield. One of ordinary skill in the art would have been motivated to do so to predict the behavior of the industrial device before deploying the license to the industrial device.
Per Claim 26: The combination of Rodriguez and Punathil discloses the subject matter of claim 11, from which claim 26 depends. Rodriguez further discloses:
wherein the first license is associated with a first vendor (see Rodriguez at ¶ 3: Prior to installation and active service of many of these industrial automation devices and systems, companies may design, program, and build the machine at a remote location from the industrial site where the system is to be installed and operate. The controls may be programmed and acceptance tested at the remote location prior to installation.)
However, Rodriguez fails to disclose but Punathil discloses:
wherein the vendor-agnostic format eliminates updating of vendor- specific software in the first IED responsive to a vendor change from the first vendor to a second vendor. (Examiner’s Note: this claim limitation has been considered and determined to recite a desired result of the vendor-agnostic format. Therefore, it fails to distinguish over the prior art. However, for compact prosecution purposes, the following citation is provided: see Punathil at ¶ 64: The cognitive remote services 110 of the endpoint 57 of the cloud computing environment 58 understands natural language text, is capable of translating licensing text into a normalized language, such as English, from a variety of locales, and is capable of digesting the input text to extract words, phrases, sentences and paragraphs that contain usage restrictions on the licensed content.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Rodriguez so that the license terms are translated into a normalized language to enable end users of the licensed end devices to understand the license terms.
However, the combination of Rodriguez and Punathil fails to disclose but Hatfield discloses:
wherein the middleware device is operative as an IED digital twin of the first license (see Hatfield at ¶ 53: Embodiments of the digital twin library 2121 can store one or more digital twin asset file 2123 as shown in FIG. 1. The one or more digital twin asset file 2123 can include a digitized contract or agreement, agreed upon between the buyer (or licensee) of the one or more physical asset 152 and the manufacturer, seller or licensor providing the one or more physical asset 152.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Rodriguez so that the programming system functions as a digital twin of the industrial device using the techniques disclosed in Hatfield. One of ordinary skill in the art would have been motivated to do so to predict the behavior of the industrial device before deploying the license to the industrial device.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
U.S. Patent Pub. No. 2018/0218466 discloses methods and systems for the licensing of services associated with IoT devices that are under rental by users and/or that are shared between users. A comprehensive user-based licensing system connects services, users, and IoT devices with respect to licensing based on the particular context in which a device is being rented, one or more capabilities of the device being rented, availability of services for the particular device, and/or one or more characteristics of the user who is renting the device. The licensing system enables a user who is renting an IoT device to purchase one or more services associated with the device in conjunction with the rental.
U.S. Patent Pub. No. 2020/0410068 discloses an internet of things (IoT) device, a database, and a license manager. The database may include one or more sets of authorized licenses, each set of authorized licenses associated with a respective vendor software. The license manager may be in communication with the IoT device and the database, and further include a processor and a non-transitory computer readable medium comprising instructions executable by the processor. The license manager may be configured to receive a request to reserve a license for a first vendor software, determine an availability of the license associated with the first vendor software, register a unique identifier of the IoT device in association with the license, and grant the license to the IoT device.
U.S. Patent Pub. No. 2010/0293591 discloses a system and method for performing program-related operations over a network via a web browser. A network connection is established between a server computer and a client computer over a network. A universal resource identifier (URI) is sent from the client computer to the server computer over the network, where the URI indicates a program, e.g., a graphical program (GP), or at least a portion of a graphical program interactive development environment (GPIDE), e.g., a graphical program editor, an execution engine, a static or dynamic analyzer, and/or compiler. The at least a portion of the GPIDE is received from the server computer over the network in response to the URI, and executed in a web browser of the client computer to perform some specified functionality with respect to the GP.
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 NILESH B KHATRI whose telephone number is (571)270-7083. The examiner can normally be reached 8:30 AM - 5:30 PM Monday-Friday, alternating Fridays off.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Neha Patel can be reached at (571) 270-1492. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/NILESH B KHATRI/Primary Examiner, Art Unit 3699
Prosecution Insights