Case 2:16-cv-00741-RWS Document 159-5 Filed 06/01/17 Page 1 of 66 PageID #: 2151
`Case 2:16-cv-00741—RWS Document 159-5 Filed 06/01/17 Page 1 of 66 PageID #: 2151
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`EXHIBIT E
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`EXHIBIT E
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`Case 2:16-cv-00741-RWS Document 159-5 Filed 06/01/17 Page 2 of 66 PageID #: 2152
`.-...------..
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`RECEIVED
`0 'l'9.:
`JUN 7 2001
`ey Docket No. 5577-130
`PATENT
`...
`~ JU\/ u I ?Jlll\ "'.
`TN THE UNITED STATES PATENT AND TRADEMARK OFFl~hnologyCenter210?
`"?,. I
`f.·
`.w-11;Pr
`11,1>:~~:· Cox et al.
`Group Art Unit· 2155
`. ~-<:"
`I~ 'll'.DI'!i'erial No.: 09/211,528
`\..'V-' ....o\
`Examiner: Backer, F.
`b ~: .1
`I
`~·
`i
`..)A
`f
`
`9-~
`
`Filed: December 14, 1998
`For: METHODS, SYSTEMS AND COMPUTER PROGRAM PRODUCTS FOR
`CENTRALIZED MANAGEMENT OF APPLICATrON PROGRAMS ON A
`NETWORK
`
`I
`I
`I
`
`Commissioner for Patents
`Washington, DC 20231
`
`Sir:
`
`May 31, 2001
`
`AMEND~ENT
`
`This Amend1ncnt is responsive tO the Official Action ("Action 11)·mailcd March 28,
`2001. As the ai11endments to the claims below are limited 10 the addition of ne\v claims,
`Applicants respectfully submit that a version of the amendments \\'ith the changes marked is
`not required, Applicants affinn 'the election of the Group 1 claims as patentability of the
`claims in the respective groups does not depend on the patentability of claims in the other
`group.
`
`i
`I
`
`t
`
`In The Claims:
`Please cancel Claims 15~20 and 22 \Vithout prejudice for purposes of filing the Group
`\
`~sin a divisional /ation.
`
`/
`
`/
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`/
`
`Pl,e0'lS~dd the following new claims:
`(
`f-t.(.
`(New) A system according to Claim 7-<rurther comprising:
`means for maintaining application management infonnation for the plurality of
`applications at the' server; and
`\Vherein the means for establishing a user desktop includes means for including a
`plurality of display regions associated \Vi th a set of the plurality of application proiran1s for
`which the user is authorized responsive to the application managen1ent infon11ation.
`
`.J .
`. : \
`
`uNIT.oc_1sM_201 s_oso4
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`

`

`Case 2:16-cv-00741-RWS Document 159-5 Filed 06/01/17 Page 3 of 66 PageID #: 2153
`
`Jn re: Cox, et aL
`Serial No. 09/211,528
`Filed: December 14, 1998
`Pagc2
`
`\'/,
`)-5':
`user desktop includes:
`
`'"
`(New) A system according to Claim y wherein the means for establishing a
`
`means for distributing application launcher pro&rrams associated with each of the set
`of the plurality of application programs for which the user is authorized to the client; and
`\Vherein the means for receiving a selection includes means for receiving the selection
`from a one of the application launcher programs which is associated with the selected one of
`the plurality of application programs.
`
`,i
`\~
`j£
`(New) A system according to Clain¥ wherein the n1eans for n1aintaining
`includes means for maintaining configurable user preference infonnation for the plurality of
`applicatlon programs at the server and \Vherein the means for providing an instance includes
`n1eans for providing a set of the configurable user preference information associated \Vith the
`user and the selected one of the plurality of application programs to the client.
`
`\~
`f')9
`;;r:
`(Ne\v) A system according to Claimfa,herein the set of the configurable
`user preference information includes user preferences configurable by the user and user
`preferences not configurable by the user which are configilrable by an ad1ninistrator and
`further comprising means for updating the user preferences configurable by the user
`responsive to updates from the user and updating lhe user preferences not configurable by the
`user responsive to updates from the administrator.
`
`"''
`\'b
`ft (New) A system according to Claim }t'wherein the application launcher
`programs arc JAVATM applets and the user desktop interface is aJAVA™ applet executed by
`a web browser.
`
`'j, '\/
`)(.
`
`, (
`(Ne\v) A system according to Claim jr\vherein the means for establishing a
`user desktop includes;
`
`means for configuring the user desktop interface responsive to an identifier of the user
`associated \vi th the login request so as to provide associated information for the user desktop
`interface; and
`
`lT
`
`UNILOC_IBM_2016_0605
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`

`

`Case 2:16-cv-00741-RWS Document 159-5 Filed 06/01/17 Page 4 of 66 PageID #: 2154
`
`., ...
`
`In re: Cox, et al.
`Serial No. 0912J I ,528
`Filed: December 14, I 998
`Page3
`
`means for providing the user desktop interface and the associated information for the
`
`user desktop interface to the client for display.
`
`-i.-V
`')..."?
`)Rf'.
`(Ne\v) A system according to ClaimJ"vherein the means for configuring the
`User desktop includes means for configuring the user desktop interface not to include display
`
`regions associated \Vi th any of the plurality of application programs installed at the server for
`
`v1hich the user is not authorized.
`
`~-
`
`(
`(Nevv) A system according to Claim'}<further comprising means for
`detcnnining a license availability for the selected one of the plurality of application programs
`for the user and \vherein the means for providing includes means for providing an
`unavailability indication to the client responsive to the selection if the license availability
`indicates that a license is not available for the user.
`-zA
`~. (New) A system according to Claim}'{ \vherein the means for eslablishing a
`
`user desktop includes means for distributing application launcher progran1s associated v,dth
`
`each of the set of the plurality of application programs for \Vhich the user is authorized to the
`client and wherein the means for receiving a selection includes means for receiving the
`selection from a one of the application launcher programs which is associated \vith the
`
`selected one of the plurality of application programs and wherein the means for detennining a
`license availability includes means, associated with one of the application launcher programs
`associated with the selected one of the plurality of application programs, for obtaining the
`license availability from a license n1anagernent server.
`-J
`{New) A system according to Claim Jf wherein the license management
`
`!\.-le
`).6.
`server is the server .
`
`\r,,
`(New) A system according to Ciaim}f \vherein the plurality of application
`
`... I\
`)4.
`programs arc instal!ed on a network drive accessible to the server.
`
`UNILOC_IBM_2016_0606
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`

`

`Case 2:16-cv-00741-RWS Document 159-5 Filed 06/01/17 Page 5 of 66 PageID #: 2155
`
`[n re: Cox, et al.
`Serial No. 09/21 J,528
`Filed: December 14, 1998
`Page4
`
`'/,,~
`X
`receiving at the server event logging infonnation fron1 the instance of the selected one of the
`
`,~
`(New) A system according to Claim Yrurther comprising means for
`
`plurality of application programs.
`
`.p
`(New) A system according to Claim },!further comprising means for
`
`~
`;;£.
`providing the received event logging information to a network management server associated
`
`\Vith the server.
`
`~o
`)1.
`comprising:
`
`\~
`(New) A computer program product according to Ciaim)3" further
`
`computer readable program code means for maintaining application management
`
`infomiation for the plurality of applications at the server; and
`
`wherein the con1putcr readable program code means for establishing :i user desktop
`
`includes computer readable program code means for including a plurality of d1'>play regions
`
`associated \Vi th a set of the plurality of application programs for which the user 1!> authorized
`
`responsive to the application management infonnation.
`
`~
`~
`fl: (Ne\v) A computer progra1u product according to Claim;;{ wherein the
`
`computer readable program code means for establishing a user desktop includes:
`
`computer readable program code means for distributing application launcher
`
`programs associated with each of the set of the plurality of application programs for \Vhich
`
`the user is authorized to the client; and
`wherein the con1puter readable program code means for receiving a selection includes
`
`computer readable program code means for recei'ving the selection from a one of the
`
`application launcher progran1s which is associated with the selected one of the plurality of
`
`application programs.
`
`.
`.
`\
`(New) A computer program product according to Claim)..s',vhercin the
`
`computer readable program code means for maintaining includes computer readable p~ogram
`
`code means for n1aintaining configurable user preference infonnation for the plurality of
`
`UNI LOC _I BM_2016_0607
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`

`

`Case 2:16-cv-00741-RWS Document 159-5 Filed 06/01/17 Page 6 of 66 PageID #: 2156
`
`In re: Cox, et al.
`Serial No. 09/211,528
`Filed; December 14, 1998
`Page 5
`
`application programs at the server and \Vherein the computer readable program code means
`
`for providing an instance includes computer readable program code means for providing a ~et
`
`of the configurable user preference infannation associated with the user and the selected one
`
`of the plurality of application programs to the client.
`
`3'2--'
`.
`(New) A computer program product according to Claim){ wherein the set of
`the configurable user preference infonnation includes user preferences configurable by the
`user and user preferences not configurable by the user which are configurable by an
`
`administrator and further comprising computer readable program code tneans for updating
`
`the user preferences configurable by the user responsive to updates from the user and
`
`updating the user preferences not configurable by the user responsive to updates from the
`
`administrator.
`
`"3 \
`(New) A computer program producl according to Claim }<wherein the
`
`application launcher programs are JAVA TM applets and the user desktop interface is a
`
`JA VATM applet executed by a web bro\vser.
`
`'"'
`'?;s
`Y.
`(New) A computer program product according to Claim~herein the
`computer readable program code means for establishing a user desktop includes;
`
`computer readable program code means for configuring the user desktop interface
`
`responsive to an identifier of the user associated \Vith the login request so as to provide
`
`associated infonnation for the user desktop interface; and
`
`con1puter readable program code means for providing the user desktop interface and
`the associated information for the user desktop interface to the client for display.
`,,t
`
`(Ne\v) A computer progran1 product according to Claim fiwherein the
`computer readable program code means for configuring the user desktop includes computer
`
`readable program code means for configuring the user desktop interface not to include
`
`display regions associated with any of the plurali1y of application programs installed at the
`
`server for \Vhich the user is not authorized.
`
`UNILOC_IBM_2016_0608
`
`

`

`Case 2:16-cv-00741-RWS Document 159-5 Filed 06/01/17 Page 7 of 66 PageID #: 2157
`
`'
`
`Jn re: Cox, et al.
`Serial No. 091211,528
`Filed: December 14, 1998
`Page 6
`
`~
`Jtf.
`computer readable program code means for determining a license availability for the selected
`
`,~
`(New) A computer program product according to Claim_,.21' further comprising
`
`one of the plurality of application programs for the user and wherein the co1nputcr readable
`
`program code means for providing includes computer readable program code means for
`providing an unavailability indication to the client responsive to the selection if the license
`
`availability indicates that a license is not available for the user.
`
`'.3~
`(New) A computer program product according to Claitn)f( wherein the
`
`computer readable program code means for establishing a user desktop includes computer
`
`readable program code means for distributing application launcher programs associated with
`
`each of the set of the plurality of application programs for \Vhich the user is authorized to the
`
`client and wherein the computer readable progran1 code means for rcceivi11g a selection
`
`includes computer readable program code means for receiving the selection from a one of the
`
`application launcher progrmns which is associated with the selected one of the plurality of
`
`application programs and \Vherein the con1puter readable program code n1eans for
`
`detennining a license availability includes computer readable progrmn code means,
`
`associated \vith one of the application launcher programs associated \vith the selected one of
`
`the plurality of application programs, for obtaining the license availability from a license
`
`management server.
`~~
`~~
`(New) A computer program product according to Clai~.,A wherein the
`)tt'J.
`license management server is the sen1er.
`
`v_O
`
`ft (New) A computer progra1n product according to Claim Ji wherein the
`
`1\o
`
`plurality of application programs are installed on a network drive accessible to the server.
`
`\~
`V,\
`~ {Ne\Y) A computer program product according to Claim){ further comprising
`computer readable program code means for receiving at the server event logging information
`
`from the instance of the selected one of the plurality of application programs.
`
`UNILOC_IBM_2016_0609
`
`

`

`Case 2:16-cv-00741-RWS Document 159-5 Filed 06/01/17 Page 8 of 66 PageID #: 2158
`
`----~------
`
`In re: Cox, et al.
`Serial No_ 09/211,528
`Filed: December 14, 1998
`Page 7
`
`t\I
`l.\'I/
`JI{
`(Ne\v) A computer program product according to Claimj{further comprising
`computer re~dable program code means for providing the received event Jogging infonnation
`to a network 1nanagement server associated with the server. ~
`
`/
`
`(
`
`I
`
`REMARKS
`___-----··
`---·
`Applicants appreciate the thorough examination of the present application as is
`evidenced by the Action. All the pending claims stand rejected under '35 U.S.C. § 103 as
`being unpatentable over United States Patent No. 6, 189,051 to Oh et al. ("Oh") in view of
`United States Patent No. 6, 115,040 to Bladow ct al. ("Bladow"). Applicants respectfully
`submit, however) that the claims are in condition for allowance, which is respectfully
`requested. The present invention and the references relied on in the Action will first be
`briefly discussed.
`The Invention:
`The present invention provides methods, systems and computer progran1 products for
`management of application programs on a network inc Ju.ding a server supporting client
`stations. The server provides applications on-demand to a user Jogging 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 \Vhich presents to the
`user a desktop screen through a \Veb bro\vscr interface. The desktop accesses and downloads
`selected application 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 al the client. The application program iS then provided from the server
`and executed at the client. The application program may further be customized to confonn to
`the user's preferences and may also provide for license use management by detennining
`license availability before initiating execution of the application program. Accordingly,
`applications are provided on-demand to users independent of the device used to access the
`
`J server.
`In other words, a variety of application programs can be maintained at the server. and
`\
`'an-in~eetcaan::r the application programs may be provided as n~eded to a user
`
`UN!LOC_!BM_2016_0610
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`

`

`Case 2:16-cv-00741-RWS Document 159-5 Filed 06/01/17 Page 9 of 66 PageID #: 2159
`
`In re: Cox, ct al.
`Serial No. 09/211,528
`Filed: December I 4,· I 99S
`Page8
`
`logged onto a client device. The provided instance of the application niay then be executed at
`the client device to process the request of the user. Thus, individual application programs are
`provided to the user as needed ,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.
`Furthennore, a customized user interface desktop is provided at the client device which
`displays the applications the user is authorized to access.
`The Oh Reference:
`The Oh reference relates to systems and methods for manufacturing hard disk
`masters. The systems and methods described in Oh are directed to computer system
`manufacturing where programs need to be stored on different models of computers for sale to
`customers. More particularly, when "a computer system is sold to a consumer, the hard djsk
`in which the programs are stored is installed therein. Therefore, it is necessary for a
`computer nianufacturer to copy progrmns into the hard disk of the computer.'1 (Oh, Col. 1,
`Jines 29-32). As described by Oh, the known methods, which relied on CDs and diskettes for
`installation, were difficult to nlanage and included a high risk of errors due to the 1!1anual
`nature of the process. (Oh, Col. l, lines 36-43). Thus, Oh proposed downloading the
`programs from a server computer to a client computer where a hard disk mastef is generated
`which is used 11for copying a hard disk loaded in a computer system. 11 (Oh, Col. 2, lines 10-
`18). Oh further recognized that the contents of the uhard disk master [may] differ according
`to the model" of the computer being manufactured. (Oh, Col. 2, lines 6-8). Thus, the system
`of Oh downloads selected progrmns and drivers from the·servcrto the hard disk master
`n1anufacturing computer and executes an associated setup file provided by the server to
`generate the hard disk master. (Oh, Col. 4, line 62- Col. 5, line 6; Col. 5, lines 34-40).
`The Bladow Reference:
`The Bladow reference relaics to a graphical user interface for web enabled
`applications. Jn particular, a system is provided for interfacing applications executing on a
`client to web server based applications resources, Log-in based security procedures are
`provided to control access to various server based resources by individual users. More
`particularly, users are provided a "home page 250 \Vhich is do\vnload after the authentication
`via lhe logon page. The hon1e page 250 co1nprises icons 252a-h for each application services
`
`UNI LOC _I BM_2016 _0611
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`

`

`Case 2:16-cv-00741-RWS Document 159-5 Filed 06/01/17 Page 10 of 66 PageID #: 2160
`
`In re: Cox, ct al.
`Serial No. 091211,528
`Filed: Decen1ber 141 1998
`Page9
`
`as well as an application tool bar 254 for invOking services. 0 (Blado\v, Col. 14, lines 46~49).
`
`I'Iowever, the server based resources are merely accessed by transmission of an '1HTTPS
`request" which is passed on to the server resource provider if the user is authorized to use the
`
`resource. (Bladow, Col. 7, line 46 to Col. 8, !inc 27). The server then provides the "service
`
`requested by the client." (Bladow, Col. 8, lines 30-38; Col. 9, Jines 15-22). The data
`
`generated by the service at the server is then translated to a client format and returned to the
`
`requesting client. (Bladow, Col. 9, lines 22-33).
`
`The Claims Are Patentable Over the Cited References:
`
`Among other things, the Action asserts !hat Oh teaches "receiving at the server a
`
`selection ~f one of the plurality of application programs from the user desktop interface, and
`providing an instance of the selected one of the pluralily of application pro&rran1s to the client
`
`for execution responsive to the selection.'t (Action, p. 4). Applicants submit that Oh
`
`provides no such disclosure or suggestion. Furthennore, Applicants submit that Oh cannot
`
`properly be combined \Vith Bladow in the manner relied on by the Action,
`With respect to the recitation in Clt!im 1 of 0 receiving at the server a selecti~n of .Q.!!.£.
`of the plurality of application programs from the user desktop," there is no such disclosure
`or suggestion in Oh. In fact, the system of Oh, which is intended to allo\v creation of a hard
`disk master, requests a11 of the programs \vhich are to be provided in the hard disk master.
`There would be no reason to request an individual program in the system of Oh as the object
`
`is to generate the entirety of the hard disk image \vhich is to be placed on the hard disk of
`each of the co1nputers being manufactured. Furthennore, no user desktop is needed to
`
`provide the selection as there is no need to designate only individual application programs to
`
`the server. Instead, all of the application programs associated with a particular hard disk
`
`master (which in tum may be used in the manufacture of a particular model of computer), are
`
`requested by the client computer, thus. requiring no such on demand request interfaqe
`
`providing for selection of a single application program.
`
`Funhennorc, the present invention recites in Claim I that 11an instance of the selecte?
`
`one of the plurality of application programs [is provided] to the client for execution
`
`responsive to the selection." In contrast. the programs provided from the server of Oh arc
`
`UNlLOC_IBM_2016_0612
`
`

`

`Case 2:16-cv-00741-RWS Document 159-5 Filed 06/01/17 Page 11 of 66 PageID #: 2161
`
`In re: Cox, et al.
`Serial No. 09/211,528
`Filed: December 14, 1998
`Page JO
`
`used to build a hard disk master, they are not executed. The hard disk mas!er is, presumably,
`
`then used to \Vrite the hard disk of computers sold to customers who may ultimately execute
`
`the programs provided on the hard disk of their computers. In other words, Oh relates to an
`
`application programming environment in which applications are installed in advance and
`
`later run on individual computers, not to a client~server environment, such as recited in Claim
`1, where instances of an application are provided to requesting users on demand only after
`users have logged in and had their authority to use a program verified.
`Bladow fails to overcome these deficiencies of Oh as it describes an environment in
`which server resources accessed by an authorized user are executed at the server \Vith !he
`
`results returned to the client. (Bladow, Col. 9, lincs 18-33). Bladow does not disclose or
`
`suggest providing an instance of such server resources to the client for execution by the
`
`client. Therefore, as various of the recitations of Claim I are not taught by any of the cited
`
`references, the pending rejection should be wilhdrawn. Claims 2-14 should also be allo\ved
`
`at least based on their dependency from Claim 1. Furthennore, Claims 21 and 23 are system
`
`and computer program product claims corresponding to method Claim l and are allowable
`
`for the san1e reasons discussed \Vith reference to Claim l,
`
`The rejections should also be \vithdrawn as the Oh and Bladov.r 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 claiin, and there must be some suggestion or motivation, either in the
`
`references themselves qr in the knowledge generally available to one of ordinary skill in the
`art, to modify the reference or to combine reference teachings. !Y1.P.E.P. § 2143. The mere
`
`fact that references can be combined or Jnodified does not render the resultant con1bination
`
`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, lo support combining ref?rences,
`
`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
`
`statc1nents about the teachings of references. In re Denzbiczak, 50 U.S.P.Q.2d 1614, 1617
`
`(Fed. Cir. 1999). In an even n1ore recent decision, the Court of Appeals for the Federal
`
`UNI LDC _I BM_2016_0613
`
`

`

`Case 2:16-cv-00741-RWS Document 159-5 Filed 06/01/17 Page 12 of 66 PageID #: 2162
`
`In re: Cox, et al.
`Serial No, 09/211,528
`Filed: December 14, 1998
`Page 11
`
`Circuit has stated that, to suppon combining or nlodifying references, there must be
`particular evidence from the prior art as to lhe reason the ~killed anisan, with no knowledge
`
`of the claimed invention, would bnve selected these con1ponents for combination in the
`
`mnnner clnirncd. Jn re Kotzab, 55 U.S.P,Q.2d 1313, 1317 (Fed. Cir. 2000).
`
`Respectfully, the Action fails to meet the requirements for a sho\ving of obviousness
`
`under §.103. Fifst, 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 hard disk
`master manufacturing system of Oh with the graphical use~ interface ofBladow. There is no
`n1otivation or incentive to provide a substantially ''real time11 selection of individual
`application programs as described in Bladow in the environment of Oh where a group of
`
`programs are selected to generate a hard disk master for a particular model of compuler. As
`
`such, there is clearly no particular evidence in the cited art supporting the motivation aJ/egcd
`by the Action of providing "a flexible and modular approach to implementing each of the
`client applications as need arises." (Action, p. 4). Accordingly, the rejections should be
`
`withdra\Vn 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 I. In addition, various of the dependent claims are separately
`patentable based on the recitations therein. For exmnple, contrary to the assertion of the
`
`Action, Oh does not teach distributing "application launcher programs associated \vith each
`·of the set of the plurality of application programs" as recited in Claim 3. To the extent this
`rejection is mainrnined, Applicants respectfully request a citation by the Examiner of the
`
`portions of Oh relied on for this rejection as Applicants can find nothing in the portions of Oh
`
`cited in paragraph 7 of the Action on which the Examiner could be relying as support for the
`
`rejection of Claim 3. Claims 4-6 depend from Claim 3 and are likewise allowable for the
`
`reasons Claim 3 is allo\vable. Furthennore, as with the rejection of Claim 3, Applicants arc
`
`unable to identify what discussion the Examiner is relying on for the recitations related to the
`
`"configurable user preference information" recited in Claim 4 and, thus, Applicants request
`clarification from the Exaininer of the basis for such rejections if they are not withdra\vn.
`
`UNILOC_IBM_2016_0614
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`

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`Case 2:16-cv-00741-RWS Document 159-5 Filed 06/01/17 Page 13 of 66 PageID #: 2163
`
`In re: Cox, et al.
`Serial No. 09/211,528
`Filed: December 14, 1998
`Page 12
`
`With respect to Claims 9·11, Applicants again can find no discussion of 1.he "license
`
`availability" recitations of these Claims in the cited portions of Oh or in Blado\v. While
`
`Blado\V does discuss determining whether a user is authorized lo access a resource, this is
`
`distinct fton1 the recitations of these claims related lo verifying license availability. For
`
`exan1ple, a user could be authorized to use an application but five instances of the application
`
`may already be executing and the server may only have a five concurrent user license. Thus,
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`an authorized user could be denied an instance of a requested application because no license
`
`is available. (See, e.g., Specification, p. 18, lines I ~9; p. 21, line 31 to p. 22, line 9).·
`
`Accordingly, these claims are also patentable for at least these additional reasons,
`The Newly Added Claims Are Patentable
`
`Newly added dependent Claims 24-36 arc system claims depending on Claim 21
`
`which correspond generally to Claims 2-14. Newly added dependent Clain1s 37-49 are
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`computer program product claims depending on Claim 23 which correspond generally to
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`Claims 2-14. Accordingly, these claims are patentable for the reasons discussed above with
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`reference to Claims 2-I 4.
`
`Conclusion
`The outstanding rejections have all been addressed by dlc re1narks 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 oflhe present
`
`applicalion and passing the application to issue.
`Respectfully s~b'i/n~
`
`~~ Registration No. 36,8YI
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`Altorney for Applicant
`
`Myers Bigel Sibley & Sajovec
`P.O. Box 37428
`Raleigh, North Carolina 27627
`Telephone: 919/854-1400
`Facsimile: 919/854-1401
`
`UNI LOC_!BM_2016_0615
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`

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`Case 2:16-cv-00741-RWS Document 159-5 Filed 06/01/17 Page 14 of 66 PageID #: 2164
`
`In re: Cox, et al.
`Serial No. 091211,528
`Filed: December 14, 1998
`Page 13
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`RECEIVED
`JUN 7 Z001
`
`'rechnology center 2100
`
`CERTIFICATE OF J\IAILING
`
`I h"<by <onify th or •hi,'°""''"""" i• b<i"g dop"il<d with tho U,itod S!Ot" '""' So"'""""' ola" moil ;, on
`envelope addressed !o: ommissioncr for P tents, \Vashington, DC 2023!, on May JI, 200/,
`
`~-m
`
`A
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`,
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`I
`I
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`UNI LOC_!BM_2016_0616
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`

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`Case 2:16-cv-00741-RWS Document 159-5 Filed 06/01/17 Page 15 of 66 PageID #: 2165
`
`,-
`l
`/-
`[Jv'-
`
`JEPAATMENT OF COMMEACL ·
`UNITED STATl
`Patent and Trademark Office
`Addrese: COMMISSIONER OF PATENTS ANO TRADEMARKS
`V/eahlngton1 D.C. 20231
`
`APPl.ICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`cox
`
`12/l,'!/98
`
`o.:;.1211, s2:::
`I
`TMOLJ0;:::1:.::
`n:~:J'.17'?2
`1tlYEF«S HJCE.l~ :i,tTBLE'I ~~ Sf.'iJO'./Ei:'
`r-·o r::i:1x 374:28
`RtlLr£11~H NC 27627
`
`EXAMINER
`
`ART UNIT
`
`PAPER NUMBER
`
`I
`
`21GS
`DATE MAILED:
`
`D8/1:J/(.ll
`
`Please find below and/or attached an Office communication concerning this application or
`proceeding.
`
`Commlasfonot of Paten ta and Trademarks
`
`PTO-~oc tRn. 21U)
`"US. GPO: 2000-<li3-000'HS02
`
`UNILOC_IBM_2016_0619
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`

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`Case 2:16-cv-00741-RWS Document 159-5 Filed 06/01/17 Page 16 of 66 PageID #: 2166
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`-··-- .. -
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`Office Action Summary
`
`Appl/cation No.
`
`091211,528
`
`examiner
`
`Appllcant[e)
`
`COX ETAL.
`
`Art Unit
`
`I
`
`Firmin Backer
`2155
`- Tho MAILING DATE! of this communication appears an Iha covar sh eat with Iha corrospondance address ••
`Period tor Reply
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE ;i MONTH(S) FROM
`THE MAILING DATE OF THIS COMMUNICATION.
`Extonatona ofHmo m11y ba QV111fable 1.mdor the pt'OvlalQna cf:l7 CFR 1.136 (o). In po 11vem,howev-er, may 11 reply ho timely filed
`oiler SIX (5) MONTHS f1om 1he mdlntr date cf this communl<lllllWl,
`• trlllo period for roply apoc!ned llbova 1" less thon thirty (JO) dop, 11 ri&ply w!thln tho ata!ll10I)" minimum of lhlNy (JO) dayG wrn bo aonlll:lorod llmoly,
`!f NO period ror roply la spoclllod 11!wv11, tha mtudmum alalutoryp111lcd. wm apply and wm etp!nl' SIX {G) MONTHS from th1.1 mu~ln11 date of1hl11 commuorCllHon.
`•
`• Folfure lo 111plywllhln Iha sol or e);!ondod period far reply wlU, by~t11M11, cata11ltiu11pplh:a1lon la became ABANDONED (35 U.S.C, 11133) •
`• Any 1apty received bylhe Qfflca la!erlh:m lhron monll!• atlerlho malling d11t.o offhla commun!callon, 11v1111 llHmolyfiled, m;y roduco any
`l!llrm1d pal~n! !01m adjua!mllllt, Soo 37 CFR 1.704(1:1),
`Status
`1)~ Responsive to cammunlcation{s) filed on 01June2001 .
`This action Is FINAL.
`2a)0
`2b)~ This action is non-final. ·
`3)0 Since this application is Jn condition for allowance except fortonnal matters, proseculfon as to the merits Js
`closed in accordance with the practice under Ex parta Quayle, 1935 C.D. 11 1 453 O.G. 213.
`
`Disposition of Claims
`4)0 Claim(s) 1-14 21and23·49 ls/are pending In the application.
`4a) Of the above c!alm(s) __ is/are withdrawn from consideration.
`5)0 Claim(s) __ ls/are alloweo.
`6)0 Clalm(s) 1-14 21and23-49 is/are rejecteo.
`7)0 Clalm(s) __ ls/are objected 10.
`8)0 Claims __ are subjectto restriction and/or election requirement
`
`Application Papers
`9)0 The specficalion ls-objected to by the Examiner.
`10)0 The drawing(s) filed on __ lsJare objected to by the Examiner.
`11)0 The proposeo drawing correction filed on __ Is: a)O approveo b)O disapproved.
`12)0 The oath or deciaratlon is objected to by the Examiner.
`
`Priority under35U.S.C.§119
`13)0 Acknowledgment ls made of a claim forforelgn priorily under35U.S.C.§119(a)·(d).
`a)O All b)O Some • c)O None of:
`1.0 Certified copies of the priority documents have been received.
`2.0 Certified copies of the priority documents have bean received in AppHcation No. __ •
`3.0 Coples of the certified copies of the priority documents have been received In this National Stage
`application from the lnternallonal Bureau (PCT