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02/06402 10:36 pa 20
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`VENABLE
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`z1002*)3/c.
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`coo iitso
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`leek
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`THE ’UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re PATENT APPLICATION of
`
`Applicants
`
`Appin. No.
`
`Flied
`
`For
`
`Mild MULLOR et al.
`
`: 09/164,777
`
`October 1, 1998
`
`Customer No.
`426694*
`26694
`PATENT TRADEMARK
`OFFICE
`
`: METHOD OF RESTRICTING
`SOFTWARE OPERATION WITHIN
`A LICENSED LIMITATION
`
`Group Art Unit
`Examiner
`
`2161
`C. Hewitt
`
`Atty. Dkt.
`
`39636-176166
`
`Assistant Commissioner for Patents
`Washington, D.C. 22031
`
`Sir:
`
`AMENDMENT
`
`Responsive to’ the Office Action dated January 15, 2002, please amend the application as
`
`follows:
`
`IN lilt CLAIMS:
`
`Please cancel claims 11, 12, 14 and 15 without prejudice to their re-entry at a later date.
`
`Please amended the claims as follows:
`
`(Amended) The method of Claim 1, wherein a pseudo-unique key is stored in
`
`the non-volatile memo of the BIOS.
`
`1
`
`410. (Amended) A method for accessing an application software program using a
`
`Received from <202 962 8300> at 215102 3:38:28 PM (Eastern Standard Time}
`
`(93--
`
`Page 1 of 10
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`ANCORA 2001
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`

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`02/05/02 16:36 FAX 20. 2 . 0 VENABLE 21003
`
`Amendment
`U.S. Application No.; 09/164,777
`
`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
`Jcv1/45 ,0( commter;
`( ’
`
`t. ) (cid:149)-(cid:149) (cid:149)(cid:149)
`
`e’acting license information from the software program;
`
`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.
`
`REMARKS
`
`Claims 1-10, 13 and 16-23 are now pending in this application. Each of the pending
`
`claims is believed to define an invention which is novel and tmobvious over the cited references.
`
`Favorable reconsideration of this case is respectfully requested.
`
`Claims 16 and 20 have been amended to correct the informalities noted by the Examiner.
`
`Claims 11, 12, 14 and 15 have been canceled. In view of these amendments, it is respectfully
`
`submitted that all pending claims are now in all aspects in compliance with 35 U.S.C. 112, -
`
`second paragraph. Therefore, the withdrawal of this rejection is respectfully requested.
`
`Received from <202 962 8300> at 215102 138:28 PM [Eastern Standard Time]
`
`2
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`Page 2 of 10
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`ANCORA 2001
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`

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`02/05/02 16:37 FAX 20 2 VENABLE C21004
`
`Amendment
`U.S. Application No.: 09/164,777
`
`Claims 1-23 have been rejected under 35 U.S.C. 103(a) as being unpatentable over Misra
`
`et al. in view of U.S. Patent No. S,684,951 to Goldman et at and U.S. Patent No. 5,479,639
`
`Ewertz et at
`
`The cited references do not render the present invention obvious as they do not teach or
`
`suggest, among other things, storing a verification structure, such as a software license
`
`information, in the BIOS of a computer as is recited in the present claims.
`
`Misra et al. is cited as the primary reference against the present claims. Misra relates to a
`
`system and method for enforcing software licenses. The system of Misra generates unique
`
`identifiers for servers and clients, col 12, lines 41-42. The client system ID 142 is a unique
`
`identifier for the client computer, col 12, lines 50-51. The client system IDs can be based on
`
`information collected from a computer’s hardware and installed software. For example, hard disk
`
`volume 1i-umbers, registered software, video cards, and some microprocessors contain unique
`
`identifiers. This information can be combined to uniquely identify a particular PC. Thus, the
`
`client system ID of Misra, is similar to the pseudo-unique Icy recited in claims 1 and 20.
`
`Misra also describes a license lD, which is a unique identifier assigned to a software
`
`license when the software license is issued to a client device, col. 11, lines 9-12. The license ID
`
`may be a digital corticate indicating the right to use the particular software at issue, col. 10,
`
`lines 60-67. The license ID of Misra is similar to the verification structure and license
`
`information recited in CiRims I and 20, respectively.
`
`Misra fails to teach using the BIOS of a computer to store the license ID, as noted in
`
`Section 7, Page 6 of the Office Action. Ewertz is cited as supplementing Misra to teach this
`
`feature. However, the license information described in Ewertz has a different meaning and a
`
`different function from the license information described in Misra. Therefore, a combination of
`
`these references would not result in the claimed invention, as is discusSed in detail below.
`3
`
`Received from <22 962 8300 > at 215102 3:33:28 PM [Eastern Standard Time]
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`Page 3 of 10
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`ANCORA 2001
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`

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` 02/05/02 16:37 FAX 20 )2 0 VENABLE
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`Zoos
`
`Amendment
`U.S. Application No.: 09/164,777
`
`In Ewertz, a "software license number" is described as one type of identification
`
`information, eel. 3, lines 20-22. This identification information may also include an Ethernet
`
`address or system serial numbers, col 3, lines 20-22. The identification information is a unique
`
`identification value stored in a non-writable, non-erasable area of the BIOS during manufacture.
`
`The identification information uniquely identifies a particular computer. Therefore, according to
`
`Ewertz a "software license number" is one of a type of static data structures identifying a specific
`
`computer and the static data structure is stored such that it cannot be modified. Accordingly, the
`
`software license number of Ewertz is simply identification for the operating system of a
`
`particular computer.
`
`For example, col. 2, lines 47-49 of Ewertz disclose that the memory storing the
`
`identification information may be electronically locked to prevent erasure or modification of its
`
`contents once installed. Moreover, in teaching a preferred embodiment, col. 11, line 23 - col. 12,
`
`line 14 of Ewertz describe that several types of identification information must be retained for
`
`individual computer systems. One type of identification number, as mentioned above, is an
`
`’Ethernet address. The Ethernet address is stored in a protected area 306 in static page 2 of the
`
`(cid:149) flash memory of Ewertz and cannot be erased or altered once the device is installed. Thus the
`
`identification number cannot be destroyed. Ewertz also teaches other computer system
`
`identification numbers, such as unique serial number, printed board assembly (PBA) numbers or
`
`operating system license numbers may be stored in the locked memory.
`
`Consequently, Ewertz teaches storing identification information for the computer in a
`
`non-writable, non-erasable non-volatile memory. This identification information of Ewertz
`
`corresponds to the kzudo-unique key stored in the first non-erasable, non-volatile memory as
`
`recited in claims 1 and 20 and does not correspond to the license information recited in these
`
`claims. The identification information of Ewertz is a static data structure, like the system ID of
`4
`
`;. Received from <202 962 80O> at 215102 3:3R:28 PM [Eastern Standard Time’
`
`Page 4 of 10
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`ANCORA 2001
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`

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`02/05/02 16:37 FAX 20. J2 VENABU
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`Z1006
`
`Amendment
`U.S. Application No.: 09/164,777
`
`Misra, that uniquely identifies a computer and simply does not correspond the license ID of
`
`Misra or the license information of the present invention as defined by claims 1 and 20.
`
`From the above discussion, it is clear that the "software license number" according to
`
`Ewertz is equivalent in definition and function to Misra’s system ID. Therefore, even if Misra is
`
`combined with Ewertz, this combination does not result in the present invention. The proposed
`
`combination results in the system ID of Misra being stored in the BIOS, not the verification
`
`structure or license information being stored in the BIOS as is required by the present claims.
`
`Furthermore, there is no suggestion or motivation to combine Misra. and Ewertz in the
`
`manner suggested in the Office Action. BIOS is a configuration utility. Software license
`
`management applications, such as the one of the present invention, are operating system (OS)
`
`level programs. Therefore, BIOS programs and software licensing management applications do
`
`not ordinarily interact or communicate because when BIOS is running, the computer is in a
`
`configuration mode, hence OS is not running. Thus, BIOS and OS level programs are normally
`
`mutually exclusive_
`
`Ewertz teaches that writing to the BIOS area is performed by the BIOS routines:
`
`"Referring to Fig. 8, processing logic for updating the flash memory
`device with configuration data, such as EISA information, is
`illustrated... The processing logic shown in Fig. 8 resides in the system
`BIOS of the preferred embodiment" Col 10, lines 20-28
`Misra teaches a licensing system that is OS level based:
`
`"The license generator 26, license server 28 and intermediate server 32
`are preferably implemented as computer servers, such as Windows NT
`servers that run Windows NT server operating systems from Microsoft
`corporation or UNIX-based servers" Col 5, lines 3-7
`Thus, the systems described in Misra and Ewertz are an OS program and a BIOS
`
`prograin, respectively, that cannot run at the same time Therefore, there is no teaching or
`
`suggestion to combine these programs. In fact such a combination would change the operation
`
`Received from < 202 062 8300> at 215102 3:38:28 PM [Eastern Standard Time]
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`Page 5 of 10
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`ANCORA 2001
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`

`

`02/05/22 16:38 FAX 20 2 0 VENABLE a007
`
`Amendment
`U.S. Application No.: 09/164,777
`
`of the programs, which is an indicia of non-obviousness, see MPEP Sec. 2141M3 and related
`
`case law.
`
`Moreover, the present invention proceeds against conventional wisdom in the art. Using
`
`BIOS to store application data such as that stored in Misra’s local cache for licenses is not
`
`obvious. The BIOS area is not considered a storage area for computer applications. An ordinary
`
`skilled artisan would not consider the BIOS as a storage medium to preserve application data for
`
`at least two reasons.
`
`First, OS does not support this functionality and is not recognized as a hardware device
`
`like other peripherals. Every OS provides a set of application program interfaces (APIs) for
`
`applications to access storage devices such as hard drives, removable devices, etc. An ordinary
`
`person skilled in the art makes use of OS features to write date to storage mediums. There is no
`
`OS support whatsoever to write dota to the system BIOS. Therefore, an ordinary person skilled
`
`in the art would not consider the BIOS as a possible storage medium. Furthermore, it is common
`
`that all peripheral devices in the PC are listed and recognized by the OS except for the BIOS.
`
`This supports the fact that the BIOS is not considered a peripheral device. Accordingly, an
`
`ordinary person skilled in the art would not consider the BIOS for any operation, including
`
`writing to the BIOS.
`
`Second, no file system is associated with the BIOS. Every -writable device connected to
`
`the PC is associated with an OS file system to arrange and manage data structures. An example
`
`for such a file system would be FAT, FAT32, NTFS, HPFS, etc. that suggests writing data to the
`
`writable device. No such file system is associated with the BIOS. This is further evidence that
`
`OS level application programmers would not consider the BIOS as a storage medium for license
`
`data.
`
`Received from <202 962 8300 > at 21E2 138:28 PM [Eastern Standard Time]
`
`6
`
`Page 6 of 10
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`ANCORA 2001
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`

`

`02/05/02 16:38 FAX 2( 62 t ) VENABLE
`
`1008
`
`Amendment
`U.S. Application No.: 09/164,777
`
`Additionally, Misra teaches away from using the BIOS as a storage area by making a
`
`statement about client computers that do not have a persistent non-volatile area.
`
`"The license cache 136 is kept in persisted (non-volatile) storage. Clients
`that do not have persistent storage can be issued licenses as long as they
`can generate a unique client ID and can respond to the client platform
`challenge protocol" (Miw’a, Col. 12, lines 15-18)
`
`Since all computers must have a BIOS, it is clear Misra teaches away from using the
`
`BIOS as a local storage area for licenses.
`
`Goldman et al. do not supplement Misra and Ewertz to teach or suggest the present
`
`invention.
`
`Thus, in view of the above discussion, it is clear that the cited references, taken alone or
`
`in any combination, do not fairly teach or suggest the present invention. Therefore the
`
`withdrawal of this rejection is respectfully requested_ Favorable reconsideration of this case and
`
`early issuance of a Notice of Allowance is respectfully requested
`
`Attached hereto is a marked-up version of the changes mnde to the specification and
`
`(cid:149) claims by the current amendment The attached page is captioned "Version with markings to
`
`.show changes made."
`
`In view of the foregoing, reconsideration and allowance of this application are believed in
`
`order, and. such action is earnestly solicited.
`
`Received from <202 962 8300> at 215102 3:383 PM [Eastern Standard Time]
`
`7
`
`Page 7 of 10
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`ANCORA 2001
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`

`

` 02/05/02 16:36 FAX 20. 2 k 0 VENABLE ZI009
`
`Amendment
`U.S. Application No.: 09/164,777
`
`The Commissioner is authorized to charge any fee necessitated by this Amendment to our
`
`Deposit Ac-count No. 22-0261.
`
`Respectfully submitted,
`
`berg
`Registration No. 26,924
`Jeffri A. Kaminski
`Registration No. 42, 709
`P.O. Box 34385
`Washington, D.C_ 20043-9998
`Telephone 202-962-4800
`Telefax 202-962-8300
`
`RIVYAK/Irh
`#3 4 73 53
`
`Received from < 202 962 8300> at 215102 3:38:28 PM (Eastern Standard Time)
`
`8
`
`Page 8 of 10
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`ANCORA 2001
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`

`

`02/05/02 16:38 FAX 20. :2 ’TENABLE
`
`Amendment
`U.S. Appin. No.: 09/164,777
`
`VERSION WITH MARKINGS TO SHOW CHANGES MADE
`
`IN tHE CLAIMS:
`
`Please cancel claims 11, 12, 14 and 15 without prejudice to their re-entry at a later date.
`
`Please amended the claims as follows:
`
`16. (Amended) The method of Claim 221, wherein the(cid:151)a pseudo-unique key
`
`inslufles-atseaele-e4altalle key is stored. in the non-volatile memory of the NOS.
`
`20. (Amended) 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 progrommstically changed, the method,
`
`comprising:
`
`loading thea application software program residing in a non-volatile memory area of the
`
`computer;
`
`extracting license information from the software program;
`
`encrypting license information using the pseudo-unique key stored in the first non-
`
`volatile memory area;
`
`storing the encrypting (cid:151)license information in a second erasable, writable, non
`
`volatilenon-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.
`
`1
`
`Received from < 202 962 8300 > at 25102 3:38:28 PM pastern Standard Time]
`
`Page 9 of 10
`
`ANCORA 2001
`
`

`

`02/05/02 16:36 FAX 20. )2 , 0 VENABLE
`
`Zooi
`
`Revisecf PTO/SEAM (06-00)
`Attorney Docket N.
`Approved tor use through 10/3112002, OMB OSS1-0631
`a willfdECNTMI,5t3F cnralto,
`jurxi toUat Puestsatintrxiecrifidi TracleM
`i:TirlurPilrreiZtLic:(cid:132)Zirs’AR
`Um:lathe rwarlction Act c".._cirsons are required to res
`
`
`
`Certificate of Transmission under 37 CFR 1.8
`
`The undersigned certifies that the attached Amendment is being
`facsimile filed to the Examiner C. Hewitt (703) 746-7239) on
`February 5, 2002.
`
`Signature
`
`je7qii;ii(cid:231)
`Typed or printed name of person signing Certificate
`
`Note: Each paper must have its own certificate of transmission, or this
`certificate must identify each submitted paper.
`
`Burden Hour Statement This form IS estimated to take 0.t6 hours to complete. Time will vary depending upon the needs of the individual case_ Any
`comments on the amovnt of time required to complete this form should be sent to the Chief Information CrtfIcer, U.S. patent and Trademark Office,
`Washington, DC 202.31. DO NOT SEND FEES OR COMPLETED FORMS TO mis ADDRESS. SEND TO: Assistant Commissioner for Patents,
`Washington, DO 20231.
`
`PO1D0CS2134gswil
`
`Received from <2a2 962 8300 > at 215102 3:38:28 PM [Eastern Standard Time]
`
`Page 10 of 10
`
`ANCORA 2001
`
`

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