UNITED STATES PATENT AND TRADEMARK OFFICE
`
`' UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Oflice
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1451)
`Alexandna. Virginiu 2313-I450
`www.uspIu.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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`90/0I0.83I
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`0|/22/20l0
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`5.490.216
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`'
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`6620~83067-OI
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`»
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`22 I4
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`7590
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`04/09/2010
`
`ABELMAN, FRAYNE & SCHWAB
`150 EAST 42nd STREET
`NEW YORK, NY 10017-5612
`
`EXAMINER
`
`PAPERNUMBER
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`DATE MAILED: 04/09/2010
`9
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`W0-9°C <Rev. 10/03>
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`PETITIONERS EX. 1012
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`UNI TED STATES PATENT AND TRADEMARK OFFICE
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` ’x ‘
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`DO NOT use IN PALM PRINTER
`(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
`
`Commissionerfor Patents
`United States Patent and Trademark Olfice
`P.0. Box14so
`Alexandria, VA 22313-1450
`vw~.wuspno.gov
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`ED
`
`MAIL
`0 9
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`_ cemm REEXAMll\lATl0N UNIT
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`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.
`
`ART UNIT 3992.
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`Enclosed is a copy of the latest communication from the United States Patent and Trademark A
`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(9)).
`
`PTOL-465 (Rev.07-04)
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`PETITIONERS EX. 1012
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`*
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`. Page 2
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`Control No.
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`90/010,831
`Examiner
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`Patent Under Reexamination
`
`5,490,216
`Art Unit
`
`MATTHEW HENEGHAN
`
`3992
`
`
`
`Order Granting / Denying Request For
`Ex Parte Reexamination
`
`
`
`
`
`--The MAILING DA TE of this communication appears on the cover sheet with the correspondence address--
`
`The request for ex parte reexamination filed 22 January 2010 has been considered and a determination has
`been made. An identification of the claims, the references relied upon, and the rationale supporting the
`determination are attached.
`'
`
`
`Attachments: a)l:I PTO—892,
`
`
` b)lZI PTO/SB/O8,
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`c)|:] Other:
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`1.
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`The request for ex parte reexamination is GRANTED.
`
`RESPONSE TIMES ARE SET AS FOLLOWS:
`
`
`
`For Patent Owner's Statement (Optional): TWO MONTHS from the mailing date of this communication
`(37 CFR 1.530 (b)). EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.550(c).
`
`
`
`
`
`
`
`For Requester's Reply (optional): TWO MONTHS from the date of service of any timely filed
`Patent Owner's Statement (37 CFR 1.535). NO EXTENSION OF THIS TIME PERIOD IS PERMITTED.
`If Patent Owner does not file a timely statement under 37 CFR 1.530(b), then no reply by requester
`is permitted.
`
`
`
`
`
`
`2. E] The request for ex parte reexamination is DENIED.
`
`This decision is not appealable (35 U.S.C. 303(c)). Requester may seek review by petition to the
`Commissioner under 37 CFR 1.181 within ONE MONTH from the mailing date of this communication (37
`CFR 1.515(c)). EXTENSION OF TIME TO FILE SUCH A PETITION UNDER 37 CFR1.181 ARE
`AVAILABLE ONLY BY PETITION TO SUSPEND OR WAIVE THE REGULATIONS UNDER
`37 CFR 1.183.
`
`
`
`a) C] by Treasury check or,
`
`
`b) 1:] by credit to Deposit Account No.
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`,0I'
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`In due course, a refund under 37 CFR 1.26 ( c ) will be made to requester:
`
`
`c) El by credit to a credit card account, unless othenivise notified (35 U.S.C. 303(c)).
`
`
`
`ifthird art
`cc:Reuester
`US. Patent and Trademark Offica
`
`reuester
`
`PTOL-471 (Rev. 08-06)
`
`Office Action in Ex Parte Reexamination
`
`Part of Paper No. 20100331
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`Page 3
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`

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`Application/Control Number: 90/010,831
`Art Unit: 3992
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`H
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`Page 2
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`DECISION GRANTING EX PARTE EXAMINATION
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`Reexamination
`
`An Ex Parte Reexamination has been requested by a third party on 22 January
`
`2010 for claims 1-20 of U.S. Patent No. 5,490,216 (hereinafter ”the ‘216 patent”),
`
`granted on 6 February 1996.
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`A substantial new question of patentability affecting claims 1-20 of United States
`
`Patent Number 5,490,216 is raised by the request for ex parte reexamination.
`
`The patent owner is reminded of the continuing responsibility under 37 CFR
`
`1.565(a) to apprise the Office of any litigation activity, or other prior or concurrent
`
`proceeding, involving Patent No. 5,490,216 throughout the course of this reexamination
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`proceeding. The third party requester is also reminded of the ability to similarly apprise
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`the 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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`Extensions of time under 37 CFR 1.136(a) will not be permitted in these
`
`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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`Application/Control Number: 90/010,831
`Art Unit: 3992
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`'
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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(0).
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`References Submitted by Requester
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`U.S. Patent No. 4,658,093 to Richardson, Ill (hereinafter Richardson)
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`U.S. Patent No. 4,796,220 to Grundy (hereinafter Grundy)
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`U.S. Patent No. 5,291,598 to Wolfe (hereinafter Wolfe)
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`U.S. Patent No. 5,490,216 to Hellman (hereinafter Hellman)
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`None of the references cited above were discussed by the'Office in a previous
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`examination or reexamination proceeding.
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`Prosecution History
`
`The ‘216 patent was originally filed as Application No. 08/124,718 on 21
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`September 1993, having claims 1-30.
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`In a non-final rejection mailed by the Office on 24 June 1994, claims 1-30 were
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`rejected. Claims 22-24 and 27-29 were rejected under 35 U.S.C. 101, claims 13-18 and
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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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`27-29 were rejected under 35 U.S.C. 112, second paragraph, and claims 1-30 were
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`rejected under 35 U.S.C. 102(e) over U.S. Patent No. 5,222,133 to Chou et al.
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`After the Applicant filed an amendment on 27 December 1994 cancelling claims
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`22-24 and 27-29, the Office mailed a second non-final rejection on 30 March 1995,
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`rejecting claims 1-21, 25, 26, and 30 under 35 U.S.C. 103 over U.S. Patent No.
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`5,291,598 to Grundy. The rejection under_35 U.S.C. 112, second paragraph of claims
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`13-18 was not maintained.
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`in an amendment filed 5 July 1995, the Applicant cancelled claims 1-21, 25, 26,
`
`and 30 (i.e. all remaining claims to that point) and added claims 31-50. The Applicant
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`argued that the cited prior art did not teach:
`
`“(a) The ‘Licensee Unique ID’ on which the registration system relies for matching for
`verification purposes is generated locally, and
`I
`I
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`(b) The algorithm used to generate locally the ‘Licehsee Unique ID’ is replicated
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`remotely for the purposes of remote generation of a separate ‘Licensee Unique ID’ for
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`matching purposes.”
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`and
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`“(1) A direct comparison for matching purposes of the licensee unique ID data at the
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`local location, and
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`(2) Aconfirmation that the user details provided to the remote location match identically
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`with the user details provided to the software to be protected and from which the unique
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`ID is generated.”
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`Application/Control Number: 90/010,831
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`Page 5
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`Art Unit: 3992
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`The Office mailed a Notice of Allowance on 8 August 1995 without further V
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`comment.
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`None of the claims of the ‘216 patent have been subject to a final holding of
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`invalidity by a court.
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`Claims of the ‘216 Patent
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`The following are the 5 independent claims of the ‘216 patent:
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`Claim 1:
`
`1. A registration system for licensing execution of digital data in a use mode,
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`said digital data executable on a platform, said system including
`
`local licensee unique ID generating means and remote licensee unique ID
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`generating means,
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`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 lDfirst generated by said local licensee unique ID generating means
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`has matched a licensee unique ID subsequently generated by said remote licensee
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`unique ID generating means; and
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`Application/Control Number: 90/010,831
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`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
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`unique ID generating means to produce said licensee unique ID.
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`12. A registration system attachable to software to be protected,
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`said registration system generating a security key from information input to said
`
`software which uniquely identifies an intended registered user of said software on a
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`computer on which said software is to be installed; and
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`wherein said registration system is replicated at a registration authority and used
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`for the purposes of checking by the registration authority that the information unique to
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`the user is correctly entered at the time that the security key is generated by the
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`registration system.
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`17. A method of control of distribution of software, said method comprising
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`providing mode-switching means associated with said software adapted to switch
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`said software between a fully enabled mode and a partly enabled or demonstration
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`mode,
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`said method further comprising providing registration key generating means
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`adapted to generate a ‘registration key’ which is a function ofinformation unique to an
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`intending user of the software;
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`said mode-switching means switching said software into fully enabled mode only
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`if an enabling key provided to said mode-switching means by said intending user at the
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`time of registration of said software has matched identically with said registration "key;
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`and
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`wherein said enabling key is communicated to said intending user at the time of
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`registration of said software;
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`said enabling key generated by a third party means of operation of a duplicate
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`copy of said registration key generating means.
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`19. A remote registration station incorporating remote licensee unique ID
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`generating means, said station forming part of a registration system for licensing
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`execution of digital data in a use mode, said digital data executable on a platform, said
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`system including
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`local licensee unique ID generating means,
`
`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
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`means; and
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`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
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`unique ID generating means to produce said licensee unique ID.
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`Application/Control Number: 90/010,831
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`Art Unit: 3992
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`20. A method of registration of digital data so as to enable execution of said
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`digital data in a use mode, said method comprising
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`an intending licensee operating a registration system for licensing execution of
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`digital data in a use mode,
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`said digital data executable on a platform,
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`said system including local licensee unique ID generating means and remote
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`licensee unique ID generating means, said system further including mode switching
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`means operable on said platform which permits use of said digital data in said use
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`mode on said platform only if a licensee unique ID generated by said local licensee
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`unique ID generating means has matched a licensee unique ID generated by said
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`remote licensee unique ID generatingmeans; and
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`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
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`unique ID generating means to produce said licensee unique ID.
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`Substantial New Questions of Patentability (SNQ)
`
`Hellman
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`Hellman discloses a software authorization system where a locally generated
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`code (C, see column 10, lines 14-18) is compared to a remotely generated code (A, see
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`column 6, lines- 3-8) to determine authorization (see column 10, lines 18-26). This was
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`not taught byithe art cited during prosecution. It is agreed that a reasonable examiner
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`Application/Control Number: 90/010,831
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`Art Unit: 3992
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`1
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`Page 9
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`would have found this reference important, either alone or in combination with Grundy,
`./
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`in determining the patentability of claims 1-20.
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`Grundy
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`During the original examination, the Examiner relied on Grundy to show a
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`comparison of locally and remotely generated codes by pointing to a comparison
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`between the User Data 301 and the encrypted authorization code 318. The Third Party
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`Requester has pointed out that the Examiner did not note during prosecution the
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`comparison between checksums at step 310 between the user generated checksum
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`309 and the corresponding value derived at the Manufacture Control Agency (see
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`column 15, lines 10-22). These fields, however, are checksums. Checksums are not
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`unique fields, even if there are at least in part derived from unique data. It is NOT
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`agreed that a reasonable examiner would have found this reference important in
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`determining the patentability of claims 1-20.
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`Application/Control Number: 90/010,831
`Art Unit: 3992
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`Page 10
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`Conclusion
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`All correspondence relating to this ex parte reexamination proceeding should be directed:
`By Mail to: Mail Stop Ex Parte Reexam
`Central Reexamination Unit
`Commissioner for Patents
`United States Patent & Trademark Office
`P.O. Box 1450
`
`«
`
`Alexandria, VA 22313-1450
`
`By FAX to: (571) 273-9900
`Central Reexamination Unit
`
`By hand:
`
`Customer Service Window
`Randolph Building
`401 Dulany Street
`Alexandria, VA 22314
`
`Registered users of EFS-Web may alternatively submit such correspondence via the electronic
`filing system EFS-Web, at httgs://sportal.uspto.gov/authenticate/authenticateuserlocalegf.html. EFS-
`Web offers the benefit of quick submission to the particular area of the Office that needs to act on
`the correspondence. Also, EFS-Web submissions are “soft scanned" (i.e., electronically uploaded)
`directly into the official file for the reexamination proceeding, which offers parties the opportunity to
`review the content of their submissions after the “soft scanning” process is complete.
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`Any inquiry concerning this communication should be directed to Examiner Matthew Heneghan at
`telephone number (571)272-3834.
`
`/Matthew Heneghanl
`
`Primary Examiner, USPTO AU 3992
`
`Conferees:
`
`A HARRISON
`SUPERVISORY PATENT EXANHNER
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