UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box I450
`Alexandria. Virginia 22313-I450
`www.usplo.gov
`
`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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`90/012,179
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`03/06/20 I 2
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`54902 I6
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`RE-02—SA-2 I 6
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`5223
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`09/20/2012
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`-
`
`9605!
`7590
`um USA Inc.
`Legacy Town Center
`7160 Dallas Parkway
`Suite 380
`Plano, TX 75024
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`NM-VEN. ANDREW L
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`3992
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`MAIL DATE
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`09/20/20I2
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`NW“
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`DELIVERY MODE
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`PAPER
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`PTOL~90
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`(ev.
`A R W07)
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`Petitioners Ex. 1022 Page 1
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`Petitioners Ex. 1022 Page 1
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`

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`
`
`Commissioner for Patents
`United States Patent and Trademark Ofiice
`P.0. Box1450
`Alexandria, VA 2231 3-1450
`mswusptogov
`
`DO NOT USE IN PALM PRINTER
`
`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
`
`ROBERTS MLOTKOWSKI SAFRAN & COLE. P.C.
`
`_
`
`INTELLECTUAL PROPERTY DEPARTMENT
`
`P.O. BOX 10064
`
`MCLEAN, VA 22102-8064
`
`EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO. 90/012 179.
`
`PATENT NO. 5490216.
`
`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. 1022 Page 2
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`Petitioners Ex. 1022 Page 2
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`

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`Office Action in Ex Parte Reexamination
`
`Control No.
`90/012,179
`Examiner
`ANDREW NALVEN
`
`Patent Under Reexamination
`5490216
`Art Unit
`3992
`
`- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address —
`
`bI:] This action is made FINAL.
`.
`aC] Responsive to the communication(s) filed on
`cg A statement under 37 CFR 1.530 has not been received from the patent owner.
`
`A shortened statutory period for response to this action is set to expire 2 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 parte reexamination
`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
`will be considered timely.
`
`Part I
`
`THE FOLLOWING ATTACHMENT(S) ARE PART OF THIS ACTION:
`
`1. D Notice of References Cited by Examiner, PTO—892.
`
`3. D Interview Summary, PTO-474.
`
`2. D Information Disclosure Statement. PTO/SB/08.
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`4.
`
`CI
`
`.
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`Part II
`
`SUMMARY OF'ACTlON
`
`Claims 1-11 and 17-20 are subject to reexamination.
`
`Claims Q-1_(>‘ are not subject to reexamination.
`
`Claims Z have been canceled in the present reexamination proceeding.
`
`Claims Z-_9_ are patentable and/or confirmed.
`
`Claims 1-6 10 11 17-20 are rejected.
`
`Claims j are objected to.
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`The drawings, filed on __ are acceptable.
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`. CI The proposed drawing correction, filed on j has been (7a)|___I approved (7b)I:] disapproved.
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`.
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`I:] Acknowledgment is made of the priority claim under 35 U.S.C. § 119(a)-(d) or (f).
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`a)D All b)C] Some‘ c)|:] None
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`of the certified copies have
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`V 1|: been received.
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`2:] not been received.
`
`3I:] been filed in Application No.
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`4[:] 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.
`
`9. E] 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. |:] Other:
`
`if third . .
`uester
`US. Patent and Trademark Office
`
`PTOL-466 (Rev. 08-06)
`
`Office Action in Ex Parte Reexamination
`
`Part of Paper No. 20120814
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`Petitioners Ex. 1022 Page 3
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`Petitioners Ex. 1022 Page 3
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`

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`Application/Control Number: 90/012,179
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`Page 2
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`Art Unit: 3992
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`DETAILED ACTION
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`I. Procedures Governing Reexamination
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`Proposed Amendments, Affidavits, or Declarations
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`In order to ensure full consideration of any amendments, affidavits or declarations, or
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`other documents as evidence of patentability, such documents must be submitted in response to
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`this Office action. Submissions after the next Office action, which is intended to be a final
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`action, will be governed by the requirements of 37 CFR 1.116, after final rejection and 37 CFR
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`41.33 after appeal, which will be strictly enforced.
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`Patent owner is notified that any proposed amendment to the specification and/or claims
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`in this reexamination proceeding must comply with 37 CFR l.530(d)-(j), must be formally
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`presented pursuant to 37 CFR 1.52(a) and (b), and must contain any fees required by 37 CFR
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`l.20(c).
`
`Extensions of Time
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`Extensions of time under 37 CFR 1.l36(a) will not be permitted in these proceedings
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`because the provisions of 37 CFR 1.136 apply only to "an applicant" and not to parties in a
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`reexamination proceeding. Additionally, 35 U.S.C. 305 requires that reexamination proceedings
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`"will be conducted with special dispatch" (37 CFR l.550(a)). Extension of time in ex parte
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`reexamination proceedings are provided for in 37 CFR 1.550(c).
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`Petitioners Ex. 1022 Page 4
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`Petitioners Ex. 1022 Page 4
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`

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`Application/Control Number: 90/012,179
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`Page 3
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`Art Unit: 3992
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`Concurrent Litigation
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`The patent owner is reminded of the continuing responsibility under 37 CFR 1.565(a) to
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`apprise the Office of any litigation activity, or other prior or concurrent proceeding, involving the
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`patent at issue in this reexamination proceeding throughout the course of this reexamination
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`proceeding. The third party requester is also reminded of the ability to similarly apprise the .
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`Office of any such activity or proceeding throughout the course of this reexamination
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`proceeding. See MPEP §§ 2207, 2282 and 2286.
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`II. Summary of the Reexamination Proceeding
`
`On March 6, 2012, reexamination was requested for claims 1-11 and 17-20 of US Patent
`
`No. 5,490,216 ("the '216 patent") in light of the following patents and printed ‘publications:
`
`1.
`
`U.S. Patent No. 4,599,489 to Cargile, issued July 8, 1986, entitled "Solid State
`
`Key for Controlling Access to Computer Software" (hereinafter "Cargile").
`
`2.
`
`W0 92/09160 to Waite et a1., published 29 May 1992, entitled "A Secure System i
`
`for Activating Personal Computer Software at Remote Locations" (hereinafter "Waite").
`
`3.
`
`U.S. Patent No. 4,779,224 to Moseley et al., issued October 18, 1988, entitled
`
`"Identify Verification Method and Apparatus" (hereinafter "Moseley").
`
`4.
`
`Held, "Understanding Data Communications, Third Edition," © 1988 & 1991 by
`
`SAMS, Third Edition, Second Printing - 1992, pgs. 220-221 (hereinafter "Held").
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`Petitioners Ex. 1022 Page 5
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`Petitioners Ex. 1022 Page 5
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`

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`Application/Control Number: 90/012,179
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`Art Unit: 3992
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`Page 4
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`’
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`On March 29, 2012, an order granting reexamination of claims 1-11 and 17-20 was
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`mailed that found that the Cargile and Waite references raised a substantial new question of
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`patentability over the requested claims.
`
`III. Grounds of Rejection
`
`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 —
`
`(a) the invention was known or used by others in this country, or patented or described in a printed publication in this
`or a foreign country, before the invention thereof by the applicant for a patent.
`
`(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.
`
`(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed
`in the United States before the invention by the applicant for patent or (2) a patent granted on an application for
`patent by another filed in the United States before the invention by the applicant for patent, except that an
`international application filed under the treaty defined in section 35l(a) shall have the effects for purposes of this
`subsection of an application filed in the United States only if the international application designated the United
`States and was published under Article 21(2) of such treaty in the English language.
`
`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
`
`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, 2 10, 11, 19, and 20 are rejected under 35 U.S.C. 102(b) as being anticipated
`
`as detailed below. Further, the proposed rejection of claims 1, 2, 10, 11, 19, and 20 set forth in
`
`the March 6, 2012 request for reexamination on pages 35-51 is incorporated by reference.
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`Petitioners Ex. 1022 Page 6
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`Petitioners Ex. 1022 Page 6
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`

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`Application/Control Number: 90/012,179
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`Page 5
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`Art Unit: 3992
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`With regards to claim 1, Cargile teaches a registration system for licensing execution of
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`digital data in a use mode, (Cargile, column 1 lines 7-12 - ”This invention relates to apparatus
`
`for affording access to computer software only by authorized persons, and more particularly to
`
`apparatus physically independent ofthe computer equipment but capable ofexecuting an
`
`algorithm that can also be executed by the computer equipment to aflord access. "),
`
`said digital data executable on a platform (Cargile, Abstract - ”The computer executes a
`
`similar procedure on the stimulus number so that access to the software program is aflorded
`
`only ifcorrespondence exists between the user input password and the password generated in
`
`the computer. ")
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`said system including local licensee unique ID generating means (Cargile discloses the
`
`local licensee unique ID means in the form ofthe computer executing the password generating
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`algorithm, column 5 lines 17-25 - "Computer 34 contains a stored seed number schematically
`
`represented at 44. The value ofthe stored seed is representative ofthe number or state to which
`
`password generator 32 in the key has been initialized The value ofthe stored seed uniquely
`
`associates the key and the software program resident in computer 34. The computer also
`
`includes code for executing a password-generating algorithm, indicated diagrammatically at 46,
`
`so that the computer can produce, from the combination ofthe current date input by the user to
`
`keyboard 40 and stored seed 44, a passwordf(date) which corresponds to the password
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`produced in key 12’ and displayed on display 18."; igure 2; column 3 lines 58-65 - ”The top
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`surface ofkey 12 isformed with a circular recess 20. The bottom surface ofthe recess contains
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`one or more contact points 22, or openings in alignment with contact points within cavity 14, for
`
`establishing electrical contact with the circuitry 16 within the key. The contact points are
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`Petitioners Ex. 1022 Page 7
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`Petitioners Ex. 1022 Page 7
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`Application/Control Number: 90/012,179
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`Page 6
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`Art Unit: 3992
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`employed when the key is set or initialized during manufacture to load a code or bit pattern fla_t
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`is unique to each user. ")
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`and remote licensee unique ID generating means (Cargile discloses the remote licensee
`
`unique ID means in the form ofthe key/device executing the password generating algorithm
`
`using the unique code/bit pattern initialized during the manufacture ofthe key, Abstract - ”The
`
`device includes a continuously running pulse generator that produces an output representative of
`
`real time, a shift register permanently storing a unique number and circuitryfor executing an
`
`algorithm that combines real time and the permanently stored unique number to produce a
`
`password. The password is input to the computer. "),
`
`said system further including mode switching means operable on said platform which
`
`permits use of said digital data in said use mode on said platform only if a licensee unique ID
`
`first generated by said local licensee unique ID generating means has matched a licensee unique
`
`ID subsequently generated by said remote licensee unique ID generating means (Cargile, column
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`5 lines 25-36 - "Also within computer 34 is comparison logic indicated at 48for comparing the
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`password generated by password generator 46 and the password input by the user to keyboard
`
`42. Decision logic 49 determines subsequent action depending on whether correspondence
`
`between f(date) andf (date) exists. Correspondence between the two passwords causes the
`
`protected software to run, indicated schematically at 50; inequality results in a screen prompt or
`
`message to the user, indicated at 52, and termination ofthe attempted access to the program,
`
`indicated at 54. ”; column 5 lines 43-65 — “The operation ofthe system described to this point
`
`requires the user to activate computer 34 so that the video display requests the user via screen
`
`prompt 36 to input the current date to the computer... The date supplied to keyboard 40 is
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`Petitioners Ex. 1022 Page 8
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`Petitioners Ex. 1022 Page 8
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`Application/Control Number: 90/012,179
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`Page 7
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`Art Unit: 3992
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`coupled to password generator 46 which, as alluded to previously, produces a password that is a
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`function, f(date), ofthe current date. Such password is applied as one input to comparator 48.
`
`Another consequence ofa date in properform being applied to the keyboard is that the computer
`
`produces via a control path 5 7 a second screen prompt, indicated at 38, which instructs the user
`
`to input the user ’s password. The password is produced by key 12’ and displayed on display 18.
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`The user's input ofthe password gleanedfrom display 18 is indicated schematically at 58, the
`
`password being typed into the computer keyboard at 42. ”);
`
`and wherein said remote licensee unique ID generating means 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 (Cargile, Abstract - "The device includes...
`
`circuitryfor executing an algorithm that combines real time and the permanently stored unique
`
`number to produce a password. The password is input to the computer. The computer is coded to
`
`execute an equivalent algorithm to produce a password within the computer. The two passwords
`
`are compared and access to the computer program is afforded only ifthey bear a prescribed
`
`relationship. ”).
`
`With regards to claim 2, Cargile teaches the system of claim 1, wherein said local
`
`licensee unique ID generating means generates said local licensee unique ID by execution of a
`
`registration algorithm which combines information in accordance with said algorithm (Cargile,
`
`column 5 lines 1 7-25 - ”The computer also includes code for executing a password-generating
`
`algorithm, indicated diagrammatically at 46, so that the computer can produce. fiom the
`
`combination of the current date input by the user to keyboard 40 and stored seed 44, a password
`
`Petitioners Ex. 1022 Page 9
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`Petitioners Ex. 1022 Page 9
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`Application/Control Number: 90/012,179
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`Page 8
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`Art Unit: 3992
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`ffiaflz which corresponds to the passwordproduced in key 12’ and displayed on display 18. "See
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`also FIG. 2.),
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`said information uniquely descriptive of an intending licensee of said digital data to be
`
`executed in said use mode (Cargile - column 3 lines 58-65 - "The top surface ofkey 12 is formed
`
`with a circular recess 20. The bottom surface ofthe recess contains one or more contact points
`
`22, or openings in alignment with contact points within cavity 14, for establishing electrical
`
`contact with the circuitry 16 within the key. The contact points are employed when the key is set
`
`or initialized during manufacture to load a code or bit pattern that is unique to each user. ").
`
`With regards to claim 10, Cargile teaches the system of claim 1, wherein said
`
`platform comprises a computer operating system enviromnent (Cargile, column 5 lines 4-11 —
`
`“computer containing a software program to which access is sought. The computer can be a
`
`mainframe, mini or micro and includes a video display screen on which user prompts, indicated
`
`at 36 and 38, can be displayed"; see also Abstract).
`
`With regards to claim 11, Cargile teaches the system of claim 10, wherein said digital
`
`data comprises a software program adapted to run under said operating system environment
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`(Cargile, column 1 lines 15-24 — “Computer software, whether in the form ofan operating
`
`system program or an application program, is typically stored in media that aflord convenient
`
`access to a user. Exemplifizing such media axe main computer memory as well as peripherals
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`Petitioners Ex. ‘I022 Page 10
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`

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`Application/Control Number: 90/012,179
`Art Unit: 3992
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`_
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`Page 9
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`such as magnetic disks, magnetic diskettes or magnetic tape. Software on such media requires
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`substantial time and money to develop and it is desired in most cases to limit access to the
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`software to only certain persons. '9.
`
`With regards to claim 19, Cargile teaches a remote registration station incorporating
`
`remote licensee unique ID generating means (Cargile, Abstract - ”The device includes a
`
`continuously running pulse generator that produces an output representative ofreal time, a shift
`
`register permanently storing a unique number and circuitryfor executing an algorithm that
`
`combines real time and the permanently stored unique number to produce a password. The
`
`password is input to the computer. ”; column 4 lines 22-38 - ”Referring to FIG. 2, there is a key
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`12’ which is somewhat less complex than that shown in FIG. 1 in that key 12’ is not equipped
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`with sensors 28a-28d. Key 12 includes a crystal controlledpulse generator 30 that produces a
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`series oftiming pulses that count real time. In one device designed in accordance with the
`
`invention, pulse generator 30 produces one pulse per day. The timing pulses supplied by pulse
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`generator 30 are coupled to a password generator 32. The password generator produces a
`
`unique combination ofbinary digits depending on the number ofdate pulses that have been
`
`supplied to it by pulse generator 30 since initialization. Thus the binary bit pattern produced by
`
`password generator 32 is a function ofthe current date, referred to in this description and in
`
`FIG. 1 as f (date). "; column 1 lines 57-60; column 3 lines 58-65),
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`said station forming part of a registration system for licensing execution of digital data in
`
`a use mode (Cargile, Abstract; column 1 lines 7-12 - ”This invention relates to apparatus for
`
`Petitioners Ex. ‘I022 Page 11
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`Petitioners Ex. 1022 Page 11
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`Application/Control Number: 90/012,179
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`Page 10
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`Art Unit: 3992
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`aflording access to computer software only by authorizedpersons, and more particularly to
`
`apparatus physically independent ofthe computer equipment but capable ofexecuting an
`
`algorithm that can also be executed by the computer equipment to aflord access. "),
`
`said digital data executable on a platform (Cargile, column 5 lines 4-I1 — “computer
`
`containing a software program to which access is sought. The computer can be a mainframe,
`mini or micro and includes a video display screen on which userprompts, indicated at 3 and
`
`38, can be displayed”; see also Abstract and column 1 lines 7-12),
`
`said system including local licensee unique ID generating means (Cargile, column 5 lines
`
`1 7-25 - ”The computer also includes code for executing a password-generating algorithm,
`
`indicated diagrammatically at 46, so that the computer can Qroduce, fiom the combination of the
`
`current date input by the user to keyboard 40 and stored seed 44, a password fldate) which
`
`corresponds to the passwordproduced in key 12’ and displayed on display 18. ” See also FIG. 2,
`
`Abstract, column 3 lines 58-65, column 2 lines 16-19),
`
`said system further including mode switching means operable on said platform which
`
`permits use of said digital data in said use mode on said platform only if a licensee unique ID
`
`generated by said local licensee unique ID generating means has matched a licensee unique ID
`
`generated by said remote licensee unique ID generating means (Cargile, column 5 lines 25-36 -
`
`"Also within computer 34 is comparison logic indicated at 48for comparing the password
`
`generated by password generator 46 and the password input by the user to keyboard 42.
`
`Decision logic 49 determines subsequent action depending on whether correspondence between
`
`f(date) andf (date) exists. Correspondence between the two passwords causes the protected
`
`software to run, indicated schematically at 50; inequality results in a screen prompt or message
`
`Petitioners Ex. ‘I022 Page 12
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`Petitioners Ex. 1022 Page 12
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`Application/Control Number: 90/012,179
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`Page 11
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`Art Unit: 3992
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`to the user, indicated at 52, and termination ofthe attempted access to the program, indicated at
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`54. ”; see also Abstract, column 5 lines 37-41);
`
`and wherein said remote licensee unique ID generating means 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 (Cargile, column 1 lines 3 7-41 - The key
`
`contains solid state or semiconductor electronic elements that can execute a prescribed
`
`algorithm to produce a code which the computer receives and affords access to the software if
`
`the code is correct. ; Abstract - ”The device includes... circuitryfor executing an algorithm that
`
`combines real time and the permanently stored unique number to produce a password. The
`
`password is input to the computer. The computer is coded to execute an equivalent algorithm to
`produce a password within the computer. The two passwords are compared and access to the
`
`computer program is aflorded only ifthey bear a prescribed relationship. "; column 1 lines 5 7-
`
`60).
`
`With regards to claim 20, Cargile teaches a method of registration of digital data so as
`
`to enable execution of said digital data in a use mode (Cargile, column 1 lines 7-12 - "This
`
`invention relates to apparatus for aflording access to computer software only by authorized
`
`persons, and more particularly to apparatus physically independent ofthe computer equipment
`
`but capable ofexecuting an algorithm that can also be executed by the computer equipment to
`
`afford access. '9,
`
`said method comprising an intending licensee operating a registration system for
`
`licensing execution of digital data in a use mode (Cargile, column 5 lines 25-36 - "Also within
`
`Petitioners Ex. ‘I022 Page 13
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`Petitioners Ex. 1022 Page 13
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`Application/Control Number: 90/012,179
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`Page 12
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`Art Unit: 3992
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`computer 34 is comparison logic indicated at 48for comparing the password generated by
`
`password generator 46 and the password input by the user to keyboard 42. Decision logic 49
`
`determines subsequent action depending on whether correspondence between f(date) andf (date)
`
`exists. Correspondence between the two passwords causes the protected software to run,
`
`indicated schematically at 50; inequality results in a screen prompt or message to the user,
`
`indicated at 52, and termination ofthe attempted access to the program, indicated at 54. ”;
`
`column 5 lines 43-65 — “The operation ofthe system described to this point requires the user to
`
`activate computer 34 so that the video display requests the user via screen prompt 36 to input the
`
`. current date to the computer... The date supplied to keyboard 40 is coupled to password
`
`generator 46 which, as alluded to previously, produces a password that is a function, f(date), of
`
`the current date. Such password is applied as one input to comparator 48. Another
`
`consequence ofa date in proper form being applied to the keyboard is that the computer
`
`produces via a control path 5 7 a second screen prompt, indicated at 38, which instructs the user
`
`to input the user's password. The password is produced by key 12' and displayed on display 18.
`
`The user's input ofthe password gleanedfrom display 18 is indicated schematically at 58, the
`
`password being typed into the computer keyboard at 42. ”),
`
`said digital data executable on a platform (Cargile, column 5 lines 4-11 — “computer
`
`containing a software program to which access is sought. The computer can be a mainframe,
`
`mini or micro and includes a video display screen on which user prompts, indicated at 36 and
`
`38, can be displayed"; see also Abstract and column 1 lines 7-12),
`
`said system including local licensee unique ID generating means and remote licensee
`
`unique ID generating means (Cargile discloses the local licensee unique ID means in the form of
`
`Petitioners Ex. ‘I022 Page 14
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`Petitioners Ex. 1022 Page 14
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`Application/Control Number: 90/012,179
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`Art Unit: 3992
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`Page 13
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`'
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`the computer executing the password generating algorithm, column 5 lines 1 7-25 - "Computer
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`34 contains a stored seed number schematically represented at 44. The value ofthe stored seed
`
`is representative ofthe number or state to which password generator 32 in the key has been
`
`initialized. The value ofthe stored seed uniquely associates the key and the software program
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`resident in computer 34. The computer also includes code for executing a password-generating
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`algorithm, indicated diagrammatically at 46, so that the computer can produce, from the
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`combination ofthe current date input by the user to keyboard 40 and stored seed 44, a password
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`f(date) which corresponds to the password produced in key 12’ and displayed on display 18.";
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`Figure 2; column 3 lines 58-65 - ”The top surface ofk_eQ2 is formed with a circular recess 20.
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`The bottom surface ofthe recess contains one or more contact points 22, or openings in
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`alignment with contact points within cavity 14, for establishing electrical contact with the
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`circuitry 16 within the key. The contact points are employed when the key is set or initialized
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`during manufacture to load a code or bit pattern that is unique to each user. '9,
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`said system further including mode switching means operable on said platform which
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`pennits use of 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 unique ID
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`generated by said remote licensee unique ID generating means (Cargile, column 5 lines 25-36 -
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`"Also withincomputer 34 is comparison logic indicated at 48for comparing the password
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`generated by password generator 46 and the password input by the user to keyboard 42.
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`Decision logic 49 determines subsequent action depending on whether correspondence between
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`f(date) andf (date) exists. Correspondence between the two passwords causes the protected
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`software to run, indicated schematically at 50; inequality results in a screen prompt or message
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`Petitioners Ex. ‘I022 Page 15
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`Petitioners Ex. 1022 Page 15
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`

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`Application/Control Number: 90/012,179
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`Page 14
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`Art Unit: 3992
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`to the user, indicated at 52, and termination ofthe attempted access to the program, indicated at
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`54. ”; see also Abstract, column 5 lines 37-41);
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`and wherein said remote licensee unique ID generating means comprises software
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`executed on a platform which includes the algorithm utilized by said local licensee unique ID
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`generating means to produce said licensee unique ID (Cargile, column 1 lines 37-41 - The key
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`contains solid state or semiconductor electronic elements that can execute a prescribed
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`algorithm to produce a code which the computer receives and aflords access to the software if
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`the code is correct. ,' Abstract - ”The device includes... circuitryfor executing an algorithm that
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`combines real time and the permanently stored unique number to produce a password. The
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`password is input to the computer. The computer is coded to execute -an equivalent algorithm to
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`produce a password within the computer. The two passwords are compared and access to the
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`computer program is afforded only ifthey bear a prescribed relationship. ”; column 1 lines 5 7-
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`60).
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`Claims 3-6, 17, and 18 are rejected under 35 U.S.C. 103(a) as being unpatentable over
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`Cargile in View of Waite. Further, the proposed rejection of claims 3-6, 17, and 18 set forth in the
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`March 6, 2012 request for reexamination on pages 52-66 is incorporated by reference.
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`With regards to claim 3, Cargile fails to teach said mode switching means permits
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`operation of said digital data in said use mode in subsequent execution of said digital data only if
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`said licensee unique ID generated by said local licensee unique ID generating means has not
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`changed. However, Waite teaches said mode switching means permits operation of said digital
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`Petitioners Ex. ‘I022 Page 16
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`Petitioners Ex. 1022 Page 16
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`

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`Application/Control Number: 90/012,179
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`Page 15
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`Art Unit: 3992
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`data in said use mode in subsequent execution of said digital data only if said licensee unique ID
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`generated by said local licensee unique ID generating means has not changed (Waite, Page 10
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`lines 24-30 - "The stored CRC value is compared to the cyclic redundancy check value computed
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`by the loader segment each time the overlay is loaded Ifthe cyclic redundancy check values do
`not agree, the loader segment will exit to the operating system. Thus, any change to the overlay
`file contents renders the overlayfile defunct, unless a corresponding change the stored cyclic
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`redundancy check value is also made. ").
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`At the time the invention was made, it would have been obvious to one of ordinary skill ‘
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`in the art to utilize Waite’s method of determining that a license has not changed before a
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`subsequent execution of a software program because it offers the advantage of increasing
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`security and preventing license abuse after the activation of the protected program by checking
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`the license data upon program reactivation (Waite, page 10).
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`With regards to claim 4, Cargile as modified teaches the system of claim 3, wherein
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`said local licensee unique ID generating means comprises part of said digital data when executed
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`on said platform (Waite, Page 11 lines 29-32 - ”The loader segment 18 is a special purpose
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`Subprogram that is linked with the main program files ofthe productfiapplication program by a
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`technique that renders the main programfiles inoperable ifthe loader program is removed or
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`bypassed. ”; see also Abstract).
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`With regards to claim 5, Cargile as modified teaches the system of claim 4, wherein
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`said mode switching means comprises part of said digital data when executed on said platform
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`Petitioners Ex. ‘I022 Page 17
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`Petitioners Ex. 1022 Page 17
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`

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`Application/Control Number: 90/012,179
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`Page 16
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`Art Unit: 3992
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`Waite, Page 11 lines 29-32 - "The loader segment 18 is a special purpose subprogram that is
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`linked with the main program files ofthe product application program by a technique that
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`renders the main program files inoperable ifthe loader program is removed or bypassed. "; see
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`also page 9 lines 8-27 andpage 10 lines 18-2 7).
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`With regards to claim 6, Cargile as modified teaches the system of claim 5, wherein the
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`information utilized by said local licensee unique ID generating means to produce said licensee
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`unique ID comprises prospective licensee details including at least one of payment details,
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`contact details and name (Waite, page 7 lines 13-17 - The registration shell program 11 would
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`provide a data entryform which would be displayed on the licensee PC, requesting the licensee
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`to provide identification information, such as a billing address, an account number and the term
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`ofthe license, etc.).
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`With regards to claim 17, Cargile teaches a method of control of distribution of
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`, software (Cargile, column 1 lines 7-12 - "This invention relates to apparatus for ajfording access
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`to computer software only by authorizedpersons, and more particularly to apparatus physically
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`independent ofthe computer equipment bu