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UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`90/010,560
`
`05/29/2009
`
`6411941
`
`418263007US
`
`1017
`
`7590.
`26694
`VENABLELLP
`P.O. BOX 34385
`WASHINGTON, DC 20043-9998
`
`08/03/2009
`
`EXAMINER
`
`ART UNIT
`
`PAPER NUMBER
`
`DATE MAILED: 08/03/2009
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`PT0-90C (Rev. 10/03)
`
`Apple Inc. Exhibit 1005 Page 1
`
`

`
`~~;<''"~~ UNITED STATES PATENT AND TRADEJY.IAR.K OFFICE
`~) ·············-··---··-··-·-··-····-·········-·········-·-·············· .................................... ___ ···-····-······----····· -·····-·-··---------·------······--········-··········-·-···· ·····--···---············ .......................... .
`I~
`•
`Commissioner for Patants
`'(.~~
`~~
`~"'
`United States Patent and Trademark Office
`P.O. Box 1450
`"~~!.·'"'
`Alexandria, VA 22313-1450
`VI.M.w.uspto.gov
`
`DO NOT USE IN PALM PRINTER
`
`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
`
`PERKINS COIEIMSFT
`P.O. BOX 1247
`SEATILE, WA 98111-1247
`
`EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO. 901010.560.
`
`PATENT NO. 6411941.
`
`ART UNIT 3992.
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the above identified ex parte reexamination proceeding (37 CFR 1.550(f)).
`
`Where this copy is supplied after the reply by requester, 37 CFR 1.535, or the time for filing a
`reply has passed, no submission on behalf of the ex parte reexamination requester will be
`acknowledged or considered (37 CFR 1.550(g)).
`
`PTOL-465 (Rev.07-04)
`
`Apple Inc. Exhibit 1005 Page 2
`
`

`
`Order Granting I Denying Request For
`Ex Parte Reexamination
`
`Control No.
`
`90/010,560
`Examiner
`
`Patent Under Reexamination
`
`6411941
`Art Unit
`
`MA TIHEW HENEGHAN
`
`3992
`
`--The MAILING DATE of this communication appears on the cover sh.eet with the correspondence address--
`
`The request for ex parte reexamination filed 29 May 2009 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)[8J PT0-892,
`
`b)0 PTO/SB/08,
`
`c)D Other: __
`
`1. ~ The request for ex parte reexamination is GRANTED.
`
`RESPONSE TIMES ARE SET AS FOLLOWS:
`
`For ~atent 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 PERMITIED.
`If Patent Owner does not file a timely statement under 37 CFR 1.530(b), then no reply by requester
`is permitted.
`2. D 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 CFR 1.181 ARE
`AVAILABLE ONLY BY PETITION TO SUSPEND OR WAIVE THE REGULATIONS UNDER
`37 CFR 1.183.
`
`In due course, a refund under 37 CFR 1.26 ( c ) will be made to requester:
`a) D by Treasury check or,
`b) 0 by credit to Deposit Account No.
`, or
`c) 0 by credit to a credit card account, unless otherwise notified (35 U.S.C. 303(c)).
`
`I
`cc:Reauester ( if third oartv reauester)
`U.S. Patent and Trademark Office
`PTOL-471 (Rev. 08-06)
`
`I
`
`I
`
`I
`
`Office Action in Ex Parte Reexamination
`
`Part of Paper No. 20090722
`
`Apple Inc. Exhibit 1005 Page 3
`
`

`
`Application/Control Number: 90/010,560
`Art Unit: 3992
`
`Page 2
`
`DECISION GRANTING EX PARTE EXAMINATION
`
`Reexamination
`
`An Ex Parte Reexamination has been requested by a third party on 28 May 2009
`
`for claims 1-19 of U.S. Patent No. 6,411,941 (hereinafter "the '941 patent"), granted on
`
`25 June 2002.
`
`A substantial new question of patentability affecting claims 1-19 of United States
`
`Patent Number 6,411 ,941 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. 6,411 ,941 throughout the course of this reexamination
`
`proceeding. The third party requester is also reminded of the ability to similarly apprise
`
`the Office of any such activity or proceeding throughout the course of this reexamination
`
`proceeding. See MPEP §§ 2207, 2282 and 2286.
`
`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
`
`not to parties in a reexamination proceeding. Additionally, 35 U.S.C. 305 requires that
`
`ex parte reexamination proceedings "will be conducted with special dispatch" (37
`
`Apple Inc. Exhibit 1005 Page 4
`
`

`
`Application/Control Number: 90/010,560
`Art Unit: 3992
`
`Page 3
`
`CFR 1.550(a)). Extensions of time in ex parte reexamination proceedings are provided
`
`for in 37 CFR 1.550(c).
`
`References Submitted by Requester
`
`U.S. Patent No. 5,734,819 to Lewis (hereinafter "Lewis")
`
`U.S. Patent No. 6,153,835 to Schwartz et al. (hereinafter "Schwartz")
`
`Neither of the references cited above were discussed by the Office in a previous
`
`examination or reexamination proceeding.
`
`Several other references have been submitted by the Requester; however, these
`
`references are not being relied upon to establish a Substantial New Question of
`
`Patentability. These references are not being made part of the record at this time.
`
`Prosecution History
`
`The '941 patent was originally filed as Application No. 09/164,777 on 1 October
`
`1998, having claims 1-15. Foreign priority was claimed to Israel Patent Application No.
`
`124571, filed 21 May 1998, for which a certified copy in English was concurrently filed.
`
`Apple Inc. Exhibit 1005 Page 5
`
`

`
`Application/Control Number: 90/010,560
`Art Unit: 3992
`
`Page4
`
`The Office mailed a non-final office action on 18 October 2000, rejecting claims
`
`1-15. Claims 1-4 and 11-13 were rejected under 35 U.S.C. 102(e) over U.S. Patent No.
`
`5,892,900 to Ginter et al. (hereinafter Ginter). Claims 5, 7, and 8 were rejected under 35
`
`U.S.C. 103(a) over Ginter in view of U.S. Patent No. 5,684,951 to Goldman et al.
`
`(hereinafter Goldman). Claim 9 was rejected under 35 U.S.C. 103(a) over Ginter in view
`
`of Goldman further in view of U.S. Patent No. 5,490,216 to Richardson, Ill (hereinafter
`
`Richardson), although the explanation of the rejection to that claim did not rely upon
`
`Richardson at all. Claims 14 and 15 were not discussed. It is noted that the explanation
`
`of this rejections also suggested that claims 6 and 1 0 should also have been rejected
`
`over Ginter.
`
`A second non-final rejection was mailed on 20 December 2000 that clarified the
`
`previous office action, stating that claims 1-4, 6, and 10-13 were rejected under 35
`
`U.S.C. 102(e) over Ginter and claims 5, 7-9, 14, and 15 were rejected under 35 U.S.C.
`
`103(a) over Ginter in view of Goldman.
`
`The Applicant responded on 21 May 2001, amending claim 1, cancelling claims
`
`14 and 15, and adding claims 16-20.
`
`The Office mailed a final rejection on 22 June 2001, rejecting claims 1-13 and 16-
`
`20. Claims 1-13 and 16-19 were rejected under 35 U.S.C. 112, first paragraph, for
`
`incorporating new matter. Claim 20 was rejected under 35 U.S.C 112, second
`
`paragraph for being incomplete. Claims 1-4, 6, and 10-13 were rejected under 35
`
`Apple Inc. Exhibit 1005 Page 6
`
`

`
`Application/Control Number: 90/010,560
`Art Unit: 3992
`
`Page 5
`
`U.S.C. 102(e) over Ginter. Claims 5, 7-9, and 16-20 were rejected under 35 U.S.C. 103
`
`· over Ginver in view of Goldman.
`
`The Applicant filed an amendment on 14 November 2001 with a Request for
`
`Continued Examination (RCE), amending claims 1, 3-7, 9-12, and 16-20 and adding
`
`claims 21-23.
`
`The Office then mailed a non-final rejection on 15 January 2002, rejecting all of
`
`the claims. Claims 11, 12, 15, 16 were rejected under 35 U.S.C. 112, first paragraph for
`
`lacking enablement. Claims 20 and 21 were rejected under 35 U.S.C. 112, second
`
`paragraph for being indefinite. The office action stated that claims 1-23 were rejected
`
`under 35 U.S.C. 103(a) over U.S. Patent No. 6, 189,146 to Misra et al. (hereinafter
`
`~isra) in view of Goldman further in view of U.S. Patent No. 5,479,639 to Ewertz et al.
`
`(hereinafter Ewertz). It is noted that only claims 1-13 and 16-23 should have been
`
`rejected in this action, as claims 14 and 15 had been previously cancelled.
`
`The Applicant responded by filing an amendment on 5 February 2002, amending
`
`claims 16 and 20 and cancelling claims 11 and 12, leaving claims 1-10, 13, and 16-23
`
`to be examined.
`
`A Notice of Allowance was mailed by the Office on 28 March 2002, including an
`
`Examiner's Amendment amending claims 1 and 20. Regarding claims 1-10, 13, and 16-
`
`19, the Examiner noted that,
`
`" ... 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
`
`Apple Inc. Exhibit 1005 Page 7
`
`

`
`Application/Control Number: 90/01 0, 560
`Art Unit: 3992
`
`Page 6
`
`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. "
`
`Regarding claims 20-23, the Examiner noted that,
`
`" ... a 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 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."
`
`The claims were renumbered as claims 1-19.
`
`None of the claims of the '941 patent have been subject to a final holding of
`
`invalidity by a court.
`
`Apple Inc. Exhibit 1005 Page 8
`
`

`
`Application/Control Number: 90/010,560
`Art Unit: 3992
`
`Page 7
`
`Claims of the '941 Patent
`
`The follqwing are the 2 independent claims of the '941 patent:
`
`Claim 1: A method of restricting software operation within a license for use with a
`
`computer including an erasable, non-volatile memory area of a BIOS of the computer,
`
`and a volatile memory area; the method comprising the steps of:
`
`selecting a program residing in the volatile memory,
`
`using an agent to set up a verification structure in the erasable, non-volatile memory of
`
`the BIOS, the verification structure accommodating data that includes at least
`
`one license record,
`
`verifying the program using at least the verification structure from the eJasable non-
`
`volatile memory of the BIOS, and
`
`acting on the program according to the verification.
`
`Claim 18: A method for accessing an application software program using a pseudo-
`
`unique key stored in a first non-erasable non-volatile memory area of a computer, the
`
`first non-volatile memory area being unable to be programmatically changed, the
`
`method, comprising:
`
`loading the application software program residing in a non-volatile memory area of the
`
`computer;
`
`using an agent to perform the following steps:
`
`Apple Inc. Exhibit 1005 Page 9
`
`

`
`Application/Control Number: 90/010,560
`Art Unit: 3992
`
`extracting license information from software program;
`
`Page 8
`
`encrypting license information using the pseudo-unique key stored in the first non-
`
`volatile memory area;
`
`storing the encrypting license information in a second erasable, writable, non-volatile
`
`memory area of the BIOS of the computer; .
`
`subsequently verifying the application software program based on the encrypted license
`
`information stored in the second erasable, writable, non-volatile memory area of
`
`the BIOS; and
`
`acting on the application software program based on the verification.
`
`Claim Construction
`
`During reexamination, claims are given the broadest reasonable interpretation
`
`consistent with the specification and limitations in the specification are not read into the
`
`claims (In re Yamamoto, 740 F.2d 1569,222 USPQ 934 (Fed. Cir. 1984)}:
`
`"BIOS"
`
`The Microsoft Computer Dictionary, 5th Edition, 2002 defines BIOS as "the set of
`
`essential software routines that test hardware at startup, starts the operating system,
`
`Apple Inc. Exhibit 1005 Page 10
`
`

`
`Application/Control Number: 90/010,560
`Art Unit: 3992
`
`Page 9
`
`and supports the transfer of data among hardware devices." This definition is consistent
`
`with the specification of the '941 patent. Since a BIOS is therefore defined by the
`
`functional descriptive material cqntained within it, one skilled in the art would consider
`
`any non-functional descriptive material, such as tables, to be part of the BIOS only if it is
`
`made and used by the functions of the BIOS itself. This does not preclude such material
`
`being also used or modified by programs located outside of the BIOS, such as
`
`applications running in an operating system. The fact that a program or table resides in
`
`non-volatile memory does not necessarily mean that .it is part of the BIOS. It is therefore
`
`the case that a reasonable examiner would only consider a table to be in BIOS if it
`
`were, at a minimum, created by a function residing in the BIOS.
`
`Substantial New Questions of Patentability (SNQ)
`
`Lewis
`
`Lewis discloses the loading into system memory (volatile) of a program, for which
`
`an encryption code (a MAC) is constructed using a driver for an external device in non-
`
`volatile RAM. It is common in the art to implement such drivers in the BIOS area. The
`
`driver is used to write the MAC, which is derived using the computer's chip ID, to a table
`
`in non-volatile RAM, in order to use it later to verify that the program is on the computer
`
`on which it was installed. The correlating of specific instantiations of programs to
`
`specific computers constitutes a de facto license for that computer to use the program.
`
`Since the art cited during prosecution did not show such information being stored in and
`
`Apple Inc. Exhibit 1005 Page 11
`
`

`
`Application/Control Number: 90/010,560
`Art Unit: 3992
`
`Page 10
`
`used from the memory of the BIOS, it is agreed that a reasonable examiner would have
`
`fo~nd this reference important in determining the patentability of claims 1-19.
`
`Schwartz
`
`Schwartz discloses a postage scale that may receive new programs and store
`
`licensing information in related to these programs in non-volatile memory. See figure 9.
`
`The programs that provide this functionality, however, do not reside in BIOS; rather,
`
`they are instantiated as applications running on the operating system. It is therefore the
`
`case that the table created cannot be considered to be in BIOS either. Schwartz is
`
`therefore merely cumulative to the art cited by the Examiner during prosecution, insofar
`
`as it teaches to the claim limitations. It is NOT agreed that a reasonable examiner would
`
`have found this reference important in determining the patentability of claims 1-19.
`
`Apple Inc. Exhibit 1005 Page 12
`
`

`
`Application/Control Number: 90/010,560
`Art Unit: 3992
`
`·Page 11
`
`Conclusion
`
`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 https://sportal.uspto.gov/authenticate/authenticateuserlocalepf.html. EFS(cid:173)
`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.
`
`Any inquiry concerning this communication should be directed to Examiner Matthew Heneghan at
`telephone number (571)272-3834.
`
`/Matthew Heneghan/
`
`Primary Examiner, USPTO AU 3992
`
`Conferees:
`
`Apple Inc. Exhibit 1005 Page 13

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