`'
`·p-£"-
`v'~
`' 0 \
`Attorney Docket No. 5 5 77-130 ( . JAN O ., ll!~ 'ih A TENT
`
`G,
`~'le-/
`
`IN THE UNITED STATts-J>Aj)E~ AND TRADEMARK OFFICE
`
`\
`, . ll
`
`.
`
`.RECEIVE[
`.J4N 1 1 2002
`.
`Techr.clogy Center.210
`=tt-'t
`L.ro(cid:173)
`~-~-O:;:L
`
`---~
`
`In Te: Co~ et al.
`Serial No.: ·09/211,528
`Filed: December 14,, 1998
`For: METHODS; SYSTEMS AND COMPUTER PROGRAM PRODUCTS FOR
`CENTRALIZED MANAGEMENT OF APPLICATION PROGRAMS ON A
`NETWORK -.
`
`Group Art Unit: 2 155
`Examiner: Backer, F.
`
`BOX NON-FEE AMENDMENT
`Commissioner for Patents
`Washington, DC 20231
`
`Sir:
`
`October 23, 2001
`
`AMENDMENT
`
`This Response is submitted to respond to the Official Action ("Action") mailed
`
`August 13, 2001.
`
`REMARKS
`Applicants appreciate the thorough examination of the present application as
`
`evidenced by the Action. All the pending claims stand rejected under 35 U.S.C. § 103 as
`
`being unpatentable over United States Patent No. 5,708,709 to Rose ("Rose") in view of
`
`United States Patent No. 6,182,142 to Win et al. ("Win"). Applicants respectfully submit,
`
`however, that the claims are in condition for allowance, wh\ch is respectfully requested. In
`
`particular, the cited references fail to teach or suggest, alone or in combination, establishing a
`"user desktop interface at the client associated with the user" where the user associated
`
`desktop displays regions associated with "a plurality of application pro2rams at the server
`for which the user is authorized" a.S recited, for example, in Claim 1.
`
`The Present Invention:
`
`The present invention provides methods, systems and computer program products for
`
`management of application programs on a network including a server supporting client
`
`stations. The server provides applications on-demand to a user logging in to a client
`
`supported by the server. Mobility is provided to the user and hardware portability is provided
`
`by establishing a user desktop interface responsive to a login request that presents to the user
`
`a desktop screen through a web browser interface. The desktop accesses and downloads
`
`IPR2017-00184
`UNIFIED EX1022
`
`
`
`In re: Cox, et al.
`Serial No. 09/211,528
`Filed: December 14, 1998
`Page 2
`
`selected applicatron programs from the server responsive to a request from the user, such as
`
`the selection of an icon associated with the application program which is displayed on the
`
`user desktop screen at the client. An "instance of the selected" application program is then
`
`provided from the server for execution at the client. Thus, the application programs may be
`
`maintained at the server and provided to client's when needed for execution.
`
`As defined in the specification of the present application:
`
`the term 11 application program 11 generally refers to the code associated with
`the underlying program functions, for example, Lotus Notes or a terminal
`emulator program. However, it is to be understood that the application program
`will preferably be included as part of the application launcher which will further
`include the code associated with managing usage of the application program on a
`network according to the teachings of the present invention. Further it is to be
`understood that, as used herein, the term "application launcher program" may
`refer to the entire program provided by a software vendor or to merely a portion
`thereof distibuted to a client to perform particular operations. For example, the
`application launcher program distributed to initially populate the user
`desktop preferably does not include the code associated with the underlying
`application program and obtaining preferences which may only be distributed to
`the client later when execution of the application program is requested. The
`application launcher program distributed to populate the user desktop may only
`include a URL and an associated ICON and, possibly, code to allow obtaining of
`user identification and password information. Memory usage on the client
`stations may thereby be limited.
`
`(Specification, pp. 22-23)(emphasis added). Thus, the "application program" is an
`
`application level software program, such as Lotus Notes, while the "application launcher
`
`program" is provided to "initially populate the user desktop" and need not include the
`
`application program code. In other words, the application launcher program interacts
`
`with the desktop, such as a user browser interface, while an instance of the application
`
`program is requested through the desktop but executes locally at the client as a separate
`
`application from the browser interface. For example, Lotus Notes would not execute
`
`within the browser window.
`
`The present invention may, therefore, be used so that a variety of application
`
`programs can be maintained at the server, and an instance of a selected one of the application
`
`programs may be provided as needed to a user logged onto a client device. The provided
`
`instance of the application may then be executed at the client device to process the request of
`
`
`
`In re: Cox, et al.
`Serial No. 09/211,528
`Filed: December 14, 1998
`Page 3
`
`the user. Thus, individual application programs are provided to the user as needed (on(cid:173)
`
`demand) where they are executed at a client device rather than having the application
`
`program execute at the server responsive to a request from a user. Furthermore, a customized
`
`user interface desktop is provided at the client device, which displays the applications the
`
`user is authorized to access.
`
`Claims 1, 21 and 23 Are Patentable Over the Cited References:
`
`The rejections of independent Claims 1, 21 and 23 assert that Rose teaches all of the
`
`recitations of the claims except "the inventive concept of receiving at the server a login
`
`request from the user at the client." (Action, p. 3). However, the rejections rely on Win as
`
`teaching "receiving at the server a login request from the user at the client." (Action, p. 3).
`
`Applicants submit that Rose does not teach or suggest a "user desktop associated with the
`
`~-" Applicants further submit that Win does not teach or suggest such a user desktop
`include "a plurality of display regions associated with a· set of the plurality of application
`programs installed at the server for which the user is authorized." Furthermore, the Rose
`
`and Win references cannot properly be combined to arrive at the present invention in light of
`,
`the different problems addressed by these references and the lack of motivation for the
`
`combination.
`
`Rose is directed to managed distribution of licensed application programs stored on a
`
`server where the server "maintains control over the program even after the program has been
`
`distributed to a client computer." (Rose, Abstract). As described in Rose, for example, with
`
`reference to Figure 2, trial versions of application programs may be selected for downloading
`
`from the server to a client through a browser interface. (Rose, Col. 4, lines I 0-17). In other
`
`words, Figure 2 illustrates a display screen at the client showing application programs
`
`available for downloading from the server. A selected trial version is then prepared, for
`
`downloading to the client, which include~ encryption and header information used for license
`
`and usage control after delivery to the client. (Rose, Col. 5, lines 19-52).
`
`The rejections of Claim 1 primarily rely on Figure 7 and the associated description in
`
`Rose as teaching the present invention. However, as is clearly stated in Rose, Figure 7
`
`displays application programs "downloaded to and stored on client computer 102." (Rose,
`
`
`
`.... '
`
`In re: Cox, et al.
`Serial No. 09/211,528
`Filed: December 14, 1998
`Page4
`
`Col. 6, lines 41-42). A selection of a program from the display of Figure 7 of Rose is a
`
`selection of a locaily stored program for execution as contrasted with the selection of an
`
`application program for downloading from a server as illustrated in Figure 2 of Rose. Thus, a
`
`selection of an application program through Figure 7 of Rose does not result in the server
`
`"providing an instance of the selected one of the plurality of application programs to the
`
`client for execution" as recited in Claim 1. Furthermore, neither of the displays of Figures 2
`
`or 7 of Rose are "associated with the user responsive to ~he login request from the user."
`
`While the display of Figure 2 of Rose is established at the client by the server responsive to a
`
`browser request from the client, it is simply.a download options window not specific to a
`
`particular user. The download options window is also not established responsive to a login
`
`request as acknowledged by the Written Opinion. The display of Figure 7 of Rose is directed
`
`to local (client) resident application programs and a selection from the display of Figure 7
`
`does not initiate "providing an instance of the selected one of the plurality of application
`
`progran1s to the client for execution" as the application_ programs are client resident at the
`
`time of the request. Thus, Claims 1, 21 and 23, and the.claims that depend therefrom, should
`
`be allowed for at least these reasons.
`
`The deficiencies of Rose are not overcome by Win. Win relates to "controlling access
`
`to information resources," not client-server environment on-demand application program
`
`management. (See Win, Abstract). The managed resources are defined in Win as follows:
`
`A Resource is a source of information, identified by a Uniform Resource Locator
`(URL) and published by a Web server either in a static file formatted using Hypertext
`Markup Language (HML) or in a dynamically generated page created by a CGI-based
`program. Examples ofresources include a Web page, a complete Web site, a Web(cid:173)
`enabled database, and an applet.
`
`(Win, Col. 5, lines 21-27). Thus, the "resources" managed by Win are not "application
`
`programs" as that term is defined in the present application in the excerpt reproduced above.
`
`Similarly, no user desktop interface that includes "a plurality of display regions associated
`
`with a set of the plurality of application programs" is taught o~ suggested by Win. It follows
`
`that no selection received at the server of such an application program and no "providing an
`
`instance of the selected" application program "to the client for execution" is taught or
`
`suggested by Win. Instead, the only resource selected and provided in Win is a display for
`
`
`
`In re: Cox, et al.
`Serial No. 09/211,528
`Filed: December 14, 1998
`Page 5
`
`the user, such as a static HTML file or a "dynamically generated page created by a CGI-based
`
`program" of the server. (Win, Col. 5, lines 21-27). Therefore Claims 1, 21, 23 and the
`
`claims that depend from them are patentable for at least these reasons.
`
`The rejections should also be withdrawn as the Rose and Win references cannot
`
`properly be combined in the manner relied on by the Action. To establish a prima facie case
`
`of obviousness, the prior art reference or references when combined must teach or suggest all
`
`the recitations of the claim, and there must be some suggestion or motivation, either in the
`
`references themselves or in the knowledge generally available to one of ordinary skill in the
`
`art, to modify the reference or to combine reference teachings. M.P.E.P. § 2143. The mere
`
`fact that references can be combined or modified does not render the resultant combination
`
`obvious unless the prior art also suggests the desirability of the combination. M.P .E.P. §
`
`2143.01, citing In re Mills, 916 F.2d 680, 16 U.S.P.Q.2d 1430 (Fed. Cir. 1990). As recently
`
`emphasized by the Court of Appeals for the Federal Circuit, to support combining references,
`
`evidence of a suggestion, teaching, or motivation to combine must be clear and particular,
`
`and this requirement for clear and particular evidence is not met by broad and conclusory
`
`statements about the teachings ofreferences. Jn re Dembiczak, 50 U.S.P.Q.2d 1614, 1617
`
`(Fed. Cir. 1999). In an even more recent decision, the Court of Appeals for the Federal
`
`Circuit has stated that, to support combining or modifying references, there must be
`
`particular evidence from the prior art as to the reason the skilled artisan, with no knowledge
`
`of the claimed invention, would have selected these components for combination iu the
`
`manner claimed. In re Kotzab, 55 U.S.P .Q.2d 1313, 1317 (Fed. Cir. 2000).
`
`Respectfully, the Action fails to meet the requirements for a showing of obviousness
`•
`under § 103. First, as discussed above, the cited combination of references fails to teach all
`
`of the recitations of the claims. Furthermore, there is no basis for combining the methods
`
`and system for controlled downloading of trial versions of programs described in Rose with
`
`the resource access management teachings of Win. This is particularly true as they are both
`
`directed to distinct problems from the client-server application management environment of
`
`the present invention. Thus, while Rose does relate to application program distribution from
`
`a server, such operations are for providing trial versions to be repeatedly executed at a client.
`
`In fact, the encryption and application builder aspects advanced as the invention in
`
`
`
`In re: Cox, et al.
`Serial No. 09/211,528
`Filed: December 14, 1998
`Page 6
`
`Rose are not even relevant to the environment of the present invention where instances of the
`
`'
`
`application programs are provided from a server "on-demand" each time execution is
`
`requested by a user. Rose is, instead, merely a distribution approach for client resident
`
`programs and one of skill in the art would not look to a reference directed to the problems of
`
`such an environment for direction in the distinct art of server based "on-demand" application
`
`programs. Win does not even relate to distribution of application programs but merely to
`
`control of access to server based resources. Thus, there is no basis to combine Win and Rose
`
`to arrive at the present invention. Accordingly, the rejections should be withdrawn for at
`
`least these additional reasons.
`
`Various of the Dependent Claims Are Separately Patentable
`
`As discussed above, each of the dependent claims is patentable based on its
`
`dependence on Claim 1, 21 or 23. In addition, various of the dependent claims are separately
`
`patentable based on the recitations therein. For example, contrary to the assertion of the
`
`Action, Rose does not teach distributing "application launcher programs associated with each
`
`of the set of the plurality of application programs" as recited in Claims 3, 25 and 38. (See
`
`also, claims 10-11 and the corresponding system and computer program product claims). To
`
`the extent this rejection is maintained, Applicants respectfully request an explanation from
`
`the Examiner of how the portions of Rose relied on for this rejection teach the recited aspects
`
`of Claim 3 as Applicants can find nothing in the portions of Rose cited in paragraph 7 of the
`
`Action on which the Examiner could be relying as support for the rejection of Claims 3, 25
`
`and 38. Claims 4-6 depend from Claim 3 and are likewise allowable for the reasons Claim 3
`
`is allowable as are the corresponding system and computer program product claims.
`
`Furthermore, as with the rejection of Claims 3, 25 and 38, Applicants are unable to identify
`
`what discussion the Examiner is relying on for the recitations related to the "configurable user
`
`preference information" recited in Claims 4, 26 and 39 and, thus, Applicants request
`
`clarification from the Examiner of how Rose teaches these aspects of the claimed invention if
`
`the rejections are not withdrawn. Accordingly, these claims are also patentable for at least
`
`these additional reasons.
`
`
`
`In re: Cox, et al.
`Serial No. 09/211,528
`Filed: December 14, 1998
`Page 7
`
`Conclusion
`The outstanding rejections have all been addressed by the remarks above and the
`
`recitations of the pending claims are neither disclosed nor suggested by the cited combination
`
`of references. Accordingly, Applicants respectfully request allowance of the the present
`
`application and passing the application to issue.
`
`mbmie
`
`Robert W. Glatz
`Registration No. 36,811
`Attorney for Applicant
`
`PATENT TRAOBMARK OFFICE
`
`I hereby certify that this correspondence is being deposited with the United States Postal Service as first class mail in an
`,,,.. nvelope addressed to: Bo
`on-Fee Arnendme Commissioner for Patel)tS, Washington, DC 20231, on October 23, 200 I.
`
`CERTIFICATE OF MAILING
`
`Michele P. McMahan
`Date of Signature: October 23, 200 I
`218342