.. ~-~\
`
`UNITED STATES PATENT AND 1RADEMARK OFFICE
`
`,
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United Stntc8 Patent and TrndcJU.Qrk Office
`Address: COMMISSIONER OF PATENTS AND TRADEMARKS
`Washington. D.C. 20231
`www.uspto.gov
`
`NOTICE OF ALLOWANCE AND FEE(S) DUE
`
`03/28/2002
`
`7590
`SPENCER AND FRANK
`SUITE 300 EAST
`1100 NEW YORK AVENUE NW
`WASHINGTON, DC 200053955
`
`EXAMINER
`
`HEWITT II, CALVIN L
`
`ART UNIT
`
`CLASS-SUBCLASS
`
`2161
`
`705-059000
`
`DATE MAILED: 03/28/2002
`
`APPLICATION NO.
`
`09/164,777
`
`FILING DATE
`
`10/01/1998
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`MIKIMULLOR
`
`REINC4237.01
`
`7068
`
`TITLE OF INVENTION: METHOD OF RESTRICTING SOFTWARE OPERATION WITHIN A LICENSE LIMITATION
`
`TOTAL CLAIMS
`
`APPLN. TYPE
`
`SMALL ENTITY
`
`ISSUE FEE
`
`19
`
`nonprovisional.
`
`'
`
`YES
`
`$640
`
`I PUBLICATION FEE
`
`I TOTAL FEE(S) DUE
`
`$0
`
`$640
`
`I,--_D_A_T_E_DU_E__
`06/28/2002
`
`THE APPLICATION IDENTIFIED ABOVE HAS BEEN EXAMINED AND IS ALLOWED FOR ISSUANCE AS A PATENT.
`PROSECUTION!lli TIlE MERITS IS CLOSED, THIS NOTICE OF ALLOWANCE IS NOT A GRANT OF PATENT RIGHTS.
`THIS APPLICATION IS SUBJECT TO WITHDRAWAL FROM ISSUE AT THE INITIATIVE OF THE OFFICE OR UPON
`PETITION BY THE APPLICANT. SEE 37 CFR 1.313 AND MPEP 1308.
`
`THE ISSUE FEE AND PUBLICATION FEE (IF REQUIRED) MUST BE PAID WITHIN THREE MONTHS FROM THE
`MAILING DATE OF THIS NOTICE OR THIS APPLICATION SHALL BE REGARDED AS ABANDONED. THIS STATUTORY
`PERIOD CANNOT.BE. EXTENDED. SEE 35 U.S.C. 151. THE ISSUE FEE DUE INDICATED ABOVE REFLECTS A CREDIT
`FOR ANY PREVIOUSLY PAID ISSUE FEE APPLIED IN THIS APPLICATION. THE PTOL-85B (OR AN EQUIVALENT)
`MUST BE RETURNED WITHIN THIS PERIOD EVEN IF NO FEE IS DUE OR THE APPLICATION WILL BE REGARDED AS
`ABANDONED.
`
`HOW TO REPLY TO THIS NOTICE:
`I. Review the SMALL ENTITY status shown above. If the SMALL
`ENTITY is shown as YES, verify your current SMALL ENTITY
`status:
`A. If the status is changed, pay the PUBLICATION FEE (if required)
`and twice the amount of the ISSUE FEE shown above and notify the
`United States Patent and Trademark Office of the change in status, or
`B. If the status is the same, pay the TOTAL FEE(S) DUE shown
`above.
`
`If the SMALL ENTITY is shown as NO:
`
`A. Pay TOTAL FEE(S) DUE shown above, or
`
`B. If applicant claimed SMALL ENTITY status before, or is now
`claiming SMALL ENTITY status, check the box below and enclose
`the PUBLICATION FEE and 1I2 the ISSUE FEE shown above.
`1:1 Applicant claims SMALL ENTITY status.
`See 37 CFR 1.27.
`
`II. PART B - FEE(S) TRANSMITTAL should be completed and returned to the United States Patent and Trademark Office (USPTO) with
`your ISSUE FEE and PUBLICATION FEE (if required). Even ifthe fee(s) have already been paid, Part B - Fee(s) Transmittal should be
`completed and returned. If you are charging the fee(s) to your deposit account, section "4b" of Part B - Fee(s) Transmittal should be
`completed and an extra copy of the form should be submitted.
`
`III. All communications regarding this application must give the application number. Please direct all communications prior to issuance to
`Box ISSUE FEE unless advised to the contrary.
`
`IMPORTANT REMINDER: Utility patents issuing on applications filed on or after Dec. 12, 1980 may require payment of
`maintenance fees. It is patentee's responsibility to ensure timely payment of maintenance fees when due.
`
`PTOL-85 (REV. 07-01) Approved for use through 01/31/2004.
`
`Page I of3
`
`Apple Inc. Exhibit 1003 Page 1
`
`

`
`"PART B - FEE(S) TRANSMITTAL ..
`
`ComplHe and mail this form, together with applicable fee(s), to:
`
`Box ISSUE FEE
`Assistant Commissioner for Patents
`Washington, D.C. 20231
`
`'-- --- -.~
`
`MAILING INSTRUCTIONS: This fonn should be used for transmitting the ISSUE FEE and PUBLICATION FEE (if required).. Blocks I through 4 should be completed
`where appropriate. All further correspondence including the Patent, advance orders and notification of maintenance fees will tie maIled to the current correspondence address as
`indicateo unless corrected below or directed otherwise in Block I, by (a) specifying a new correspondence address; and/or (b) indicating a separate "FEE ADDRESS" for
`maintenance fee notifications.
`CURRENT CORRESPONDENCE ADDRESS (Note: Legibly mark·up with any corrections or use Block I)
`
`03128/2002
`
`7590
`SPENCER AND FRANK
`SUITE 300 EAST
`1100 NEW YORK AVENUE NW
`WASHINGTON, DC 200053955
`
`Note: The certificate of mailing below can only be used for domestic
`mailings of the Fee(s) Transmittal. This certificate cannot be used for any
`other accompanying papers. Each additional paper, such as an assignment
`or fonnal drawing, must have its own certificate of mailing.
`
`Certificate of Mailing
`I hereby certify that this Fee(s) Transmittal is being deposited with the
`United States Postal Service with sufficient postage for first class mail in an
`envelope addressed to the Box Issue Fee address above on the date
`indicated below
`
`APPLICATION NO.
`
`FIRST NAMED INVENTOR
`FILING DATE
`MIKI MULLOR
`10/01/1998
`09/164,777
`TITLE OF INVENTION: METHOD OF RESTRICTING SOFTWARE OPERATION WITHIN A LICENSE LIMITATION
`
`(Depositor's name)
`
`(Signature)
`
`(Date)
`
`CONFIRMATION NO.
`
`IATTORNEY DOCKET NO.
`
`REINC4237.01
`
`7068
`
`TOTAL CLAIMS
`19
`
`APPLN. TYPE
`
`nonprovisional
`
`SMALL ENTITY
`YES
`
`ISSUE FEE
`$640
`
`PUBLICATION FEE
`$0
`
`TOTAL FEE(S) DUE
`
`$640
`
`DATE DUE
`
`06/2812002
`
`EXAMINER
`HEWITT II, CALVIN L
`
`ART UNIT
`2161
`
`CLASS·SUBCLASS
`705-059000
`
`I. Change of correspondence address or indication of "Fee Address" (37
`CFR 1.363). Use ofPTO fonn(s) and Customer Number are recommended,
`but not required.
`o Change of correspondence address (or Change of Correspondence
`Address fonn PTO/SB/122) attached.
`o "Fee Address" indication (or "Fee Address" Indication fonn
`PTO/SB/47) attached.
`
`2. For printing on the patent front page, list (I)
`the names of up to 3 registered patent attorneys
`or agents OR, alternatively, (2) the name of a
`single finn (having as a member a registered
`attorney or agent) and the names of up to 2
`registered patent attorneys or agents. If no name
`is listed, no name will be printed.
`
`2
`
`_
`
`3. ASSIGNEE NAME AND RESIDENCE DATA TO BE PRINTED ON THE PATENT (print or type)
`PLEASE NOTE: Unless an assignee is identified below, no assignee data will appear on the patent. Inclusion of assignee data is only appropriate when an assignment has
`been previously submitted to the USPTO or is being submitted under separate cover. Completion of this fonn is NOT a substitute for filing an assignment.
`(A) NAME OF ASSIGNEE
`(B) RESIDENCE: (CITY and STATE OR COUNTRY)
`
`Please check the appropriate assignee category or categories (will not be printed on the patent)
`
`Q individual 0 corporation or other private group entity 0 government
`
`4a. The following fee(s) are enclosed:
`o Issue Fee
`o Publication Fee
`o Advance Order· # of Copies
`
`_
`
`4b. Payment of Fee(s):
`o A check in the amount of the fee(s) is enclosed.
`o Payment by credit card. Form PTO-2038 is attached.
`o The Commissioner is hereby authorized by charge the required fee(s), or credit any overpayment, to
`Deposit Account Number
`(enclose an extra copy orthis fonn).
`
`The COMMISSIONER OF PATENTS AND TRADEMARKS is requested to apply the Issue Fee and Publication Fee (if any) or to re·apply any previously paid issue fee to the
`application identified above.
`(Authorized Signature)
`
`(Date)
`
`NOTE; The Issue Fee and Pubhcatlon Fee (If required) Will not be accepted from anyone
`other than the applicant; a registered attorney or agent; or the assignee or other party in
`interest as shown by the records of the United States Patent and Trademark Office.
`Burden Hour Statement: This fonn IS estimated to take 0.2 hours to complete. TIme wIll vary
`depending on the needs of the individual case. Any comments on the amount of time required
`to complete this form should be sent to the Chief Information Officer, United States Patent
`and Trademark Office, Washington, D.C. 20231. DO NOT SEND FEES OR COMPLETED
`FORMS TO THIS ADDRESS. SEND FEES AND THIS FORM TO: Box Issue Fee,
`Assistant Commissioner for Patents, Washington, D.C. 20231
`Under the Paperwork Reduction Act of 1995, no persons are required to respond to a
`collection ofinfonnation unless it displays a valid OMS control number.
`
`TRANSMIT THIS FORM WITH FEE(S)
`PTOL-85 (REV. 07-0 I) Approved for use through 01/31/2004. OMB 0651-0033
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`
`Apple Inc. Exhibit 1003 Page 2
`
`

`
`•
`
`UNITED STATES PATENT AND 1RADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent nnd Tradmn.a.rk Office
`Addre••: COMMISSIONER OF PATENTS AND TRADEMARKS
`Washington, D.C. 20231
`www.uspto.gov
`
`APPLICAnON NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMAnON NO.
`
`09/164,777
`
`10/01/1998
`
`MIKIMULLOR
`
`REINC4237.01
`
`7068
`
`03/28/2002
`
`7590
`SPENCER AND FRANK
`SUITE 300 EAST
`1100 NEW YORK. AVENUE NW
`WASHINGTON, DC 200053955
`
`EXAMINER
`
`HEWITT II, CALVIN L
`
`ART UNIT
`
`2161
`
`DATE MAILED: 03/28/2002
`
`PAPER NUMBER
`
`Determination of Patent Term Extension under 35 U.S.C.154 (b)
`(application filed after June 7, 1995 but prior to May 29, 2000)
`
`The patent tenn extension is 0 days. Any patent to issue from the above identified application will include an
`indication of the 0 day extension on the front page.
`
`If a continued prosecution application (CPA) was filed in the above-identified application, the filing date that
`detennines patent tenn extension is the filing date of the most recent CPA.
`
`Applicant will be able to obtain more detailed infonnation by accessing the Patent Application Infonnation
`Retrieval (PAIR) system. (http://pair.uspto.gov)
`
`PTOL-85 (REV. 07-01) Approved for use through 01/31/2004.
`
`Page 3 of3
`
`Apple Inc. Exhibit 1003 Page 3
`
`

`
`.'
`
`Notice ofAllowability
`
`Application N.o.
`
`Applicant(s)
`
`09/164,777
`Examiner
`
`MULLOR ET AL.
`Art Unit
`
`Calvin L Hewitt II
`
`2161
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address-(cid:173)
`Ali claims being allowable, PROSECUTION ON THE MERITS IS (OR REMAINS) CLOSED in this application.
`If not included
`herewith (or previously mailed), a Notice of Allowance (PTOL-85) or other appropriate communication will be mailed in due course. THIS
`NOTICE OF ALLOWABILITY IS NOT A GRANT 017 PATENT RIGHTS. This application is subject to withdrawal from issue at the initiative
`of the Office or upon petition by the applicant. See 37 CFR 1.313 and MPEP 1308.
`
`1. ~ This communication is responsive to 2-fr02.
`2. ~ The allowed c1aim(s) is/are 1-1013 and 16-23.
`3. D The drawings filed on __ are accepted by the Examiner.
`4. ~ Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (t).
`a) ~ All
`b) 0 Some*
`c) 0 None
`of the:
`1. ~ Certified copies of the priority documents have been received.
`2. 0 Certified copies of the priority documents have been received in Application No. __ .
`3. 0 Copies of the certified copies of the priority documents have been received in this national stage application from the
`International Bureau (PCT Rule 17.2(a)).
`* Certified copies not received: __'
`5. D Acknowledgment is made of a claim for domestic priority under 35 U.S.C. § 119(e) (to a provisional application),
`(a) D The translation of the foreign language provisional application has been received.
`6, D Acknowledgment is made of a claim for domestic priority under 35 U.S.C. §§ 120 and/or 121.
`
`Applicant has THREE MONTHS FROM THE "MAILING DATE" of this communication to file a reply complying with the requirements noted
`below. Failure to timely comply will result in ABANDONMENT of this application. THIS THREE-MONTH PERIOD IS NOT EXTENDABLE.
`7. D A SUBSTITUTE OATH OR DECLARATION must be submitted. Note the attached EXAMINER'S AMENDMENT or NOTICE OF
`INFORMAL PATENT APPLICATION (PTO-152) which gives reason(s) why the oath or declaration is deficient.
`
`8. D CORRECTED DRAWINGS must be submitted.
`(a) 0
`including changes required by the Notice of Draftsperson's Patent Drawing Review ( PTO-948) attached
`1) 0 hereto or 2) 0
`to Paper No. __.
`including changes required by the proposed drawing correction filed __, which has been approved by the Examiner.
`including changes required by the attached Examiner's Amendment / Comment or in the Office action of Paper No, __.
`
`(b) 0
`(c) 0
`
`Identifying indicia such as the application number (see 37 CFR 1.84(c)) should be written on the drawings in the top margin (not the back)
`of each sheet. The drawings should be filed as a separate paper with a transmittal letter addressed to the Official Draftsperson.
`
`9. D DEPOSIT OF and/or INFORMATION about the deposit of BIOLOGICAL MATERIAL must be submitted. Note the
`attached Examiner's comment regarding REQUIREMENT FOR THE DEPOSIT OF BIOLOGICAL MATERIAL.
`
`Attachment(s)
`
`1~ Notice of References Cited (PTO-892)
`3D Notice of Draftperson's Patent Drawing Review (PTO-948)
`5~ Information Disclosure Statements (PTO-1449), Paper No. 11.
`70 Examiner's Comment Regarding Requirement for Deposit
`of Biological Material
`
`20 Notice of Informal Patent Application (PTO-152)
`4~ Interview Summary (PT0-413), Paper NO.14.
`6~ Examiner's Amendment/Comment
`8~ Examiner's Statement of Reasons for Allowance
`90 Other
`
`U.S. Patent and Trademark Office
`PTO-37 (Rev. 04-01)
`
`Notice of Allowability
`
`Part of Paper No. 14 ..
`
`Apple Inc. Exhibit 1003 Page 4
`
`

`
`,
`
`Application/Control Number: 09/164,777
`Art Unit: 2161
`
`Status of Claims
`
`1.
`
`Claims 1-10, 13, and 16-23 have been examined.
`
`Examiner's Amendment
`
`2.
`
`An examiner's amendment to the record appears below. Should the
`
`changes and/or additions be unacceptable to applicant, an amendment may be
`
`filed as provided by 37 CFR 1.312. To ensure consideration of such an
`
`amendment, it MUST be submitted no later than the payment of the issue fee.
`
`Authorization for this examiner's amendment was given in a telephone
`
`interview with Jeffri Kaminski on 19 February 2002.
`
`3.
`
`The application has been amended as follows:
`v
`In claim 1, line 2, replace "(BIOS)" with BIOS.
`./
`In claim 1, line 3, replace" ... computer, _ and" with" ... computer, and"
`
`inserted in line 6, as the second limitation after "loading the application ... "
`
`and before "extracting license information ... ", detailing that the steps of
`
`Apple Inc. Exhibit 1003 Page 5
`
`

`
`Application/Control Number: 09/164,777
`Art Unit: 2161
`
`Page 3
`
`"encrypting ... ", "storing ... ", and "subsequently verifying ... " are performed
`
`by the agent. This does not apply, however, to the "acting ... " limitation.
`
`Reasons for Allowance
`
`4.
`
`Claims 1-10, 13, and 16-19 have been allowed. The instant application
`
`teaches a method for restricting software use by storing a verification structure in
`
`a computer BIOS.
`
`It is well known to those of ordinary skill in the art of software licensing to
`
`monitor the use of software using special code that enforces the preferences of
`
`the software provider (e.g. creator, distributor, or service provider), or provider
`
`and end-user, by restricting the manner in which an end-user can manipulate
`
`(e.g. print, save, redistribute, customize) the software. For example, Ginter et al.
`
`(US 5,892,900) implement their software distribution system by dynamically
`
`linking a verification structure, such as a PERC or permission record, to software
`
`content that dynamically control how the software, and its associated
`
`administrative data, may be distributed and used (column 155, lines 46-51).
`
`Misra et a!. (US 6,189,146) disclose a method for licensing software that uses
`
`agents to manage software licenses, and stores the licenses in persistent non-
`
`volatile storage (column 12, lines 8-31). Neither reference teaches utilizing BIOS
`
`Apple Inc. Exhibit 1003 Page 6
`
`

`
`••
`
`Application/Control Number: 09/164,777
`Art Unit 2161
`
`Page 4
`
`as the non-volatile means for storing a licensed software verification structure.
`
`Ewertz et al. (US 5,479,639) teach the use of BIOS memory for storing
`
`licensing numbers. Hence, it appears initially, that to one of ordinary skill of the
`
`art, the combination of Ewertz et al. with either Ginter et al. and/or Misra et aI.,
`
`would render the present invention obvious. However, the key distinction
`
`between the present invention and the closest prior art, is that the Misra et aL,
`
`and Ginter et al. systems and the Ewertz et al. system run at the operating
`
`system level and BIOS level, respectively. More specifically, the closest prior art
`
`systems, singly or collectively, do not teach licensed programs running at the OS
`
`level interacting with a program verification structure stored in the BIOS to verify
`
`the program using the verification structure and having a user act on the program
`
`according to the verification. Further, it is well known to those of ordinary skill of
`
`the art that a computer BIOS is not setup to manage a software license
`
`verification structure. The present invention overcomes this difficulty by using an
`
`agent to set up a verification structure in the erasable, non-volatile memory of the
`
`BIOS.
`
`5.
`
`Claims 20-23 have been allowed. The instant application teaches a
`
`method for restricting software use by storing license information in a computer
`
`BIOS.
`
`Apple Inc. Exhibit 1003 Page 7
`
`

`
`e.
`
`Application/Control· Number: 09/164,777
`Art Unit: 2161
`
`Page 5
`
`Ginter et al. (US 5,892,900) implement their software distribution system
`
`by encrypting (column/line 65/55-66/47) software control information (e.g. PERC)
`
`and linking control information, to software content that dynamically manages
`
`how the software, and its associated administrative data, may be distributed and
`
`used (column 155, lines 46-51). Misra et al. (US 6,189,146) disclose a method
`
`for licensing software that stores licenses in persistent non-volatile storage
`
`(column 12, lines 8-31). Neither reference teaches utilizing BIOS as the non-
`
`volatile means for storing licensing data. Ewertz et al. (US 5,479,639) teach the
`
`use of BIOS memory for storing licensing numbers. Hence, it appears initially,
`
`that to one of ordinary skill of the art, the combination of Ewertz et al. with either
`
`Ginter et al. and/or Misra et aI., would render the present invention obvious.
`
`However, a key distinction between the present invention and the closest prior
`
`art, is that the Misra et aI., and Ginter et al. systems and the Ewertz et al. system
`
`run at the operating system level and BIOS level, respectively. More specifically,
`
`the closest prior art systems, singly or collectively, do not teach extracting
`
`licensing information from a software program, encrypting the information and
`
`storing it in the BIOS. Further, it is well known to those of ordinary skill of the art
`
`that a computer BIOS is not setup to store license information. The present
`
`invention overcomes this difficulty by utilizing an agent to verify the application
`
`software program using the license information stored in the erasable, writable,
`
`non-volatile memory of the BIOS.
`
`Apple Inc. Exhibit 1003 Page 8
`
`

`
`Application/Control Number: 09/164,777
`Art Unit: 2161
`
`Page 6
`
`6.
`
`Any comments considered necessary by Applicant must be submitted no
`
`later that the payment of the issue fee and, to avoid processing delays, should
`
`preferably accompany the issue fee. Such submissions should be clearly labeled
`
`"Comments on Statement of Reasons for Allowance."
`
`Conclusion
`
`7.
`
`The prior art made of record and not relied upon is considered pertinent to
`
`applicant's disclosure:
`
`•
`
`Infoworld magazine evaluates desktop management software
`
`• Saito et al. disclose a method for automatic license monitoring
`
`8.
`
`Any inquiry concerning this communication or earlier communications from
`
`the Examiner should be directed to Calvin Loyd Hewitt II whose telephone
`
`number is (703) 308-8057. The Examiner can normally be reached on Monday-
`
`Friday from 8:30 AM-5:00 PM.
`
`If attempts to reach the Examiner by telephone are unsuccessful, the
`
`Examiner's supervisor, James P. Trammell, can be reached at (703) 305-9768.
`
`Any response to this action should be mailed to:
`
`Apple Inc. Exhibit 1003 Page 9
`
`

`
`· .
`
`~ Application/Control Number: 09/164,777
`Art Unit: 2161
`
`..
`
`Page 7
`
`Commissioner of Patents and Trademarks
`
`c/o Technology Center 2100
`
`Washington, D.C. 20231
`
`(703) 746-7239 (for formal communications intended for entry),
`
`(703) 746-7238 (for after-final communications),
`
`or faxed to:
`
`or:
`
`(703) 746-7240 (for informal or draft communications, please label
`
`"PROPOSED" or "DRAFT")
`
`Hand-delivered responses should be brought to Crystal Park II, 2121
`
`Crystal Drive, Arlington, VA, Sixth Floor (Receptionist).
`
`Any inquiry of a general nature or relating to the status of this application
`
`should be directed to the Group receptionist whose telephone number is (703)
`
`305-3900.
`
`Calvin Loyd Hewitt II
`
`February 20, 2002
`
`Apple Inc. Exhibit 1003 Page 10