DOCKET NO: 341 244US9 1 CONT
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`M‘HE UNITED STATES PATENT & TRADEMARK OFFICE
`
`IN RE APPLICATION OF
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`DANIEL J. MENDEZ, ET AL.
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`: EXAMINER: BURGESS, BARBARA N.
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`SERIAL NO: 12/489,326
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`FILED: JUNE 22, 2009
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`: GROUP ART UNIT: 2457
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`FOR: GLOBAL SERVER FOR
`AUTHENTICATING ACCESS TO
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`REMOTE SERVICES (AMENDED)
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`AMENDMENT UNDER 37 C.F.R. § 1.111
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`COMMISSIONER FOR PATENTS
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`ALEXANDRIA, VIRGINIA 223 13
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`SIR:
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`In response to the Office Action dated February 3, 2011, please amend the above-
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`identified application as follows:
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`Amendments to the Specification begin on page 2 of this paper.
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`Amendments to the Claims are reflected in the listing of claims which begins on
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`page 3 of this paper.
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`Remarks begin on page 12 of this paper.
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`Application No. 12/489,326
`Reply to Office Action of February 3, 201 1
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`IN THE SPECIFICATION
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`Please replace the title on page 1 with the following:
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`GLOBAL SERVER FOR AUTHENTICATING ACCESS TO REMOTE SERVICES
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`Application No. 12/489,326
`Reply to Office Action ofFebruary 3, 20] I
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`IN THE CLAIMS
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`Please amend the claims as follows:
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`1-45. (Cancelled)
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`46. (Currently Amended) A global server for providing a user of a remote user
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`terminal with authenticated access to a service provided by a service server via a first
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`communications link between the global server and the remote user terminal and a second
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`communications link between the global server and the service server, the global server being
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`configured to provide the user of the remote user terminal with authenticated access to the
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`service provided by the service, the global server comprising server—by:
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`a communication interface configured to connect to the first communications link and
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`to connect to the second communications link’
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`a processor configured to
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`authentieatiag authenticate the user with respect to the global server by
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`processing first authentication information for the user, the first authentication
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`information being received from the remote user terminal via the communication
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`interface from the first communications link, to verify the identity of the user with
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`respect to the global server;
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`authentieating authenticate the user with respect to the service server by
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`retrieving second authentication information for the user and transmitting said second
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`authentication information to the service server via the communication link from the
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`second communications link, to verify the identity of the user with respect to the
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`service server;
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`eenelueting conduct authenticated communications with the service server on
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`behalf of the user, via the second communications link and using the communication
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`Application No. 12/489,326
`Reply to Office Action of February 3, 201 1
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`interface, after the authentication of the user with respect to the service server; and
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`previding provide the user of the remote user terminal with authenticated
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`access to the service by conducting authenticated communications with the remote
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`terminal, via the first communications link and using the communication interface,
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`after conducting the authenticated communications with the service server on behalf
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`of the user.
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`47. (Previously Presented) The global server of claim 46, wherein the first
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`authentication information and the second authentication information are different.
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`48. (Previously Presented) The global server of claim 46, wherein the first
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`authentication information comprises a password and a user ID.
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`49. (Currently Amended) The global server of claim 46, wherein the processor is
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`further configured to retrieve the second authentication information from storage on the
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`global server, in dependence on an identity of the service server.
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`50. (Currently Amended) The global server of claim 46, wherein the processor is
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`further configured to provide authenticated access to services provided by a plurality of
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`different service servers.
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`51. (Currently Amended) The global server of claim 46, wherein the processor is
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`further configured to retrieve a service address for the service server from storage on the
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`global server, in order to provide authenticated access to the service provided by the service
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`SCI‘VCI‘.
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`Application No. 12/489,326
`Reply to Office Action of February 3, 201 l
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`52. (Currently Amended) The global server of claim 46, wherein the processor is
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`further configured to provide authenticated access to the service on the basis of one or more
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`authentication levels associated with a respective service.
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`53. (Previously Presented) The global server of claim 46, wherein the first
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`communications link comprises an Internet communications channel, the user accessing said
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`service on the remote terminal via a web browser.
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`54. (Previously Presented) The global server of claim 53, comprising a security
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`system configured to create the first communications link as a secure communications link
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`for communication with the remote user terminal.
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`55. (Previously Presented) The global server of claim 54, wherein the secure
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`communications link is created in response to the remote user terminal using a uniform
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`resource locator (URL) to access the global server.
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`56. (Previously Presented) The global server of claim 46, wherein the remote user
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`terminal is configured using a downloadable executable, the downloadable executable being
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`configured to authenticate the user of the remote terminal with respect to the global server.
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`57. (Currently Amended) The global server of claim 46, wherein the processor is
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`further configured to access a key store to retrieve said second authentication information.
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`Application No. 12/489,326
`Reply to Office Action of February 3, 2011
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`58. (Currently Amended) The global server of claim 46, wherein the processor is
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`further configured to retrieve a service address of the service server, and to use said service
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`address to set up said second communications link.
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`59. (Previously Presented) The global server of claim 46, wherein the service server
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`comprises a service engine for operating on workspace data, at the service server, in response
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`to said authenticated communications conducted by the global server.
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`60. (Currently Amended) The global server of claim 46, wherein the processor is
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`further configured to retrieve data identifying a set of services, associated with a particular
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`user, in order to provide authenticated access to said services.
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`61. (Currently Amended) The global server of claim 46, wherein the processor is
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`further configured to retrieve an authentication level needed in order to provide authenticated
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`access to the service provided by said service server.
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`62. (Previously Presented) The global server of claim 46, wherein the remote user
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`terminal a smartphone.
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`63. (Previously Presented) The global server of claim 46, wherein said service is
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`provided on a smartphone.
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`64. (Currently Amended) The global server of claim 46, wherein the processor of the
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`global server is configured to conduct synchronization of a workspace element with respect
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`Application No. 12/489,326
`Reply to Office Action of February 3, 2011
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`to an independently-modifiable copy of the workspace element stored on the service server,
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`in addition to providing access to the service provided by the service server.
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`65. (Currently Amended) The global server of claim 46, wherein the processor is
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`further configured to conduct the authentication of the user of the remote user terminal with
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`respect to the service server in response to the authentication of the user of the remote user
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`terminal with respect to the global server.
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`66. (Currently Amended) A method of providing a user of a remote user terminal
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`with authenticated access to a service provided by a service server via a first communications
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`link between the global server and the remote user terminal and a second communications
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`link between the global server and the service server, the method comprising:
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`authenticating, at a processor of the global server= the user with respect to the global
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`server by processing first authentication information for the user, the first authentication
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`information being; received from the remote user terminal via the first communications link,
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`to verify the identity of the user with respect to the global server;
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`authenticating, at the processor of the global server: the user with respect to the
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`service server by retrieving second authentication information for the user and transmitting
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`said second authentication information to the service server via the second communications
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`link, to verify the identity of the user with respect to the service server;
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`conducting, by the processor of the global server through a communication interface
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`_.—1
`thereof authenticated communications with the service server on behalfof the user, via the
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`second communications link, after the authentication of the user with respect to the service
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`server; and
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`Application No. 12/489,326
`Reply to Office Action of February 3, 2011
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`providing, by the processor of the global server, the user of the remote user terminal
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`with authenticated access to the service by conducting authenticated communications with
`
`the remote terminal, via the first communications link, after conducting the authenticated
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`communications with the service server on behalf of the user.
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`67. (Previously Presented) The method of claim 66, wherein the first authentication
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`information and the second authentication information are different.
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`68. (Previously Presented) The method of claim 66, wherein the first authentication
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`information comprises a password and a user ID.
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`69. (Currently Amended) The method ofclaim 66, further comprising the—glebal
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`seweeretrievinngy the global server, the second authentication information from storage on
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`the global server, in dependence on an identity of the service server.
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`70. (Currently Amended) The method of claim 66, further comprising the—global
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`server providinngy the global server, authenticated access to services provided by a plurality
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`of different service servers.
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`71. (Currently Amended) The method of claim 66, further comprising the—global
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`sewer retrievinngy the global server, a service address for the service server from storage on
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`the global server, in order to provide authenticated access to the service provided by the
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`service server.
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`Application No. 12/489,326
`Reply to Office Action of February 3, 2011
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`72. (Currently Amended) The method of claim 66, further comprising theglebal
`
`sewer providinngy the global server, authenticated access to the service on the basis of one
`
`or more authentication levels associated with a respective service.
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`73. (Previously Presented) The method of claim 66, wherein the first
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`communications link comprises an lntemet communications channel, the user accessing said
`
`service on the remote terminal Via a web browser.
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`74. (Currently Amended) The method of claim 73, further comprising the—global
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`sewer creating, bv the global server, the first communications link as a secure
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`communications link for communication with the remote user terminal.
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`75. (Previously Presented) The method of claim 74, comprising creating the secure
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`communications link in response to the remote user terminal using a uniform resource locator
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`(URL) to access the global server.
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`76. (Currently Amended) The method of claim 66, further comprising configuring
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`the remote user terminal using a downloadable executable, the downloadable executable
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`authenticating the user of the remote terminal with respect to the global server.
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`77. (Currently Amended) The method of claim 66, further comprising the—gleba-l
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`server accessinngy the global server, a key store to retrieve said second authentication
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`information.
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`Application No. 12/489,326
`Reply to Office Action of February 3, 201 l
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`78. (Currently Amended) The method of claim 66, further comprising the—global
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`sewer retrievinngy the global server, a service address of the service server, and using said
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`service address to set up said second communications link.
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`79. (Currently Amended) The method of claim 66, further comprising the—service
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`sewer—operating, by the global server, on workspace data, at the service server, in response to
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`said authenticated communications conducted by the global server.
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`80. (Currently Amended) The method of claim 66, further comprising the—global
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`server retrievinngy the global server, data identifying a set of services, associated with a
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`particular user, in order to provide authenticated access to said services.
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`81. (Currently Amended) The method of claim 66, further comprising the—global
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`sewer retrievinngy the global server, an authentication level needed in order to provide
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`authenticated access to the service provided by said service server.
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`82; (Previously Presented) The method of claim 66, wherein the remote user
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`terminal a smartphone.
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`83. (Previously Presented) The method of claim 66, wherein said service is provided
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`on a smartphone.
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`84. (Currently Amended) The method of claim 66, further comprising the—global
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`server conducting, by the global server, synchronization of a workspace element with respect
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`Application No. 12/489,326
`Reply to Office Action of February 3, 201 1
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`to an independently-modifiable copy of the workspace element stored on the service server,
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`in addition to providing access to the service provided by the service server.
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`85. (Currently Amended) The method of claim 66, further comprising the—glebal
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`server conducting: by the global server, the authentication of the user of the remote user
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`terminal with respect to the service server in response to the authentication of the user of the
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`remote user terminal with respect to the global server.
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`Application No. 12/489,326
`Reply to Office Action of February 3, 2011
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`REMARKS
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`Favorable reconsideration of this application, in View of the present amendments and
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`in light of the following discussion, is respectfully requested.
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`Claims 46—85 are pending. Claims 46, 49-52, 57—58, 60—61, 64-66, 69-72, 74, 76-81,
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`and 84—85 are amended. No new matter is introduced]
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`In the outstanding Office Action, Claims 66-85 were rejected under 35 U.S.C. § 101;
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`and Claims 46-65 were rejected under 35 U.S.C. § 112, second paragraph.
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`Initially, Claim 66 is amended for clarity. As such, amended Claim 66 is believed to
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`be patent-eligible under 35 U.S.C. § 101.
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`The outstanding Office Action appears to solely relies on the “machine or
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`transformation test” to the determine patent-eligibility of the method claims of this
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`application under Section 101.2 However, in the 2010 Decision, Bilski v. Kappos, the US.
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`Supreme Court expressly rejected the machine-or—transformation test as the sole test of
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`patent-eligibility for method claims under Section 101.
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`In July 2010, the Office also issued
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`Interim Guidance for determining patent-eligibility in light of the US. Supreme Court
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`Decision in Bilski v. Kappos. Specifically, the Office acknowledged that
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`The Office has been using the so-called “machine-or-
`transformation” test used by the Federal Circuit to evaluate
`whether a method claim qualifies as a statutory patent-eligible
`process. See Interim Examination Instructions For Evaluating
`Subject Matter Eligibility Under 35 U.S.C. 101 dated August
`24, 2009 (“2009 Interim Instructions”). The Supreme Court
`stated in Bilski that the machine-or—transformation test is a
`“useful and important clue” and “investigative tool” for
`determining whether some claimed methods are statutory
`processes, but it “is not the sole test for deciding whether an
`invention is a patent—eligible ‘Qrocess.’... Bilski held open the
`possibility that some claims that do not meet the machine-or-
`
`1 Non-limiting support for the amended claims may be found at least in Figure 3 and the associated discussion in
`the specification as originally filed.
`2 See the outstanding Office Action at page 2.
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`Application No. 12/489,326
`Reply to Office Action of February 3, 201 1
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`transformation test might nevertheless be patent-eligible.
`(Emphasis added.)3
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`The Interim Guidance also outlined a patent—eligibility procedure for process claims
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`that included analysis of 4 factors, and at least 17 sub-factors, and which requires Examiners
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`to specifically point out the factors relied upon in rejecting the method claims under Section
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`101.4 Thus, the apparent sole reliance on the machine—or-transformation test in the
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`outstanding Office Action is not consistent with current law or Office practices. As such, it is
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`submitted that the rejection of Claims 66-85 under 35 U.S.C. § 101 is improper, and that
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`claims 66-85 are indeed patent-eligible under Section 101 when analyzed as set forth in the
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`Interim Guidance, Therefore, it is respectfully requested that the rejection of Claims 66-85
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`under 35 U.S.C. § 101 be withdrawn.
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`Turning to the rejection of Claims 45-65 under 35 U.S.C. § 112, second paragraph,
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`Claim 46 is amended to recite such structural features as a “processor” and a “communication
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`interface”. Non-limiting support for these amendments may be found at least in Figure 3 and
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`the associated descriptions in the specification. Thus, Claim 46 and the claims depending
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`therefrom are believed to conform to the requirements of 35 U .S.C. § 1 12, second paragraph.
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`Accordingly, it is respectfully requested that the rejection of Claims 45-46 under 35 U.S.C.
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`§ 1 12, second paragraph be withdrawn.
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`3 See “Interim Guidance for Determining Subject Matter Eligibility for Processed Claims in View of Bilski v.
`Kappos,” Federal Register, Vol. 75, No. 43, § 3 (July 27, 2010).
`4 m. at § 3.v.
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`Application No. 12/489,326
`Reply to Office Action of February 3, 201 1
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`For the reasons discussed above, no further issues are believed to be outstanding in
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`the present application, and the present application is believed to be in condition for formal
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`allowance. Therefore, a Notice of Allowance for Claims 46-85 is earnestly solicited.
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`Respectfully submitted,
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`OBLON, SPIVAK, McCLELLAND,
`MAIER & NEUSTADT, L.L.P.
`
`
`
`Record
`Attorney
`Registration No. 42,866
`
`.
`Aldo Mamnez
`Registration No. 61,357
`
`Customer Number
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`22 8 5 0
`
`Tel: (703) 413-3000
`Fax: (703) 413-2220
`(OSMMN 08/09)
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