Case 1:19-cv-11278-RGS Document 33-6 Filed 01/23/20 Page 1 of 13
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`Exhibit F
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`

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`Case 1:19-cv-11278-RGS Document 33-6 Filed 01/23/20 Page 2 of 13
`
`Attorney's Docket No. 5577-106DV
`
`if ;2///
`~-S---o/
`PATEN0·L .•
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`.
`
`In re Divisional of David E. Cox et al.
`~
`Serial No.: To Be Assigned (Divisional of SIN 09/211,52-9)
`Filed: Concurrently Herewith
`For: METHODS, SYSTEMS AND COMPUTER PROGRAM PRODUCTS FOR
`LICENSE USE MANAGEMENT ON A NETWORK
`
`BOX PATENT APPLICATlON
`Commissioner for Patents
`Washington, DC 20231
`
`April 10, 2001
`
`PRELIMINARY AMENDMENT
`
`__ L
`
`Dear Sirs:
`Please /nd the above-identified application as follows:
`
`IN THE SPECIFICATION:
`
`Please r~ce the title with the fol19wing new title:
`--METHODS, SYSTEMS AND COMPUTER PROGRAM PRODUCfS FOR
`
`LICENSE USE MANAGEMENT ON A NETWORK--
`
`Please r~e the first paragraph,on page 1 with the following:
`
`--This application is a divisional of Ap_plication Serial No. 09/211,529 filed
`
`~ I fl,_\-, rJO• I., J:) '2,'j I ,,i
`
`December 14, 1991 This a?plication is related to United States Patent Application
`
`No. 09/211,528 filed December 14, 1998 and entitled METHODS, SYSTEMS AND
`COMPUTER PROGRAM PRODUCTS FOR CENTRALIZED MANAGEMENT OF
`
`APPLICATION PROGRAMS ON A NETWORK, Attorney Docket Number 5577-
`
`130. This application is also related to United States Patent Application No.
`
`09/072,597 filed May 5, 1998 and entitled: Client-Server System for Maintaining a
`
`user Desktop Consistent with Server Application User Access Permissions which is
`
`incorporated herein by reference in its entirety.--
`
`>
`
`I/)
`' '
`_.,.L.1.-
`.
`!
`/
`
`Paychex_PT0_0000583
`
`

`

`Case 1:19-cv-11278-RGS Document 33-6 Filed 01/23/20 Page 3 of 13
`
`In re: Divisional of David E. Cox et al.
`Serial No.: To Be Assigned (Divisional of SIN 09/211,529)
`Filed: Concurrently Herewith
`Page2
`
`IN THE CLAil'Y!S:/
`
`Please cyiceI Claims 1-~d 2~ as these claims remain pending in the
`
`parent application as elected responsive to a restriction requirement.
`
`!
`!---
`
`Please a
`
`the following new claims:
`
`.;.
`A3 f:j
`
`~
`
`(New) A system according to Claim wherein the means for
`
`receiving includes means for receiving the request from an application launcher
`
`program associated with the selected one of the plurality of application programs and
`
`wherein the means for providing includes means for providing at least one of the
`
`unavailability and the availability indication to the application launcher program
`
`associated with the selected one of the plurality of application programs.
`q
`~
`}!7.
`(New) A system according to Claim~wherein the license
`management server is an on demand server associated with the client which provides
`
`an instance of the selected one of the application programs to the client for execution.
`
`\3
`\'\
`~ (New) A computer program product according to Claim_j(wherein ine
`computer readable program code means for receiving includes computer readable
`
`program code means for receiving the request from an application launcher program
`
`associated with the selected one of the plurality of application programs and wherein
`
`the computer readable program code means for providing includes computer readable
`
`program code means for providing at least one of the unavailability and the
`
`availability indication to the application launcher program associated with the selected
`
`one of the plurality of application programs.
`
`\J
`(New) A system according to Claim )s'wherein the license
`
`management server is an on demand server associated with the client which provide:;
`
`an instance of the selected one of the application programs to the client for execution.
`
`/".
`
`f
`
`;
`I
`
`~ .
`'
`
`Paychex_PT0_0000584
`
`

`

`Case 1:19-cv-11278-RGS Document 33-6 Filed 01/23/20 Page 4 of 13
`
`In rer Divisional of David E. Cox et al.
`Serial No.: To Be Assigned (Divisional of SIN 09/211,529)
`Filed: Concurrently Herewith
`Page3
`
`REMARKS
`
`The present divisional application is being filed to cover non-elected Claims
`
`19-22 and 25 from the pending parent application. The newly added dependent
`
`claims are system and computer program product claims substantially corresponding
`
`to method Claims 20-21.
`
`Favorable examination and allowance of the present application is respectfully
`
`K(tJTPr-
`Robert W. G:a~
`
`Registration No. 36,811
`
`requested.
`
`Myers Bigel Sibley & Sajovec
`PO Box 37428
`Raleigh NC 27627
`Telephone (919) 854-1400
`Facsimile (919) 854-1401
`
`CERTIFICATE OF EXPRESS MAILING
`
`"Express Mail" mailing label number EL733092012US
`Date of Deposit: April 10, 2001
`
`I hereby cenify that th is paper or fee is being deposited with the United States Postal Service "Express Mail Post
`Office 10 Addressee" service under 37 CFR 1.10 on the date indicated above and is addressed 10 Box P;itent
`
`1::J:lemmP!r/!iifx;;::_c 20231.
`
`Michele P. McMahan
`Date of Signature: April 10, 2001
`
`II-
`
`Paychex_PT0_0000585
`
`

`

`Case 1:19-cv-11278-RGS Document 33-6 Filed 01/23/20 Page 5 of 13
`
`In re: Divisional of David E. Cox et al.
`Serial No.: To Be Assigned (Divisional of SIN 09/211,529)
`Filed: Concurrently Herewith
`Page4
`
`VERSION WITH MARKJNGS TO SHOW CHANGES
`
`IN THE SPECIFICATION:
`
`Please replace the title with the following new title:
`
`--METHODS, SYSTEMS AND COMPUTER PROGRAM PRODUCTS FOR
`
`LICENSE USE MANAGEMENT [OF CONFIGURABLE APPLICATION
`
`PROGRAMS] ON A NETWORK--
`
`Please replace the first paragraph on page 1 with the following:
`
`This application is a divisional of Application Serial No. 09/211,529 filed
`
`December 14, 1998. This application is related to United States Patent Application
`
`No. 09/211,528 filed December 14, 1998 and entitled [the following application filed
`
`concurrently herewith:] METHODS, SYSTEMS AND COMPUTER PROGRAM
`
`PRODUCTS FOR CENTRALIZED MANAGEMENT OF APPLICATION
`
`PROGRAMS ON A NETWORK, Attorney Docket Number 5577-130. This
`
`application is also related to United States Patent Application No. 09/072,597 filed
`
`May 5, 1998 and entitled: Client-Server System for Maintaining a user Desktop
`
`Consistent with Server Application User Acce~rmissions which is incorporated
`
`herein by reference in its entirety.
`
`IN THE CLAIMS:
`Please cancel Claims 1-18 and 23-24 as these claims remain pending in the
`
`parent application as elected responsive to a restriction requirement.
`
`Please add the following new claims:
`
`26.
`
`(New) A system according to Claim 22 wherein the means for
`
`receiving includes means for receiving the request from an application launcher
`
`program associated with the selected one of the plurality of application programs ar,d
`
`wherein the means for providing includes means for providing at least one of the
`
`Paychex_PT0_0000586
`
`

`

`Case 1:19-cv-11278-RGS Document 33-6 Filed 01/23/20 Page 6 of 13
`
`In re: Divisional of David E. Cox et al.
`Serial No.: To Be Assigned (Divisional ofS/N 09/211 ,529)
`Filed: Concurrently Herewith
`Page 5
`
`unavailability and the availability indication to the application launcher program
`
`associated with the selected one of the plurality of application programs.
`
`27.
`
`(New) A system according to Claim 22 wherein the license
`
`management server is an on demand server associated with the client which provides
`
`an instance of the selected one of the application programs to the client for exc-cution.
`
`28.
`
`(New) A computer program product according to Claim 25 wherein the
`
`computer readable program code means for receiving includes computer readable
`
`program code means for receiving the request from an application launcher program
`
`associated with the selected one of the plurality of application programs and wherein
`
`the computer readable program code means for providing includes computer readable
`
`program code means for providing at least one of the unavailability and the
`
`availability indication to the application launcher program associated with the selected
`
`one of the plurality of application programs.
`
`29.
`
`(New) A system according to Claim 25 wherein the license
`
`management server is an on demand server associated with the client which provides
`
`an instance of the selected one of the application programs to the client for execution.
`
`END
`
`.,,,,
`!J___
`
`-1! .
`y J
`
`Paychex_PT0_0000587
`
`

`

`Case 1:19-cv-11278-RGS Document 33-6 Filed 01/23/20 Page 7 of 13
`
`JAN. 27. 2003 10:59AM
`
`MBS&S 919 354-1401
`
`NO. 0489
`
`P. 1
`
`RESPONSE UNDER37 C.F.R. 1.116 - EXPEDJTED
`PROCEDURE - EXAMINING GROUP 2155
`
`Attorney DockefNo. 5577-106DV
`
`PATENT
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re: David E. Cox et al.
`Serial No.: 09/829,854
`Filed: April 10, 2001
`
`Confirmation No.: 9817
`Group Art Unit: 2155
`Examiner: Jean, Frantz B.
`
`For'. METHODS, SYSTEMS ANO COMPUTER PROGRAM PRODUCTS FOR
`LICENSE USE MANAGEMENT ON A NETWORK
`
`Date: January 27, 2003
`
`*~le..
`
`(~xE,)
`L.tiJ
`l-2'1-<>3
`~~
`LtrJ
`1z.-\5....D3
`
`Box AF
`Commissioner of Patents
`Washington, DC 20231
`
`Sir:
`
`AMENDMENT AFTER FINAL
`
`This Amendment is responsive to the Official Action mailed November I, 2002.
`
`· Applicants only add new dependent claims in this amendment so a copy of the amended. portion
`of the claims that identifies the changes made to the claims is not required.
`
`t'
`
`e followin new claims:
`(New) The method ofClaimfe"wherein the at least one of a user identity based
`policy, an administrator policy override definition or a user policy ovenide definition comprises
`a user identity based policy associated with a group of users.
`
`~
`;.{
`
`~
`(New) The method of Claim% wherein the at least one ofa user identity based
`
`policy, an administrator policy ovenide definition or a user policy override definition defines a
`
`policy for managing at least one of a response time or a usage rate.
`
`k (New) The system of Claim ~vherein the at least one of a user identity based
`
`policy, an administrator policy override definition or a user policy override definition comprises
`
`a usey identity based policy associated with a group of users.
`
`Received from< 919 8541401 > al 1127/0311:02:43 AM [Eastern standard Time)
`
`/
`
`L ,,
`
`Paychex_PT0_0000639
`
`

`

`Case 1:19-cv-11278-RGS Document 33-6 Filed 01/23/20 Page 8 of 13
`
`JAN. 27. 2003 l 1: OOAM
`
`MSS&S 919 354- 1401
`
`NO. 0489
`
`P. 2
`
`In re: David E. Cox et al.
`Serial No.: 09/829,854
`Filing Date: 4/10/01
`Page2
`
`~
`(New) The system of Claim ji wherein the at least one of a user identity based
`,NJ.
`/v.
`policy, an administrator policy override definition or a user policy override definition defines a
`policy for managing at least one of a response time or a usage rate.
`
`\?;>
`(New) The computer program product of Claim;t:vhereln the at least one of a
`user identity based policy, an administrator policy override definition or a user policy override
`definition comprises a user identity based policy associated with a group of users.
`\4
`\'3
`)rt. (New) The computer program product ofClaimj( wherein the at least one of a
`user identity based policy, an administrator policy override definition or a user policy override
`definition defines a policy for managing at least one of a response time or a usage rate.
`
`Received from < 919 8541401 > at 112710311:02:43 AM ~astern Standard Time]
`
`Paychex_PT0_0000640
`
`

`

`Case 1:19-cv-11278-RGS Document 33-6 Filed 01/23/20 Page 9 of 13
`
`JAN. 27 2003 11 : OOAM
`
`MBS&S 919 854- 1401
`
`NO. 0489 P. 3
`
`In re: David E. Cox et al.
`Serial No.: 09/829,854
`Filing Date: 4/1 0~01
`Page 3
`
`REMARKS
`
`Applicants appreciate the thorough examination of the present application as evidenced
`by the Final Official Action of November l, 2002 (''Final Action"). All the pending cl.ims
`stand rejected under either 35 U.S.C. § 103 as being unpatentable over United States Patent No.
`5,671 ,412 to Chri~tiano (hereinafter ''Christiano") in view of United States Patent No. 6,021,438
`to Duvvoori et al. (hereinafter "Duvvoori") and United States Patent No. 5,204,897 to Wyman
`
`(''Wyman"). Applicants submit that the claims, as amended, are in condition for allowance for
`
`the reasons discussed below.
`
`Claims 19, 22. and 25 Are Patentable Over the Cited Reference
`Independent Claims 19, 22, and 25 stand rejected under 35 U.S.C. §103 as being
`
`unpatentable over Christiano in view ofDuwoori and Wyman. Applicants submit that the
`rejections should be withdrawn as the cited references do not disclose or suggest at leas! the
`follov.ing highlighted recitations of Claim 19:
`A method for management of license use for a network comprising
`
`19.
`the steps of:
`. n1aintaining license management policy information for a plurality of
`application programs at a license management server, the license management
`policy information including at least one of a user identity based policy, an
`administrator policy override definition or a user policy override definition;
`rec;eiving at the license management server a request for a license
`availability of a selected one of the plurality of application programs from a user
`at a client;
`determining the license availability for the selected one of the plurality of
`application programs for the user based on the maintained license management
`policy information; and
`providing an unavailability indication to the client responsive to the
`selection if the license availability indicates that a license is not available for tb~
`.!!fil or an availability indication if the licensed availability indicates that a ,license
`is available for the user; and
`wherein the receiving step includes the step of receiving the request
`from an application launcher program associated with the selected one of tite
`pluralitv of application programs and wherein the step of providing include,!
`the step of providjng at least one of the unavailability and the availabilitv
`indication to the application launcher program associated with the selected
`one of the plurality of application programs.
`·
`
`Received rrom < 919 8541401 > at112710311:02:43 AM [Eastern Standcrd Time}
`
`Paychex_PT0_0000641
`
`

`

`Case 1:19-cv-11278-RGS Document 33-6 Filed 01/23/20 Page 10 of 13
`
`JAN. 27. 200 3 \ \ : OOAM
`
`MSS&S 919 854- 1401
`
`NC. 0489
`
`P. 4
`
`ln re: David E. Cox et al.
`Serial No.: 09/829,854
`Filing Date: 4/10/01
`Page4
`
`The Final Action acknowledges that Christiano does not "teach or elaborate on an
`application launcher program." (Final Action, p. 4). However, the Final Action asserts that
`
`''Duvvoori discloses an application launcher program (see col. 10, lines 1-38 and col. 12 lines 38
`
`et seq)." (Final Action, p. 4). Applicants submit that Duvvoori contains no such disclosure.
`As described in the present applicatjon:
`Accordingly, as used herein, it is to be understood that the term
`"application program" generally refers to the code associated with the underlying
`program functions, for example, Lorus Notes or a terminal emulator program.
`However, it is to be understood that the application program will preferably be
`included as part of the application launcher which will further include the
`code associated with managing usage of configurable application programs
`on a network according to the teachings of the present invention. Further it is to
`be understood that, as used herein, the term "application launcher program" may
`refer to the entire program provided by a software vendor or to merely a portion
`thereof distributed to a client to perform particular operations. For example, the
`application launcher program distributed to initially populate the user desktop
`preferably does not include the code associated with the underlying application
`program and obtaining preferences which may only be distributed to the client
`later when execution of the application program is requested.
`*
`*
`*
`One further aspect of a managed application environment according to the
`present invention is the ability to provide for license use management. License
`use management involves controlling how many users can use a particular
`application. License use, according to the present invention, is managed by
`setting certain policies, such as the limit of the number of users, whether crossin~
`the limit of users is allowed or not and how users are counted (simultaneous
`number logged on, total number of clients that can use the application, and so on).
`For many applications, the license use policy is initially defined by the software
`designer for the application that may or may not allow these policies to be
`modified by a purchaser.
`
`*
`*
`*
`As with the control of the user preferences described herein, a software
`designer for' an application supported by managed application server system 22
`provides two separate programs for each application. The first is the application
`itself provided as an application launcher applet. The application launcher is
`configured to read a set of license policies, for example, by using the
`preference Application Program Interface (API) for the user that is
`requesting initiDtion of Dn instDoce of tbe application. The application
`launcher may then initiate appropriate calls to register the kind of license
`specified by the policy with server system 22 for centralized storage and
`management. .. As described previously, if any end-user customizable license
`policy information is authorized, the application launcher applet would further
`
`Received from< 919 &541401 > at 1127/0311:02:43 AM !Eastern standa1d Time]
`
`Paychex_PT0_0000642
`
`

`

`Case 1:19-cv-11278-RGS Document 33-6 Filed 01/23/20 Page 11 of 13
`
`JAN. 27. 2003 11: 0 JAM
`
`MBS&S 919 854- 1401
`
`NO. 0489-
`
`P. 5
`
`In re: David E. Cox et al.
`Serial No.: 09/829,854
`Filing Date: 4/10/01
`Page 5
`
`support a user interface for obtaining this information as described previous;y
`with respect to various user configurable preferences. Typically, no such
`interface for end users will be required for a license use management and no use,
`interface will be provided to modify a license policy. fnstead, license infonnaticn
`will be provided as read only information to the end user application !aW1cher.
`
`(Specification, p. 19, linel5 top. 21, line 7)(emphasis added).
`In contrast, Duvvoori describes either an agent process 66, 76, 96, I 73 at the client, that
`controls execution of programs resident on the clients 18, 20, 22, or a wrapper 44, 46, 25, 38,
`40, that may be at a remote server 10 or at the clients. (Duwoori, FIG. 1). The agent processes
`of Duvvoori are not application specific but, instead, provide a cross-application interface for a
`client to the file server computer 30. (Duvvoori, Col. 9, lines 19-62). The wrappers are
`application specific. (Duvvoori, Col. 7, line 54 to Col. 8, line 9). However, the wrapper for the
`
`server programs on the server 10 are resident on the server with the programs. Thus, Duvvoori
`
`does not disclose or suggest the present invention's application specific application launcher
`
`program, executing at a client to request an instance of an application, also requesting a license .
`from the license server. In other words, while the wrappers ofDuvvoori may request a iicense,
`they do not request a configurable instance of an application from a server for execution at the
`client as with the recited applicati:ln launcher programs of the present invention. Accordingly,
`
`Claim 1 and the claims that depend therefrom should be allowed for at least these reasons.
`Independent Claims 22 and 25 and the claims that depend therefrom should also be allowed
`
`based on the corresponding recitations therein.
`
`The cited references also appear to relate to management of licenses based on requesting
`clients or computers or applications, not based on requesting users. (Christiano, Col. 6, lines
`32-59 (to "computer systems"); Duvvoori, Col. 13, lines 43-65 (to "agents"); Wyman, Col. 6,
`
`lines 55-58 (to a "user node")). In other words, the managed licenses are managed by device
`
`location, not by user.
`
`In contrast, by associating license requests and grants with a logged in user as with the
`present invention, a user may, for example, mover between different computers while
`maintaining a license. Furthermore, as described with reference to the types of license policies
`associated with the application, the license management may be customized at a user level,
`
`Received from< 919 8)41401 > at 1127/0311:02:43AM ~astern standard TimeJ
`
`Paychex_PT0_0000643
`
`

`

`Case 1:19-cv-11278-RGS Document 33-6 Filed 01/23/20 Page 12 of 13
`
`JAN. 27 2003 11:01AM
`
`MBS&S 919 854- 140 1 - - - - · - - - - -110. 0489--1.P. 6,--- --
`
`In re: David E. Cox et al.
`Serial No.: 09/829,854
`Filing Date: 4/10/01
`Page6
`
`much like the configurable application instances requested by the application launcher
`
`programs. Accordingly, Claim l and the claims that depend therefrom should be allowed for at
`least these additiona.1 reasons. Independent. Claims 22 and 25 and the claims that depend
`
`therefrom should also be allowed based on the corresponding recitations therein.
`
`Th_e Dependent Claims Are Separately Patentable
`As discussed above, each of the dependent claims is patentable based on its depe.ndence
`on Independent Claims 19, 22, or 25. In addition, many of the dependent claims are separately
`patentable based on the recitations therein, which are not disclosed or suggested by the cited
`
`references. The reasons for such separate patentability are discussed in Applicants' previous
`response, which is incorporated herein by reference as if set forth in its entirety.
`
`The New Claims are Patentable
`
`The new claims are patentable at least based on their dependence on ones of the
`independent claims discussed above. These claims also further clarify the policies of the present
`invention. Accordingly, Applicants request entry of this amendment as the new claims are
`
`allowable and raise no new issues requiring a new search as they are at least patentable based on
`
`the patentability of the claims from which they depend.
`
`Response to Argum,ents Section of FinaJ Action
`
`Applicants note that the Response to Arguments section includes a discussion of the
`Franklin reference. (Official Action, p. 11). However, Applicants note that Franklin is m t
`relied on in any of the rejections. Accordingly, Applicants submit that these comments fail to
`support the present rejections.
`
`As to the comments on Cluistiano teaching a license management server that is an on(cid:173)
`
`demand server, Applicants submit these comments fail to appreciate the recitations of Clai.m 21.
`(Official Action, p. 11). Claim 21 does not m recite that the license management serveris an
`on demand server. Claim 21 ~ recites that the on-demand server "provides an instance of the
`
`selected one of the application programs to the client for execution." The portion of Christiano
`
`cited in the Official Action at p. 11 discusses checking out "licenses," not instances of th::
`
`C
`
`Received from< 919 S541401 > at 1127/0311:02:43 AM ~astern Standard Time}
`
`Paychex_PT0_0000644
`
`

`

`Case 1:19-cv-11278-RGS Document 33-6 Filed 01/23/20 Page 13 of 13
`
`JAN. 27. 2003 1 l: 02AM
`
`MBS&S 919 854-1401
`
`NO. 0489-.LP. 7 - - - -
`
`In re: David E. Cox et al.
`Serial No.: 091829,854
`Filing Date: 4/l 0/01
`Page 7
`
`application programs. Accordingly, Applicants submit that Claims 21, 27 and 29 are separately
`patentable for at least these reasons.
`
`Conclusion
`
`Applicants respectfully submit that, for the reasons discussed above, the references cited
`
`in the present rejections do not disclose or suggest the present invention as claimed.
`Accordingly, Applicants respectfully request entry oftbis amendment and allowance of all the
`
`pending claims and passing this application to issue.
`
`
`
`Respectfully su~m i ed,
`
`£!L
`
`Registration No. 36,81
`
`Customer Number:
`
`1111~111111~~1111111m11111m
`20792
`
`CERTIFICATE OF FACSIMILE
`I hereby certify that this correspondence is being sent by facsimile transmission to the Unite<l States Patent and
`k Office, Grotrp Art lJnit 21SS at (703) 746-7238 on January 27, 2003.
`Trad~
`
`~
`
`Carey Greg
`Date ofSigllarurc: January 27, 2003
`288925
`
`Received from< 919 &541401 > at 112710311:02:43 AM 1£astem S;andard TimeJ
`
`C
`
`Paychex_PT0_0000645
`
`