Case 1:19-cv-11278-RGS Document 34-9 Filed 01/23/20 Page 1 of 8
`Case 1:19-cv-11278—RGS Document 34-9 Filed 01/23/20 Page 1 of 8
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`EXHIBIT 1
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`EXHIBIT 1
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`AttorneyDocketNo. 5577—130
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`ECLIVEE
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`4W 51199
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`Case 1:19-cv-11278-RGS Document 34-9 Filed 01/23/20 Page 2 of 8
`Case 14i9—ev-11278—RGS Document 34-9 Filed 01/23/20 Page 12 of 8
`was
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`JAN u I 2932 E
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`IN THE UNITED srAt‘EsmtnENT AND TRADEMARK OFFICE
`.
`In re: Cox §t al.
`,
`Group Art Unit: 2155
`Serial No.: 09/211,528
`Examiner: Backer, F.
`Filed: December 14, 1998
`For: METHODS, SYSTEMS AND COMPUTER PROGRAM PRODUCTS FOR
`CENTRALIZED MANAGEMENT OF APPLICATION PROGRAMS ON A
`NETWORK
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`JAN 1 1 2002
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`BOX NON-FEE AMENDMENT
`Commissioner for Patents
`
`Washington, DC 20231
`
`Sir:
`
`October 23, 2001
`
`AMENDMENT
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`This Response is submitted to respond to the Official Action (”Action") mailed
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`August 13, 2001.
`
`REMARKS
`
`Applicants appreciate the thorough examination of the present application as
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`evidenced by the Action. All the pending claims stand rejected under 35 U.S.C. § 103 as
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`being unpatentable over United States Patent No. 5,708,709 to. Rose ("Rose") in view of
`United States Patent No. 6,182,142 to Win et al. ("Win"). Applicants respectfully submit,
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`I
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`however, that the claims are in condition for allowance, which is respectfully requested.
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`In
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`particular, the cited references fail to teach or suggest, alone or in combination, establishing a
`"user desktop interface at the client associated with the user" where the user associated
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`desktop displays regions associated with "a plurality of application programs at the server
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`for which the user is authorized" as recited, for example, in Claim 1.
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`The Present Invention:
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`The present invention provides methods, systems and computer program products for
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`management of applicatiOn programs on a network including a server supporting client
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`stations. The server provides applications on-demand to a user logging in to a client
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`supported by the server. Mobility is provided to the user and hardware portability is provided
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`by establishing a user desktop interface reSponsive to a login request that presents to the user
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`a desktOp screen through a web browser interface. The desktop accesses and downloads
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`

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`Case 1:19-cv-11278-RGS Document 34-9 Filed 01/23/20 Page 3 of 8
`case 1:19-Ev-11278-RGS Document 34-9 Filed 01/23/20
`Page 3 of 8
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`J
`
`In re: Cox, et a].
`Serial No. 09/211,528
`Filed: December 14, 1998
`Page 2
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`selected application programs from the server responsive to a request from the user, such as
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`the selection of an icon associated with the application program which is displayed on the
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`user desktop screen at the client. An "instance of the selected" application program is then
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`provided from the server for execution at the client. Thus,the application programs may be
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`maintained at the server and provided to client's when needed for execution.
`
`As defined in the specification of the present application:
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`the underlying program functions, for example, Lotus Notes or a terminal
`emulator program. However, it is to be understood that the application program
`will preferably be included as pan‘ of the application launcher which will further
`include the code associated with managing usage of the application program 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 distibuted 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 whcn execution of the application program is requested. The
`application launcher program distributed to populate the user desktop may only
`include a URL and an associated ICON and, possibly, code to allow obtaining of
`user identification and password information. Memory usage on the client
`stations may thereby be limited.
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`(Specification, pp. 22-23)(emphasis added). Thus, the "application program" is an
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`application level software program, such as Lotus Notes, while the "application launcher
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`program" is provided to "initially populate the user desktop" and need not include the
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`application program code. In other words, the application launcher program interacts
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`with the desktop, such as a user browser interface, while an instance of the application
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`program is requested through the desktop but executes locally at the client as a separate
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`application from the browser interface. For example, Lotus Notes would not execute
`within the browser window.
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`The present invention may, therefore, be used so that a variety of application
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`programs can be maintained at the server, and an instance of a selected one of the application
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`programs may be provided as needed to a user logged onto a client device. The provided
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`instance of the application may then be executed at the client device to process the request of
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`

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`Case 1:19-cv-11278-RGS Document 34-9 Filed 01/23/20 Page 4 of 8
`_ Case 1:19-cv-11278—RGS Document 34-9 Filed 01/23/20 Page 4 of 8
`
`In re: Cox, et a1.
`Serial No. 09/211,528
`Filed: December 14, 1998
`Page 3
`
`,
`t
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`the user. Thus, individual application programs are provided to the user as needed (on-
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`demand) where they are executed at a client device rather than having the application
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`program execute at the server responsive to a request from a user. Furthermore, a customized
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`user interface desktop is provided at the client device, which displays the applications the
`user is authorized to access.
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`Claims 1, 21 and 23 Are Patentable Over the Cited References:
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`The rejections of independent Claims 1, 21 and 23 aSsert that Rose teaches all of the
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`recitations of the claims except "the inventive concept of receiving at the server a login
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`request from the user at the client." (Action, p. 3). However, the rejections rely on Win as
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`teaching "receiving at the server a login request from the user at the client." (Action, p. 3). '
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`Applicants submit that Rose does not teach or suggest a "user desktop associated with the
`m." Applicants further submit that Win does not teach or suggest such a user desktop
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`'
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`include "a plurality of display regions associated with a set of the plurality of application
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`programs installed at the server for which the user is authorized." Furthermore, the Rose
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`and Win references cannot properly be combined to arrive at the present invention in light of
`the different problems addressed by these references and the lack of motivation for the
`combination.
`‘
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`Rose is directed to managed distribution of licensed application programs stored on a
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`server where the server "maintains control over the program even after the program has been
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`distributed to a client computer." (Rose, Abstract). As described in Rose, for example, with
`reference to .Figure 2, trial versions of application programs may be selected for downloading
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`from the server to a client through a browser interface. (Rose, Col. 4, lines 10-17). In other
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`words, Figure 2 illustrates a display screen at the client showing application programs
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`available for downloading from the server. A selected trial version is then prepared, for
`downloading to the client, which includes encryption and header information used for license
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`and usage control afier delivery to the client. (Rose, Col. 5, lines 19-52).
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`The rejections of Claim 1 primarily rely on Figure 7 and the associated description in
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`Rose as teaching the present invention. However, as is clearly stated in Rose, Figure 7
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`displays application programs "downloaded to and stored on client computer 102." (Rose,
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`

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`Case 1:19-cv-11278-RGS Document 34-9 Filed 01/23/20 Page 5 of 8
`Case 1:19-cv-11278-RGS Document 34-9 Filed 01/23/20 Page 5 of 8
`
`
`
`In re: Cox, et al.
`Serial No. 09/211,528
`Filed: December 14, 1998
`Page 4
`.
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`Col. 6, lines 41-42). A selection of a program from the display of Figure 7 of Rose is a
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`selection of a locally stored program for execution as contrasted with the selection of an
`application program for downloading from a server as illustrated in Figure 2 of Rose. Thus, a
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`selection of an application program through Figure 7 of Rose does not result in the server
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`"providing an instance of the selected one of the plurality of application programs to the
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`client for execution" as recited in Claim 1. Furthermore, neither of the displays of Figures 2
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`or 7 of Rose are "associated with the user responsive to the login request from the user."
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`While the display of Figure 2 of Rose is established at the client by the server responsive to a
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`browser request from the client, it is simply a download options window not specific to a
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`particular user. The download options window is also not established responsive to a login
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`request as acknowledged by the Written Opinion. The display of Figure 7 of Rose is directed
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`to local (client) resident application programs and a selection from the display of Figure 7
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`does not initiate "providing an instance of the selected one of the plurality of application
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`' programs to the client for execution" as the application programs are client resident at the
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`time of the request. Thus, Claims 1, 21 and 23, and the claims that depend therefrom, should
`be allowed for at least these reasons.
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`The deficiencies of Rose are not overcome by Win. Win relates to "controlling access
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`to information resources," not client-server environment on—demand application program
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`management. (See Win, Abstract). The managed resources are defined in Win as follows:
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`A Resource is a source of information, identified by a Uniform Resource Locator
`(URL) and published by a Web server either in a static file formatted using Hypertext
`Markup Language (HML) or in a dynamically generated page created by a CGI-based
`program. Examples of resources include a Web page, a complete Web site, a Web-
`enabled database, and an applet.
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`(Win, Col. 5, lines 21-27). Thus, the "resources" managed by Win are not "application
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`programs" as that term is defined in the present application in the excerpt reproduced above.
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`Similarly, no user desktop interface that includes "a plurality of display regions associated
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`with a set of the plurality of application programs" is taught or suggested by Win. It follows
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`that no selection received at the server of such an application program and no "providing an
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`instance of the selected” application program "to the client for execution" is taught or
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`suggested by Win. Instead, the only resource selected and provided in Win is a display for
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`
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`

`

`’
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`Case 1:19-cv-11278-RGS Document 34-9 Filed 01/23/20 Page 6 of 8
`"Ease 1:1'9‘1’cv-11278-Ros Document34-9 Filed 01/23/20 Page6of8
`
`In re: Cox, et al.
`Serial No. 09/211,528
`Filed: December 14, 1998
`Page 5
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`the user, such as a static HTML file or a "dynamically generated page created by a CGI—based
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`program" of the server. (Win, Col. 5, lines 21-27). Therefore Claims I, 21, 23 and the
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`claims that depend from them are patentable for at least these reasons.
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`The rejections should also be withdrawn as the Rose and Win references cannot
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`properly be combined in the manner relied on by the Action. To establish a prima facie case
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`of obviousness, the prior art reference or references when combined must teach or suggest all
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`the recitations of the claim, Lug there must be some suggestion or motivation, either in the
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`references themselves or in the knowledge generally available to one of ordinary skill in the
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`art, to modify the reference or to combine reference teachings. M.P.E. P. § 2143. . The mere
`fact that references can be combined or modified does not render the resultant combination
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`obvious unless the prior art also suggests the desirability of the combination. M.P.E.P. §
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`2143.01, citing In re Mills, 916 F.2d 680, 16 U.S.P.Q.2d 1430 (Fed. Cir. 1990). As recently
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`emphasized by the Court of Appeals for the Federal Circuit, to support combining references,
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`' evidence of a suggestion, teaching, or motivation to combine must be clear and particular,
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`and this requirement for clear and particular evidence is not met by broad and conclusory
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`statements about the teachings of references. In re Dembiczak, 50 U.S.P.Q.2d 1614, 1617
`(Fed. Cir. 1999). In an even more recent decision, the Court of Appeals for the Federal
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`Circuit has stated that, to support combining or modifying references, there must be
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`particular evidence from the prior art as to the reason the skilled artisan, with no knowledge
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`of the claimed invention, would have selected these components for combination in the
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`manner claimed. In re Kotzab, 55 U.S.P.Q.2d 1313, 1317 (Fed. Cir. 2000).
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`Respectfully, the Action fails to meet the requirements for a showing of obviousness
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`under § 103. First, as discussed above, the cited combination of references fails to teach all
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`of the recitations of the claims. Furthermore, there is no basis for combining the methods
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`and system for controlled downloading of trial versions of programs described in Rose with
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`the resource access management teachings of Win. This is particularly true as they are both
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`directed to distinct problems from the client-server application management environment of
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`the present invention. Thus, while Rose does relate to application program distribution fi-om
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`a server, such operations are for providing trial versions to be repeatedly executed at a client.
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`In fact, the encryption and application builder aspects advanced as the invention in
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`

`

`Case 1:19-cv-11278-RGS Document 34-9 Filed 01/23/20 Page 7 of 8
`Case 1:19-cv-11278-RGS Document 34-9 Filed 01/23/20 Page 7 of 8
`c.’
`
`In re: Cox, et at.
`Serial No. 09/211,528
`Filed: December 14, 1998
`Page 6
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`Rose are not even relevant to the environment of the present invention where instances of the
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`application programs are provided from a server "on-demand" each time execution is
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`requested by a user. Rose is, instead, merely a distribution approach for client resident
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`programs and one of skill in the art would not look to a reference directed to the problems of
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`such an environment for direction in the distinct art of server based "on-demand" application
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`programs. Win does not even relate to distribution of application programs but merely to
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`control of access to server based resources. Thus, there is no basis to combine Win and Rose
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`to arrive at the present invention. Accordingly, the rejections should be withdrawn for at
`least these additional reasons.
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`Various of the Dependent Claims Are Separately Patentable
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`As discussed above, each of the dependent claims is patentable based on its
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`dependence on Claim 1, 21 or 23. In addition, various of the dependent claims are separately
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`patentable based on the recitations therein. For example, contrary to the assertion of the
`Action, Rose does not teach distributing "application launcher programs associated with each ,
`of the set of the plurality of application programs" as recited in Claims 3, 25 and 38. (See
`also, claims 10-11 and the corresponding system and computer program product claims). To
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`the extent this rejection is maintained, Applicants respectfully request an explanation from
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`the Examiner of how the portions of Rose relied on for this rejection teach the recited asPects
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`of Claim 3 as Applicants can find nothing in the portions of Rose cited in paragraph 7 of the
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`Action on which the Examiner could be relying as support for the rejection of Claims 3, 25
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`and 38. Claims 4-6 depend from Claim 3 and are likewise allowable for the reasons Claim 3
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`is allowable as are the corresponding system and computer program product claims.
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`Furthermore, as with the rejection of Claims 3, 25 and 38, Applicants are unable to identify
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`what discussion the Examiner is relying on for the recitations related to the "configurable user
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`preference information" recited in Claims 4, 26 and 39 and, thus, Applicants request
`clarification from the Examiner of how Rose teaches these aspects ofthe claimed invention if
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`the rejections are not withdrawn. Accordingly, these claims are also patentable for at least
`these additional reasons.
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`
`
`

`

`Case 1:19-cv-11278-RGS Document 34-9 Filed 01/23/20 Page 8 of 8
`Case 1:19-cV-11278-RGS Document 34-9 Filed 01/23/20 Page 8 of 8
`
`In re: Cox, et a].
`Serial No. 09/211,528
`Filed: December 14, 1998
`Page 7
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`Conclusion
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`The outstanding rejections have all been addressed by the remarks above and the
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`recitations of the pending claims are neither disclosed nor suggested by the cited combination
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`of references. Accordingly, Applicants respectfully request allowance of the the present
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`application and passing the application to issue.
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`Respectfully submi e
`
`Robert W. Glatz
`
`Registration No 36,81 1
`Attorney for Applicant
`
`Ciliiiliiiliiiliiliiim
`
`20792
`PATENT TRADEMARK OFFICE
`
`I hereby certify that this correspondence is being deposited with the United States Postal Service as first class mail in an
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`CERTIFICATE OF MAILING
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`.- Envelope addressedto: BoZ‘lon-Fee Amendmez, Commissioner for Patents, Washington, DC20231, on October23, 2001.
`
`-
`
`Michele P. McMahan
`Date of Signature: October 23, 2001
`218342
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`