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
`
`ANCC0104R
`
`1017
`
`22045
`7590
`03/09/2010
`BROOKS KUSHMAN P.C.
`1000 TOWN CENTER
`TWENTY-SECOND FLOOR
`SOUTHFIELD, MI 48075
`
`EXAMINER
`
`ART UNIT
`
`PAPER NUMBER
`
`DATE MAILED: 03/09/2010
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`PT0-90C (Rev. 10/03)
`
`Apple Inc. Exhibit 1006 Page 1
`
`

`
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`[~I
`Commissioner far Patents
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`United States Patent and Trademark Office
`P.O. 8ax14SO
`Alexandria, VA 22313-1450
`'WW./11 JJspto.gov
`
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`
`DO NOT USE IN PALM PRINTER
`
`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
`
`PERKINS COlE LLPIMSFT
`P.O. BOX 1247
`SEA TILE, 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 1006 Page 2
`
`

`
`Notice of Intent to Issue
`Ex Parte Reexamination Certificate
`
`Control No.
`
`90/010,560
`
`Examiner
`
`Patent Under Reexamination
`
`6411941
`
`Art Unit
`
`3992
`MATTHEW HENEGHAN
`-- The MAILING DATE of this communication appears on the cover sheet with the correspondence address --
`
`1. [8J Prosecution on the merits is (or remains) closed in this ex parte reexamination proceeding. This proceeding is
`subject to reopening at the initiative of the Office or upon petition. Cf. 37 CFR 1.313(a). A Certificate will be
`issued in view of
`(a) D Patent owner's communication(s) filed: __ .
`(b) D Patent owner's late response filed: __ ..
`(c) D Patent owner's failure to file an appropriate response to the Office action mailed: __ .
`(d) D Patent owner's failure to timely file an Appeal Brief (37 CFR 41.31 ).
`(e) [8J Other: See Continuation Sheet.
`Status of Ex Parte Reexamination:
`(f) Change in the Specification: D Yes ~ No
`(g) Change in the Drawing(s):
`D Yes ~ No
`(h) Status of the Claim(s):
`(1) Patent claim(s) confirmed: 1-19.
`(2) Patent claim(s) amended (including dependent on amended claim(s)): __
`(3) Patent claim(s) cancelled: __ .
`(4) Newly presented claim(s) patentable: __ .
`(5) Newly presented cancelled claims: __ .
`
`2. [8J Note the attached statement of reasons for patentability and/or confirmation. Any comments considered
`necessary by patent owner regarding reasons for patentability and/or confirmation must be submitted promptly
`to avoid processing delays. Such submission(s) should be labeled: "Comments On Statement of Reasons for
`Patentability and/or Confirmation."
`3. 0 Note attached NOTICE OF REFERENCES CITED (PT0-892).
`4. 0 Note attached LIST OF .REFERENCES CITED (PTO/SB/08).
`5. D The drawing correction request filed on __ is: D approved D disapproved.
`
`6. [8J Acknowledgment is made of the priority claim under 35 U.S.C. § 119(a)-(d) or (f).
`a)[8J.AII b)D Some*
`c)D None
`of the certified copies have
`D been received.
`D not been received.
`[8J been filed in Application No. 091164.777.
`.
`D been filed in reexamination Control No.
`D been received by the International Bureau in PCT Application No. __ .
`
`*Certified copies not received: __ .
`
`7. D Note attached Examiner's Amendment.
`
`8. D Note attached Interview Summary (PT0-474).
`
`9. D Other: _
`
`____:.
`
`I
`
`l
`
`I
`
`cc: Requester (if third party requester)
`U.S. Patent and Trademark Office
`PTOL-469 (Rev.OS-06)
`
`Notice of Intent to Issue Ex Parte Reexamination Certificate
`
`Part of Paper No 20100222
`
`Apple Inc. Exhibit 1006 Page 3
`
`

`
`Continuation Sheet (PTOL-469)
`
`Reexam Control No. 90/010,560
`
`Continuation of 1 (e) Other: The Patent Owner did not file a statement under 37 CFR 1.530 in response to the Order Granting Ex
`Parte Reexamination mailed 3 August 2009.
`
`2
`
`Apple Inc. Exhibit 1006 Page 4
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`

`
`Application/Control Number: 90/010,560
`Art Unit: 3992
`
`Page 2
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`DETAILED ACTION
`
`Reexamination
`
`An Ex Parte Reexamination has been granted for claims 1-19 of U.S. Patent No.
`
`6,411 ,941 (hereinafter "the '941 patent"). See Order, mailed 3 August 2009.
`
`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 th~ 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.
`
`Claims 1-19 have been examined.
`
`References Submitted by Requester
`
`The following reference has been cited as establishing a substantial new question of
`
`patentability. See Order, mailed 3 August 2009.
`
`U.S. Patent No. 5,734,819 to Lewis (hereinafter Lewis)
`
`Apple Inc. Exhibit 1006 Page 5
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`

`
`Application/Control Number: 90/010,560
`Art Unit: 3992
`
`Page 3
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`Allowable Subject Matter
`
`Claims 1-19 are confirmed.
`
`The following is a statement of reasons for the indication of allowable subject
`
`matter:
`
`Claim 1 recites: 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 erasable
`
`non-volatile memory of the BIOS, and
`
`acting on the program according to the verification.
`
`Claim 18 recites: 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:
`
`Apple Inc. Exhibit 1006 Page 6
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`

`
`Application/Control Number: 90/010,560
`Art Unit: 3992
`
`Page4
`
`loading the application software program residing in a non-volatile memory area
`
`of the computer;
`
`using an agent to perform the following steps:
`
`extracting license information from software program;
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`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.
`
`Lewis discloses an invention that stores license information in non-volatile
`
`memory (which is the BIOS, since it is being setup and used by the system program)
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`related to a system device, such as a DASD device, tape reader or diskette reader, or a
`
`cache controller, for which a program having instructions to control that device (a device
`
`driver) is instantiated in volatile memory (see Lewis, column 4, lines 25-31). Although
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`the program is clearly associated with the device, the verification structure that is set up
`
`in non-volatile memory by Lewis is derived from a combination of non-functional
`
`descriptive material and information on the device itself, rather from the substance of
`
`the device driver, and is only being used to verify the device itself (or the information for
`
`Apple Inc. Exhibit 1006 Page 7
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`

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`Application/Control Number: 90/010,560
`Art Unit: 3992
`
`Page 5
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`the device written to non-volatile memory) and not the program that drives the device.
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`Lewis' invention is not being used to verify the program (as per claim 1) or for verifying
`
`the application software program (as per claim 18), but rather just the device that the
`
`program is being used to access (see Lewis, column 5, lines 27-49). Lewis therefore
`
`· does not anticipate or render obvious claims 1 or 18 and no art has been supplied that
`
`overcomes these deficiencies in Lewis.
`
`Claims 2-17 and 19 are confirmed based upon their dependence upon allowable
`
`claims.
`
`Apple Inc. Exhibit 1006 Page 8
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`

`
`Application/Control Number: 90/010,560
`Art Unit: 3992
`
`Page 6
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`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:
`
`JESSICA HARRISON
`SUPERVISORY PATENT EXAMINER
`
`Apple Inc. Exhibit 1006 Page 9