UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.0. Box I450
`Alexandria, Virginia 22313-I450
`www.usplo.gov
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`APPLICATION NO.
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`FILING DATE
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
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`CONFIRMATION NO.
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`90/Ol0,83l
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`OI/22/2010
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`5,490,216
`
`29l4.00lREXO
`
`2214
`
`MI I I
`
`7590
`
`0|/I8/ZOI I
`
`EXAMINER
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`1 100 NEW YORK AVENUE, N.W.
`WASHINGTON, DC 20005
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`ART UN”
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`PAPER NUMBER
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`DATE MAILED: OI/I8/201 I
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`PTO-90C (R V. I0/03)
`C
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`Petitioners Ex. 1017 Page 1
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`Petitioners Ex. 1017 Page 1
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`UNITED STATES PATENT ANDTRADEMARK OFFICE
`_
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`_
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`_
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`.
`
`_________?____
`.
`-
`Commlssionerfor Patenw
`United States Patent and Trademark Office
`P.0. Box145cI
`Alexandria, VA 22313-1450
`vwwu'uspto.go\r
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`Do NOT use IN PALM PRINTER
`
`' MAILED
`
`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
`Kyle Rinehart
`Klarquist Sparkman, LLP
`One World Trade Center, Suite 1600
`121 S.W. Salmon Street
`Portland, OR 97204
`
`I
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`J 1
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`CENTRAL REEXAMINATION UNIT
`
`EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
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`REEXAMINATION CONTROL NO. 90/010 831.
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`PATENT NO. 5 490 216.
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`ART UNIT 3992.
`
`Enclosed is a. copy of the latest communication from the United States Patent and Trademark
`Office in the above identified ex parte reexamination proceeding (37 CFR 1.550(f)).
`
`Where this copy is supplied after the reply by requester, 37 CFR 1.535, or the time for filing a
`reply has passed, no submission on behalf of the ex parte reexamination requester will be
`acknowledged or considered (37 CFR 1.550(g)).
`
`PTOL—465 (Rev.07-04)
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`Petitioners Ex. 1017 Page 2
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`Petitioners Ex. 1017 Page 2
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`

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`
`
`Control No.
`90/010,831
`
`Patent Under Reexamination
`5,490,216
`
`Examiner
`MATTHEW HENEGHAN
`
`Art Unit
`3992
`
`
`
`Office Action in Ex Parte Reexamination
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
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`
`
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`
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`bI:I This action is made FINAL.
`aXI Responsive to the communication(s) filed on 29 November 2010.
`cI:I A statement under 37 CFR 1.530 has not been received from the patent owner.
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`A shortened statutory period for response to this action is set to expire g month(s) from the mailing date of this letter.
`Failure to respond within the period for response will result in termination of the proceeding and issuance of an ex pan‘e reexamination
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`certificate in accordance with this action. 37 CFR 1.550(d). EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.550(c).
`If the period for response specified above is less than thirty (30) days, a response within the statutory minimum of thirty (30) days
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`will be considered timely.
`
`Part I
`THE FOLLOWING ATTACHMENT(S) ARE PART OF THIS ACTION:
`
`
`1.
`3. D Interview Summary, PTO-474.
`
`I:] Notice of References Cited by Examiner, PTO-892.
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`
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`2. E] Information Disclosure Statement, PTO/SB/08.
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`4. E]
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`.
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`SUMMARY OF ACTION
`
`
`K4 Claims 1-20 are subject to reexamination.
`1b.
`I:] Claims j are not subject to reexamination.
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`2. CI Claims j have been canceled in the present reexamination proceeding.
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`3.
`4.
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`5.
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`[3 Claims __ are patentable and/or confirmed.
`IX Claims 1 are rejected.
`I
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`I:] Claims __ are objected to.
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`_6.
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`[:I The drawings, filed on __ are acceptable.
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`7. I] The proposed drawing correction, filed on __ has been (7a)I:I approved (7b)I:I disapproved.
`8 .
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`I:I Acknowledgment is made of the priority claim under 35 U.S.C. § 119(a)-(d) or (f).
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`a)[] All b)I:I Some* c)E] None
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`of the certified copies have
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`1I:I been received.
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`2[:I not been received.
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`31] been filed in Application No.
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`4[:I been filed in reexamination Control No.
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`5I:] been received by the International Bureau in PCT application No.
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`* See the attached detailed Office action for a list of the certified copies not received.
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`9.
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`[:1 Since the proceeding appears to be in condition for issuance of an ex parte reexamination certificate except for formal
`matters, prosecution as to the merits is closed in accordance with the practice under Ex parte Quayle, 1935 C.D.
`11,453 O.G. 213.
`
`10. C] Other:
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`
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`U.S. Patent and Trademark Office
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`PTOL-466 (Rev. 08-06)
`
`Office Action in Ex Parte Reexamination
`
`Part of Paper No. 20110110
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`Petitioners Ex. 1017 Page 3
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`Petitioners Ex. 1017 Page 3
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`

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`Application/Control Number: 90/010,831
`Art Unit: 3992
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`Page 2
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`DETAILED ACTION
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`Reexamination
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`In response to the previous office action, the Patent Owner filed a Request for
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`Reconsideration filed 29 November 2010.
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`The construction of certain claim’ terms in claims 1-20 have been reconsidered,
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`prompting new or modified grounds of rejection. As a result, this office action is non-
`final.
`2
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`The patent owner is reminded of the continuing responsibility under 37 OFR
`1.565(a) to apprise the Office of any litigation activity, or other prior or concurrent
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`proceeding, involving Patent No. 5,490,216 throughout the course of this reexamination
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`proceeding. The third party requester is alsoreminded of the ability to similarly apprise
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`the Office of any such activity orproceeding throughout the course of this reexamination
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`proceeding. See MPEP §§ 2207, 2282 and 2286.
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`Extensions of time under 37 CFR 1.136(a) will not be permitted in these
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`proceedings because the provisions of 37 CFR 1.136 apply only to "an applicant" and
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`not to parties in a reexamination proceeding. Additionally, 35 U.S.C. 305 requires that
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`ex parte reexamination proceedings "will be conducted with special dispatch" (37
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`Petitioners Ex. 1017 Page 4
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`Petitioners Ex. 1017 Page 4
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`

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`Application/Control Number: 90/010,831
`Art Unit: 3992
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`Page 3
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`CFR 1.550(a)). Extensions of time in ex parte reexamination proceedings are provided
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`for in 37 CFR 1.550(c).
`
`In order to ensure full consideration of any amendments, affidavits or
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`declarations, or other documents as evidence of patentability, such documents must be
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`submitted in response to this Office action. Submissions after the next Office action,
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`which is intended to be a final action, will be governed bythe requirements of 37
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`CFR 1.116, after final rejection and 37 CFR 41.33 after appeal, which will be strictly
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`- enforced.
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`Claims 1-20 have been examined.
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`Affidavits
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`The affidavit under 37 CFR 1.132 filed 29 November 2010 by Ravinda ManNaha
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`is insufficient to overcome thenrejection under 35 U.S.C. 103 of claims 1-20 based upon
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`Hellman, either alone or in view of Grundy, because it refers only to the system
`
`described in the above referenced application and not to the individual claims of the
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`patent. Thus, there is no showing that the objective evidence of nonobviousness is
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`commensurate in scope with the claims. See MPEP § 716.
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`Petitioners Ex. 1017 Page 5
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`Petitioners Ex. 1017 Page 5
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`

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`Application/Control Number: 90/010,831
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`Page 4
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`Art Unit: 3992
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`The affidavit under 37 CFR 1.132 filed 29 November 2010 by Brad Davis is
`insufficient to overcome the rejection under 35 U.S.C. 103 of claims 1-20 based upon
`
`Hellman, either alone or in view of Grundy. The affidavit states that the claimed subject
`
`matter solved a problem that was long standing in the art and enjoyed commercial
`
`success. However, there is no actual evidence presented that others of ordinary skill in
`
`the art were working on the problem and if so, for how long. In addition, there is no
`
`evidence that if persons skilled in the art who were presumably working on the problem
`
`knew of the teachings of the above cited references, they would still be unable to solve
`
`the problem. Furthermore, no evidence is presented showing a nexus between the
`
`claimed invention and the commercial success.
`
`The affidavit under 37 CFR 1.132 filed 29 November 2010 by Ric B. Richardson
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`is insufficient to overcome the rejection under 35 U.S.C. 103 of claims 1-20 based upon
`
`Hellman, either alone or in view of Grundy. The affidavit states that the claimed subject
`
`matter solved a problem that was long standing in the art and enjoyed commercial
`
`success. However, there is no actual evidencepresented that others of ordinary skill in
`
`the art were working on the problem and if so, for how long. In addition, there is no
`
`evidence that if persons skilled in the art who were presumably working on the problem
`
`knew of the teachings of the above cited references, they would still be unable to solve
`
`the problem. Furthermore, no evidence is presented showing a nexus between the
`
`claimed invention and the commercial success. See MPEP § 716.04.
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`Petitioners Ex. 1017 Page 6
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`Petitioners Ex. 1017 Page 6
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`

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`Application/Control Number: 90/010,831
`Art Unit: 3992
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`4
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`Page 5
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`The affidavit under 37 CFR 1.132 filed 29 November 2010 by William R.
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`Rosenblatt has been considered and entered into the record. The affidavit is
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`unpersuasive because it entirely consists of opinions regarding the applicability of the
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`cited prior art.
`
`An affidavit under 37 CFR 1.132 was filed on 6 December 2010 without a
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`Certificate of Service that appears to be a duplicate of one of they affidavits filed on 29
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`November 2010. The affidavit filed on 6 December 2010 is being ignored.
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`References Submitted by Requester
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`The following references have been found to establish a substantial new question of
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`patentability. See Order, mailed 9 April 2010:
`
`U.S. Patent No. 5,490,216 to Hellman (hereinafter Hellman), either alone or in view of
`
`U.S. Patent No. 4,796,220 to Grundy (hereinafter Grundy) or U.S. Patent No. 5,291,598
`
`to Wolfe (hereinafter Wolfe).
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`Petitioners Ex. 1017 Page 7
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`Petitioners Ex. 1017 Page 7
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`

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`Application/Control Number: 90/010,831
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`‘
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`Page 5
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`Art Unit: 3992
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`Claim Construction
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`Claim_7 recites “said platform unique ID’’ in line 5. It is not clear to what this
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`limitation refers. It is being presumed that this is a field produced by the platform unique
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`ID generating means.
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`Claim 12 lacks a transitional phrase. It is being presumed that the limitations of
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`the claim comprise all those beginning with “said registration system ..." In line 24and
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`the limitations have been recited in an open-ended manner.
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`Means Plus Function Limitations
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`Several means plus function limitations that are being treated under 35 U.S.C. 112,
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`sixth paragraph appear in the claims of the ‘216 patent. They are support by the
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`specification as follows:
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`local licensee unique ID generating means (claims 1, 19, 20): a hardware summer (see
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`figure 10 and column 12, lines 62-65), including supporting software, with inputs (see
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`column 12, lines 51-61), may be implemented in software, column 13, lines 42-48).
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`Petitioners_Ex. 1017 Page 8
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`Petitioners Ex. 1017 Page 8
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`

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`Application/Control Number: 90/010,831
`Art Unit: 3992
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`‘
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`I
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`Page 7
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`remote licensee unique ID generating means (claims 1,19, 20): a remote hardware
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`summer (see figure 10 and column 13, lines 2-10), may be implemented in software,
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`column 13, lines 42-48)
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`mode switching means (claims 1, 19, 20), mode—switching means (claim 17): two
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`hardware gates and a comparator that determine software flow, controlled by a relay,
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`which is driven by software (see column 13, lines 22-40, may be implemented in
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`software, column 13, lines 42-48).
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`platform unique ID generating means (claim 7): code for creating the platform unique ID
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`(see column 5, lines 57-64), read from a digital code reading device (see column 12,
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`lines 46-50).
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`registration key generating means (claim 17): a hardware summer (see figure 10 and
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`column 12, lines 62-65), with inputs (see column 12, lines 51-61), may be implemented‘
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`in software, column 13, lines 42-48).
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`The term “third party means of operation” in claim 17 is not being treated as a 35 U.S.C.
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`112, sixth paragraph limitation because it does not have a function associated with the
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`means, other than the broad term "operation.”
`
`Substantial New Question of Patentability
`
`The Patent Owner has traversed the finding that Hellman in view of Grundy
`
`establishes a substantial new question of patentability based upon the fact that Grundy
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`Petitioners Ex. 1017 Page 9
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`Petitioners Ex. 1017 Page 9
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`

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`5
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`Application/Control Number: 90/010,831
`Art Unit: 3992
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`‘
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`Page 8
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`was cited by the Examiner during the original prosecution. “[T]he Federal Circuit stated
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`that ‘to decide whether a reference that was previously considered by the PTO
`
`creates a substantial new question of patentability, the PTO should evaluate
`
`the context in which the reference was previously considered and the scope
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`of the prior consideration and determinewhether the reference is now being
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`considered for a substantially different purpose.’ In re Swanson, 540 F.3d
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`1368, 1380 (2008) (concluding that prior art used as a secondary reference in
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`an obviousness rejection was sufficient to establish SNQ when considered as '
`an anticipatory reference)" Ex Parte Muzzy (Bd. Pat. App. & Inter. 2010, slip op. at 8). In
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`the original prosecution, Grundy was used as the primary reference in rejections. In the
`instant office action, Grundy is merely being used as a secondary reference to cure
`deficiencies in Hellman, which was not considered by the original examiner. The
`
`teachings for which Grundy are being relied upon are not teachings that the original
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`examiner found to be absent in Grundy. This is therefore a different issue from that
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`\ which the original examiner decided and the finding of a substantial new question of
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`patentability is proper.
`
`Claim Rejections - 35 usc § 1102
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
`
`form the basis for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless —
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`Petitioners Ex. 1017 Page 10
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`Petitioners Ex. 1017 Page 10
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`

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`Application/Control Number: 90/010,831
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`Page 9
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`Art Unit: 3992
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`(b) the invention was patented or described in a printed publication in this or a foreign country or in
`public use or on sale in this country, more than one year prior to the date of application for patent in
`the United States.
`
`Claims 19 and 20 are rejected under 35 U.S.C. 102(b) as anticipated by Hellman.
`
`As per claim 19, Hellman discloses a system including local licensee unique ID
`
`generating means (see column 10, lines 14-18, for local generation of C, which is the
`
`‘
`
`same as A, which is an ID remotely created that is associated with a request that
`
`includes information provided by and specific to a user, such as billing information, see ,
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`column 5, line 57 to column 6, line 15, making it effectively specific to the licensee; the
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`hash function used to generate the ID produces a number that is so unlikely to be
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`reproduced independently that it is at least as unique that the IDs from the disclosure of
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`the ‘216 patent, see column 6, lines 31-52. Since the generated ID is unique, is
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`associated with the licensee, is not explicitly excluded by the ‘216 patent, and is used in
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`the other elements of the claim in the same manner as that of _the ‘216 patent's
`
`specification, it is functionally equivalent to the means disclosed in the '216‘patent), said
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`system further including mode switching means operable on said platform (a
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`comparator that triggers the updating of usage authorization, i.e. a switching of modes,
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`on the software, see column 10, lines 18-26) which permits use of said digital data in
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`said use mode on said platform only if (see column 10, lines 18-26; in the scenario
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`‘ where the‘number of authorized uses is previously 0, a failure results in the product not
`
`being operable, see column 10, lines 44-54) a licensee unique ID generated by said
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`local licensee unique ID generating means has matched a licensee unique ID generated
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`by said remote licensee unique ID generating means (see column 6, line 62 to column
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`Petitioners Ex. 1017 Page 11
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`Petitioners Ex. 1017 Page 11
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`

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`Application/Control Number: 90/010,831 '
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`Page 10
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`Art Unit: 3992
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`7, line 2 and column 10, lines 27-32); and wherein said remote licensee unique ID
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`generating means comprises software executed on a platform which includes the
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`algorithm utilized by said local licensee unique ID generating means to produce said
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`licensee unique ID (see column 10, lines 14-18 and 27-32).
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`As per claim 20, Hellman discloses a method comprising an intending licensee
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`operating a registration system for licensing execution of digital data in a use mode (see
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`abstract), said digital data executable on a platform, said system including local licensee
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`unique ID generating means (an ID, A, is created that is associated with a request that
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`includes information provided by and specific to a user, such as billing information, see
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`column 5, line 57 to column 6, line 15, making it effectively specific to the licensee; the
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`hash function used to generate the ID produces a number that is so unlikely to be
`
`reproduced independently that it is at least as unique that the IDs from the disclosure of
`
`the ‘216 patent, see column 6, lines 31-52. Since the generated ID is unique, is
`
`associated with the licensee, is not explicitly excluded by the ‘216 patent, and is used in
`the other elements of the claim in the same manner as that of the '216 patent's
`I
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`specification, it is functionally equivalent to the means disclosed in the ‘216 patent) and
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`remote licensee unique ID generating means (see column 6, lines 16-30 and column 6,-
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`line 62 to column 7, line 2), said system further including mode switching means (a
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`comparator, see column 10, lines 18-26) operable on said platform which permits use of
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`said digital data in said use mode on said platform only if a licensee unique ID
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`generated by said local licensee unique ID generating means has matched a licensee
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`unique ID generated by said remote licensee unique ID generation (see column 10,
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`Petitioners Ex. ‘I017 Page 12
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`Petitioners Ex. 1017 Page 12
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`

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`Application/Control Number: 90/010,831
`Art Unit: 3992
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`.
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`Page 11
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`lines 18-26; in the scenario where the number of authorized uses is previously 0, a
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`failure results in the product not being operable, see column 10, lines 44-54); and
`wherein said remote licensee unique ID generation comprises software executed on a
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`platform which includes the algorithm utilized by said local licensee unique ID
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`generation to produce said licensee unique ID (see column 10, lines 27-32).
`
`Claim Rejections - 35 usc § 103
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`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
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`obviousness rejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described as set
`forth in section 102 of this title, if the differences between the subject matter sought to be patented and
`the prior art are such that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said subject matter pertains.
`Patentability shall not be negatived by the manner in which the invention was made.
`
`Claims 1, 7-11, 19, and 20 are rejected under 35 U.S.C. 103(a) as being
`
`unpatentable over Hellman.
`
`As per claim 1, Hellman discloses a system including local licensee unique ID
`
`generating means (see column 10, lines 14-18, for local generation of C, which is the
`same as A, which is an ID remotely created that is associated with a request that
`
`includes information provided by and specific to a user, such as billing information, see
`
`column 5, line 57 to column 6, line 15, making it effectively specific to the licensee; the
`
`hash function used to generate the ID produces a number that is so unlikely to be
`
`reproduced independently that it is at least as unique that the IDs from the disclosure of
`
`Petitioners Ex. 1017 Page 13
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`Petitioners Ex. 1017 Page 13
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`

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`Application/Control Number: 90/010,831
`Art Unit: 3992
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`I
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`-
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`Page 12
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`the ‘216 patent, see column 6, lines 31-52, making it functionally equivalent to the
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`means disclosed in the '216 patent) and remote licensee unique ID generating means
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`(see column 6, lines 16-30 and column 6, line 62 to column 7, line 2), said system
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`further including mode switching means (a comparator that triggers the updating of
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`usage authorization, i.e. a switching of modes, on the software, see column 10, lines
`18-26) operable on said platform which permits use of said digitaldata in said use mode
`
`on said platform only if a licensee unique ID first generated by said local licensee
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`unique ID generating means has matched alicensee unique ID generated by said
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`remote licensee unique ID generation (see column 10, lines 18-26; in the scenario
`
`where the number of authorized uses is previously 0, a failure results in the product not
`being operable, see column 10‘, lines 44-54); and wherein said remote licensee unique
`
`ID generation comprises software executed on a platform which includes the algorithm
`
`utilized by said local licensee unique ID generating means to produce said licensee
`
`. unique ID (see column 7, lines 14-18 and 27-32; the program being executed is
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`implicitly part of the process, including the generation of H in figure 2 and column 10,
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`lines 33-43).
`
`Hellman does not disclose that the comparison using the local licensee unique ID
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`should only be against a remote licensee unique ID that has been subsequently
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`generated. However, the generations of these two values are independent of one
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`"another and it would be obvious to generate the |D’s in either order.
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`It is unclear whether or not the scope of the terms “loca| licensee unique ID
`
`generating means” and “remote licensee unique ID generating means” encompasses
`
`Petitioners Ex. 1017Page 14
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`Petitioners Ex. 1017 Page 14
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`

`
`Application/Control Number: 90/010,831
`‘Art Unit: 3992
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`T
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`Page 13
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`implementations that do not include a summer in the algorithm, as per the only
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`embodiment of the '216 patent). If it does not, then it is noted that the numerous
`cryptographic hash algorithms that comprise summations are well—known in the art,
`
`such as MD_,5 and SHA-1. Hellman stresses that the use of alternative algorithms might
`
`be advantageous, particularly an algorithm that could be computed more rapidly (see
`
`Hellman, column 7, line 67 to column 8, line 12). Therefore, it would have been obvious
`
`to modify the invention of Hellman by using an algorithm using an algorithm having
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`summation that could be computed morerapidly.
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`As per claims 7-9, He||man's algorithm for producing a platform ID (A), which
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`comprises the digital data, incorporates the platform unique key, K, which is a type of
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`_ “other platform information.” The software fails if the value of A has changed from its
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`original value (see column 9, lines 50-63).
`
`As per claims 10 and 11, Hellman does not explicitly discuss the architecture of
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`the computer on which the protected software is being executed; however, the use of
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`operating systems for such deployments is nearly universal and it is therefore implicit for
`
`such computers to have operating systems upon which such user applications are run.
`
`.
`
`Regarding claims 19 and 20, over and above the stated rejection under 35
`
`U.S.C. 102 above, it is unclear whether or not the scope of the terms “|ocal licensee
`
`unique ID generating means” and “remote licensee unique ID generating means”
`
`encompasses implementations that do not include a summer in the algorithm, as per
`
`the ‘only embodiment of the '216 patent). If it does not, then it is noted that the numerous
`
`cryptographic hash algorithms that comprise summations are well-known in the art,
`
`Petitioners Ex. 1017 Page 15
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`Petitioners Ex. 1017 Page 15
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`

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`Application/Control Number: 90/010,831
`Art Unit: 3992
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`V
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`V
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`'
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`Page 14
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`such as MD5 and SHA-1. Hellman stresses that the use of alternative algorithms might
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`be advantageous, particularly an algorithm that could be computed more rapidly (see
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`He||r'nan, column 7, line 67 to column 8, line 12). Therefore, it would have been obvious
`
`to modify the invention of Hellman by using an algorithm using an algorithm having
`
`summation that could be computed more rapidly.
`
`Claims 1-20 are rejected under 35 U.S.C. 103(a) as being unpatentable over
`
`Hellman in view of Grundy.
`
`Regarding claim 1, over and above the discussion above, it is unclear whether or
`not the scope of the terms “|oca| licensee unique ID generating means” and “remote
`
`licensee unique ID generating means” encompasses implementations that do not
`
`include a summer in the algorithm, as per the only embodiment of the '216 patent). If it
`
`does not, then it is noted that Hellman stresses that the use of alternative algorithms
`
`might be advantageous, particularly an algorithm that could be computed more rapidly
`(see Hellman, column 7, line 67 to column 8, line 12).
`I
`
`Grundy discloses an analogous algorithm for unique ID generation, wherein the
`
`unique ID, a registration code, is produced by performing a checksum of the user data
`
`component fields (see column 15, lines 3-23 and column 18, lines 25-29).
`
`Therefore, it would have been obvious to modify the invention of Hellman by
`
`using an algorithm using an algorithm having summation, as taught by Grundy, that
`
`could be computed more rapidly.
`
`Petitioners Ex. 1017 Page 16
`
`Petitioners Ex. 1017 Page 16
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`

`
`Application/Control Number: 90/010,831
`
`Page 15
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`Art Unit: 3992
`
`As per claim 2, He||man’s unique ID generating algorithm produces an ID that is
`at least as unique as that of the ‘216 invention from the four inputs for the party who is
`
`being billed, e.g. the user (see column 5, lines 59-63; column 9, lines 10-15; column 10,
`
`lines 14-18; column 27, lines 27-32; column 9, lines 58-63). The hash function used to
`
`generate the ID produces a number that is so unlikely to be reproduced independently
`
`that it is at least as unique that the IDs from the disclosure of the ‘216 patent, see
`
`column 6, lines 31-52).
`
`Although Hellman discloses the association between IDs and user data (e.g.
`
`billing information), Hellman does not disclose that the information being combined in
`
`the algorithm is uniquely descriptive of an intended licensee, but merely the intended
`
`|icensee’s computer.
`
`Grundy discloses an analogous algorithm for unique ID generation, wherein the
`
`unique ID, a registration code, is produced by performing a checksum of uniquely
`
`descriptive user data component fields (see column 15, lines 3-23 and column 18, lines
`
`25-29), and further notes a need for developers and distributors of information to
`
`harness the user's ability to copy and distribute their product (see column 4, lines 9-18).
`
`Therefore it would have been obvious to one of ordinary skill inthe art at the time
`
`the invention was made to modify the invention of Hellman by incorporating uniquely
`
`descriptive user data into the licensee’s ID, because of the need for developers and
`
`distributors of information to harness the user's ability to copy and distribute their
`
`product.
`
`Petitioners Ex. 1017 Page 17
`
`Petitioners Ex. 1017 Page 17
`
`

`
`Application/Control Number: 90/010,831
`
`Page 16
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`Art Unit: 3992
`
`Regarding claim 3, subsequent applications of the invention would require the
`
`use of the same unique ID in Hellman; therefore, subsequent uses of the algorithm
`
`would fail if the number were to change.
`
`As per claims 4 and 5, the software being validated, which is beingninput into the
`mode switching means, is used as an input to the unique ID generation system/(see
`column 10, lines 33-43).
`A
`
`As per claim 6, Hellman discloses that a name may be used in the production of
`
`the unique ID (H is derived from the name of the software, see column 6, lines 31-61)
`
`and that billing information is associated with the unique ID. Grundy discloses the use in
`
`the ID of an “owner data checksum” (see column 15, lines 10-13 and 49-68), which is
`
`derived from such user—entered fields as name and telephone number (see column 12,
`lines 36-38).
`I
`
`As per claims 7-9, He||man’s algorithm for producing a platform ID (A), which
`
`comprises the digital data, incorporates the platform unique key, K, which is a type of
`
`“other platform information.” The software fails if the value of A has changed from its
`
`original value (see column 9, lines» 50-63).
`As per claims 10 and 11, Hellman does not explicitly discuss the architecture of
`
`the computer on which the protected software is being executed; however, the use of 1
`
`operating systems for such deployments is nearly universal and it is therefore implicit for
`
`such computers to have operating systems upon which such user applications are run.
`
`Regarding claim 12, Hellman discloses a registration system generating a
`
`security key from information input to said software (see column 10, lines 14-18, for
`
`Petitioners Ex. 1017 Page 18
`
`Petitioners Ex. 1017 Page 18
`
`

`
`Application/Control Number: 90/010,831
`Art Unit: 3992
`
`Page 17
`
`local generation of C, which is the same as A, which is a security key); and wherein said
`
`registration system is replicated at a registration authority (see column 6, lines 16-30
`
`and column 6, line 62 to column 7, line 2) and used for the purposes of checking by the
`
`registration authority that the information unique to the user is correctly entered at the
`
`time that the security key is generated by the registration system.
`
`Hellman discloses the generating of a security key from various information and
`
`—
`
`A
`
`that the information is associated with a user (see column 10, lines 14-18, for local
`
`generation of C, which is the same as A, which is a key remotely created that is
`
`associated with a request that includes information provided by and specific to a user,
`
`such as billing information, see column 5, line 57 to column 6, line 15), but does not
`
`disclose that the information input for the security key to said software uniquely
`
`identifies an intended registered user of said software on a computer on which said
`
`software is to be installed.
`Grundy discloses the generation of a checksum,‘ which is used as a security key,
`
`that is derived at least in part from the user data (see column 15, lines 3-23 and column
`
`18, lines 25-29) and further notes a need for developers and distributors of information
`
`to harness the user’s ability to copy and distribute their product (see column 4, lines 9-
`
`18).
`
`Hellman also does not disclose the key is used for the purposes of checking by
`
`the registration authority that the information unique to the user is correctly entered at
`
`the time that the security key is generated by the registration system.
`
`Petitioners Ex. 1017 Page 19
`
`Petitioners Ex. 1017 Page 19
`
`

`
`Application/Control Number: 90/0_10,831
`
`Page 18
`
`Art Unit: 3992
`
`Grundy further discloses a check of entered user information by comparing the
`
`checksum from newly entered data to that which was previously generated (see column
`
`15, lines 13-26). One skilled in the art would recognize that this would helpnprevent data
`
`entry errors.
`
`Therefore it would have been obvious to one of ordinary skill in the art at the time
`
`the invention was made to modify the invention of Hellman as per Grundy, because of
`
`the need for developers and distributors of information to harness the user's ability to
`copy and distribute their product and to prevent data entry errors.
`
`As per claim 13, Hellman discloses the use of a registration number algorithm in
`
`A
`
`the security key generation (see column 10, lines 14-18).
`
`Regarding claim 14, Hellman further discloses that the key generation further
`
`comprises a key K (also SK) derived as part‘ of the algorithm via a table |ook—up from the
`
`platform's serial number (see column 6, lines 16-21).
`
`Regarding claims 15 and 16, although Hellman discloses that the use of
`
`demonstration modes in known in the art so that the customer may experiment with the
`
`software before making a buying decision (see column 2, lines 14-48), Hellman does
`
`not disclose boot checks, including a determination to allow for a demonstration mode
`
`after the first boot.
`
`Grundy discloses a boot check (see column 16, lines 39-49 and 64-68) and, if
`
`. shows a previous use, allows full use mode if authorization is successful and a
`
`demonstration mode othen/vise (see column 5, lines 37-49) that is based on hardware
`
`identification,_which is not user—configurable (see column 18, lines 34-44).
`
`Petitioners Ex. 1017 Page 20
`
`Petitioners Ex. 1017 Page 20
`
`

`
`Application/Control Number: 90/010,831
`
`—
`
`Page 19
`
`Art Unit: 3992
`
`Therefore it would have been obvious to one of ordinary skill in the art at the time
`
`was made to yet further modify Hellman as per Grundy, so that the customer may
`
`experiment with the software before making a buying decision.
`
`As per claim 17, Hellman discloses a method comprising providing mode-
`
`switching means (a comparator that triggers