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`~~;<''"~~ 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
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`DO NOT USE IN PALM PRINTER
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`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
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`PERKINS COIEIMSFT
`P.O. BOX 1247
`SEATILE, WA 98111-1247
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`EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
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`REEXAMINATION CONTROL NO. 901010.560.
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`PATENT NO. 6411941.
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`ART UNIT 3992.
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`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)).
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`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)).
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`PTOL-465 (Rev.07-04)
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`Page 2
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`
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`Order Granting I Denying Request For
`Ex Parte Reexamination
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`Control No.
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`90/010,560
`Examiner
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`Patent Under Reexamination
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`6411941
`Art Unit
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`MA TIHEW HENEGHAN
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`3992
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`--The MAILING DATE of this communication appears on the cover sh.eet with the correspondence address--
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`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.
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`Attachments: a)[8J PT0-892,
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`b)0 PTO/SB/08,
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`c)D Other: __
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`1. ~ The request for ex parte reexamination is GRANTED.
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`RESPONSE TIMES ARE SET AS FOLLOWS:
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`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)
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`I
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`I
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`I
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`Office Action in Ex Parte Reexamination
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`Part of Paper No. 20090722
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`Page 3
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`
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`Application/Control Number: 90/010,560
`Art Unit: 3992
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`Page 2
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`DECISION GRANTING EX PARTE EXAMINATION
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`Reexamination
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`An Ex Parte Reexamination has been requested by a third party on 28 May 2009
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`for claims 1-19 of U.S. Patent No. 6,411,941 (hereinafter "the '941 patent"), granted on
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`25 June 2002.
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`A substantial new question of patentability affecting claims 1-19 of United States
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`Patent Number 6,411 ,941 is raised by the request for ex parte reexamination.
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`The patent owner is reminded of the continuing responsibility under 37 CFR
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`1.565(a) to apprise the Office of any litigation activity, or other prior or concurrent
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`proceeding, involving Patent No. 6,411 ,941 throughout the course of this reexamination
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`proceeding. The third party requester is also reminded of the ability to similarly apprise
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`the Office of any such activity or proceeding throughout the course of this reexamination
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`proceeding. See MPEP §§ 2207, 2282 and 2286.
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`Extensions of time under 37 CFR 1.136(a) will not be permitted in these
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`proceedings because the provisions of 37 CFR 1.136 apply only _to "an applicant" and
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`not to parties in a reexamination proceeding. Additionally, 35 U.S.C. 305 requires that
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`ex parte reexamination proceedings "will be conducted with special dispatch" (37
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`Page 4
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`
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`Application/Control Number: 90/010,560
`Art Unit: 3992
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`Page 3
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`CFR 1.550(a)). Extensions of time in ex parte reexamination proceedings are provided
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`for in 37 CFR 1.550(c).
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`References Submitted by Requester
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`U.S. Patent No. 5,734,819 to Lewis (hereinafter "Lewis")
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`U.S. Patent No. 6,153,835 to Schwartz et al. (hereinafter "Schwartz")
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`Neither of the references cited above were discussed by the Office in a previous
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`examination or reexamination proceeding.
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`Several other references have been submitted by the Requester; however, these
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`references are not being relied upon to establish a Substantial New Question of
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`Patentability. These references are not being made part of the record at this time.
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`Prosecution History
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`The '941 patent was originally filed as Application No. 09/164,777 on 1 October
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`1998, having claims 1-15. Foreign priority was claimed to Israel Patent Application No.
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`124571, filed 21 May 1998, for which a certified copy in English was concurrently filed.
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`Page 5
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`
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`Application/Control Number: 90/010,560
`Art Unit: 3992
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`Page4
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`The Office mailed a non-final office action on 18 October 2000, rejecting claims
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`1-15. Claims 1-4 and 11-13 were rejected under 35 U.S.C. 102(e) over U.S. Patent No.
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`5,892,900 to Ginter et al. (hereinafter Ginter). Claims 5, 7, and 8 were rejected under 35
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`U.S.C. 103(a) over Ginter in view of U.S. Patent No. 5,684,951 to Goldman et al.
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`(hereinafter Goldman). Claim 9 was rejected under 35 U.S.C. 103(a) over Ginter in view
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`of Goldman further in view of U.S. Patent No. 5,490,216 to Richardson, Ill (hereinafter
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`Richardson), although the explanation of the rejection to that claim did not rely upon
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`Richardson at all. Claims 14 and 15 were not discussed. It is noted that the explanation
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`of this rejections also suggested that claims 6 and 1 0 should also have been rejected
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`over Ginter.
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`A second non-final rejection was mailed on 20 December 2000 that clarified the
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`previous office action, stating that claims 1-4, 6, and 10-13 were rejected under 35
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`U.S.C. 102(e) over Ginter and claims 5, 7-9, 14, and 15 were rejected under 35 U.S.C.
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`103(a) over Ginter in view of Goldman.
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`The Applicant responded on 21 May 2001, amending claim 1, cancelling claims
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`14 and 15, and adding claims 16-20.
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`The Office mailed a final rejection on 22 June 2001, rejecting claims 1-13 and 16-
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`20. Claims 1-13 and 16-19 were rejected under 35 U.S.C. 112, first paragraph, for
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`incorporating new matter. Claim 20 was rejected under 35 U.S.C 112, second
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`paragraph for being incomplete. Claims 1-4, 6, and 10-13 were rejected under 35
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`Page 6
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`Application/Control Number: 90/010,560
`Art Unit: 3992
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`Page 5
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`U.S.C. 102(e) over Ginter. Claims 5, 7-9, and 16-20 were rejected under 35 U.S.C. 103
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`· over Ginver in view of Goldman.
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`The Applicant filed an amendment on 14 November 2001 with a Request for
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`Continued Examination (RCE), amending claims 1, 3-7, 9-12, and 16-20 and adding
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`claims 21-23.
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`The Office then mailed a non-final rejection on 15 January 2002, rejecting all of
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`the claims. Claims 11, 12, 15, 16 were rejected under 35 U.S.C. 112, first paragraph for
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`lacking enablement. Claims 20 and 21 were rejected under 35 U.S.C. 112, second
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`paragraph for being indefinite. The office action stated that claims 1-23 were rejected
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`under 35 U.S.C. 103(a) over U.S. Patent No. 6, 189,146 to Misra et al. (hereinafter
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`~isra) in view of Goldman further in view of U.S. Patent No. 5,479,639 to Ewertz et al.
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`(hereinafter Ewertz). It is noted that only claims 1-13 and 16-23 should have been
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`rejected in this action, as claims 14 and 15 had been previously cancelled.
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`The Applicant responded by filing an amendment on 5 February 2002, amending
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`claims 16 and 20 and cancelling claims 11 and 12, leaving claims 1-10, 13, and 16-23
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`to be examined.
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`A Notice of Allowance was mailed by the Office on 28 March 2002, including an
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`Examiner's Amendment amending claims 1 and 20. Regarding claims 1-10, 13, and 16-
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`19, the Examiner noted that,
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`" ... the key distinction between the present invention and the closest prior art, is that the Misra et
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`al., and Ginter et al. systems and the Ewertz et al. system run at the operating system level and
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`Page 7
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`Application/Control Number: 90/01 0, 560
`Art Unit: 3992
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`Page 6
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`BIOS level, respectively. More specifically, the closest prior art systems, singly or collectively,
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`do not teach licensed programs running at the OS level interacting with a program verification
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`structure stored in the BIOS to verify the program using the verification structure and having a
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`user act on the program according to the verification. Further, it is well known to those of
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`ordinary skill of the art that a computer BIOS is not setup to manage a software license
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`verification structure. The present invention overcomes this difficulty by using an agent to set up
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`a verification structure in the erasable, non-volatile memory of the BIOS. "
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`Regarding claims 20-23, the Examiner noted that,
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`" ... a key distinction between the present invention and the closest prior art, is that the Misra et
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`al., and Ginter et al. systems and the Ewertz et al. system run at the operating system level and
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`BIOS level, respectively. More specifically, the closest prior art systems, singly or collectively,
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`do not teach extracting licensing information from a software program, encrypting the
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`information and storing it in the BIOS. Further, it is well known to those of ordinary skill of the
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`art that a computer BIOS is not setup to store license information. The present invention
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`overcomes this difficulty by utilizing an agent to verify the application software program using
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`the license information stored in the erasable, writable, non-volatile memory of the BIOS."
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`The claims were renumbered as claims 1-19.
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`None of the claims of the '941 patent have been subject to a final holding of
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`invalidity by a court.
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`Page 8
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`Application/Control Number: 90/010,560
`Art Unit: 3992
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`Page 7
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`Claims of the '941 Patent
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`The follqwing are the 2 independent claims of the '941 patent:
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`Claim 1: A method of restricting software operation within a license for use with a
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`computer including an erasable, non-volatile memory area of a BIOS of the computer,
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`and a volatile memory area; the method comprising the steps of:
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`selecting a program residing in the volatile memory,
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`using an agent to set up a verification structure in the erasable, non-volatile memory of
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`the BIOS, the verification structure accommodating data that includes at least
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`one license record,
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`verifying the program using at least the verification structure from the eJasable non-
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`volatile memory of the BIOS, and
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`acting on the program according to the verification.
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`Claim 18: A method for accessing an application software program using a pseudo-
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`unique key stored in a first non-erasable non-volatile memory area of a computer, the
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`first non-volatile memory area being unable to be programmatically changed, the
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`method, comprising:
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`loading the application software program residing in a non-volatile memory area of the
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`computer;
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`using an agent to perform the following steps:
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`Page 9
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`Application/Control Number: 90/010,560
`Art Unit: 3992
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`extracting license information from software program;
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`Page 8
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`encrypting license information using the pseudo-unique key stored in the first non-
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`volatile memory area;
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`storing the encrypting license information in a second erasable, writable, non-volatile
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`memory area of the BIOS of the computer; .
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`subsequently verifying the application software program based on the encrypted license
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`information stored in the second erasable, writable, non-volatile memory area of
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`the BIOS; and
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`acting on the application software program based on the verification.
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`Claim Construction
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`During reexamination, claims are given the broadest reasonable interpretation
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`consistent with the specification and limitations in the specification are not read into the
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`claims (In re Yamamoto, 740 F.2d 1569,222 USPQ 934 (Fed. Cir. 1984)}:
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`"BIOS"
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`The Microsoft Computer Dictionary, 5th Edition, 2002 defines BIOS as "the set of
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`essential software routines that test hardware at startup, starts the operating system,
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`Page 10
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`Application/Control Number: 90/010,560
`Art Unit: 3992
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`Page 9
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`and supports the transfer of data among hardware devices." This definition is consistent
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`with the specification of the '941 patent. Since a BIOS is therefore defined by the
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`functional descriptive material cqntained within it, one skilled in the art would consider
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`any non-functional descriptive material, such as tables, to be part of the BIOS only if it is
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`made and used by the functions of the BIOS itself. This does not preclude such material
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`being also used or modified by programs located outside of the BIOS, such as
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`applications running in an operating system. The fact that a program or table resides in
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`non-volatile memory does not necessarily mean that .it is part of the BIOS. It is therefore
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`the case that a reasonable examiner would only consider a table to be in BIOS if it
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`were, at a minimum, created by a function residing in the BIOS.
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`Substantial New Questions of Patentability (SNQ)
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`Lewis
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`Lewis discloses the loading into system memory (volatile) of a program, for which
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`an encryption code (a MAC) is constructed using a driver for an external device in non-
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`volatile RAM. It is common in the art to implement such drivers in the BIOS area. The
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`driver is used to write the MAC, which is derived using the computer's chip ID, to a table
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`in non-volatile RAM, in order to use it later to verify that the program is on the computer
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`on which it was installed. The correlating of specific instantiations of programs to
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`specific computers constitutes a de facto license for that computer to use the program.
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`Since the art cited during prosecution did not show such information being stored in and
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`Page 11
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`Application/Control Number: 90/010,560
`Art Unit: 3992
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`Page 10
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`used from the memory of the BIOS, it is agreed that a reasonable examiner would have
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`fo~nd this reference important in determining the patentability of claims 1-19.
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`Schwartz
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`Schwartz discloses a postage scale that may receive new programs and store
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`licensing information in related to these programs in non-volatile memory. See figure 9.
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`The programs that provide this functionality, however, do not reside in BIOS; rather,
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`they are instantiated as applications running on the operating system. It is therefore the
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`case that the table created cannot be considered to be in BIOS either. Schwartz is
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`therefore merely cumulative to the art cited by the Examiner during prosecution, insofar
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`as it teaches to the claim limitations. It is NOT agreed that a reasonable examiner would
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`have found this reference important in determining the patentability of claims 1-19.
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`Page 12
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