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`VENABLE
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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:
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`AMENDMENT
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`Responsive to’ the Office Action dated January 15, 2002, please amend the application as
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`follows:
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`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:
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`(Amended) The method of Claim 1, wherein a pseudo-unique key is stored in
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`the non-volatile memo of the BIOS.
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`1
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`410. (Amended) A method for accessing an application software program using a
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`(93--
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`Amendment
`U.S. Application No.; 09/164,777
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`pseudo-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 method,
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`comprising:
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`loading the application software program residing in a non-volatile memory area of the
`Jcv1/45 ,0( commter;
`( ’
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`t. ) (cid:149)-(cid:149) (cid:149)(cid:149)
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`e’acting license information from the software program;
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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 the BIOS; and
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`acting on the application software program based on the verification.
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`REMARKS
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`Claims 1-10, 13 and 16-23 are now pending in this application. Each of the pending
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`claims is believed to define an invention which is novel and tmobvious over the cited references.
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`Favorable reconsideration of this case is respectfully requested.
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`Claims 16 and 20 have been amended to correct the informalities noted by the Examiner.
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`Claims 11, 12, 14 and 15 have been canceled. In view of these amendments, it is respectfully
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`submitted that all pending claims are now in all aspects in compliance with 35 U.S.C. 112, -
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`second paragraph. Therefore, the withdrawal of this rejection is respectfully requested.
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`2
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`Amendment
`U.S. Application No.: 09/164,777
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`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
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`The cited references do not render the present invention obvious as they do not teach or
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`suggest, among other things, storing a verification structure, such as a software license
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`information, in the BIOS of a computer as is recited in the present claims.
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`Misra et al. is cited as the primary reference against the present claims. Misra relates to a
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`system and method for enforcing software licenses. The system of Misra generates unique
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`identifiers for servers and clients, col 12, lines 41-42. The client system ID 142 is a unique
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`identifier for the client computer, col 12, lines 50-51. The client system IDs can be based on
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`information collected from a computer’s hardware and installed software. For example, hard disk
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`volume 1i-umbers, registered software, video cards, and some microprocessors contain unique
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`identifiers. This information can be combined to uniquely identify a particular PC. Thus, the
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`client system ID of Misra, is similar to the pseudo-unique Icy recited in claims 1 and 20.
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`Misra also describes a license lD, which is a unique identifier assigned to a software
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`license when the software license is issued to a client device, col. 11, lines 9-12. The license ID
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`may be a digital corticate indicating the right to use the particular software at issue, col. 10,
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`lines 60-67. The license ID of Misra is similar to the verification structure and license
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`information recited in CiRims I and 20, respectively.
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`Misra fails to teach using the BIOS of a computer to store the license ID, as noted in
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`Section 7, Page 6 of the Office Action. Ewertz is cited as supplementing Misra to teach this
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`feature. However, the license information described in Ewertz has a different meaning and a
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`different function from the license information described in Misra. Therefore, a combination of
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`these references would not result in the claimed invention, as is discusSed in detail below.
`3
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`Zoos
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`Amendment
`U.S. Application No.: 09/164,777
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`In Ewertz, a "software license number" is described as one type of identification
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`information, eel. 3, lines 20-22. This identification information may also include an Ethernet
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`address or system serial numbers, col 3, lines 20-22. The identification information is a unique
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`identification value stored in a non-writable, non-erasable area of the BIOS during manufacture.
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`The identification information uniquely identifies a particular computer. Therefore, according to
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`Ewertz a "software license number" is one of a type of static data structures identifying a specific
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`computer and the static data structure is stored such that it cannot be modified. Accordingly, the
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`software license number of Ewertz is simply identification for the operating system of a
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`particular computer.
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`For example, col. 2, lines 47-49 of Ewertz disclose that the memory storing the
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`identification information may be electronically locked to prevent erasure or modification of its
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`contents once installed. Moreover, in teaching a preferred embodiment, col. 11, line 23 - col. 12,
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`line 14 of Ewertz describe that several types of identification information must be retained for
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`individual computer systems. One type of identification number, as mentioned above, is an
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`’Ethernet address. The Ethernet address is stored in a protected area 306 in static page 2 of the
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`(cid:149) flash memory of Ewertz and cannot be erased or altered once the device is installed. Thus the
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`identification number cannot be destroyed. Ewertz also teaches other computer system
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`identification numbers, such as unique serial number, printed board assembly (PBA) numbers or
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`operating system license numbers may be stored in the locked memory.
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`Consequently, Ewertz teaches storing identification information for the computer in a
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`non-writable, non-erasable non-volatile memory. This identification information of Ewertz
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`corresponds to the kzudo-unique key stored in the first non-erasable, non-volatile memory as
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`recited in claims 1 and 20 and does not correspond to the license information recited in these
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`claims. The identification information of Ewertz is a static data structure, like the system ID of
`4
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`Misra, that uniquely identifies a computer and simply does not correspond the license ID of
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`Misra or the license information of the present invention as defined by claims 1 and 20.
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`From the above discussion, it is clear that the "software license number" according to
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`Ewertz is equivalent in definition and function to Misra’s system ID. Therefore, even if Misra is
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`combined with Ewertz, this combination does not result in the present invention. The proposed
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`combination results in the system ID of Misra being stored in the BIOS, not the verification
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`structure or license information being stored in the BIOS as is required by the present claims.
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`Furthermore, there is no suggestion or motivation to combine Misra. and Ewertz in the
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`manner suggested in the Office Action. BIOS is a configuration utility. Software license
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`management applications, such as the one of the present invention, are operating system (OS)
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`level programs. Therefore, BIOS programs and software licensing management applications do
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`not ordinarily interact or communicate because when BIOS is running, the computer is in a
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`configuration mode, hence OS is not running. Thus, BIOS and OS level programs are normally
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`mutually exclusive_
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`Ewertz teaches that writing to the BIOS area is performed by the BIOS routines:
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`"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:
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`"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
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`prograin, respectively, that cannot run at the same time Therefore, there is no teaching or
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`suggestion to combine these programs. In fact such a combination would change the operation
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`Amendment
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`of the programs, which is an indicia of non-obviousness, see MPEP Sec. 2141M3 and related
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`case law.
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`Moreover, the present invention proceeds against conventional wisdom in the art. Using
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`BIOS to store application data such as that stored in Misra’s local cache for licenses is not
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`obvious. The BIOS area is not considered a storage area for computer applications. An ordinary
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`skilled artisan would not consider the BIOS as a storage medium to preserve application data for
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`at least two reasons.
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`First, OS does not support this functionality and is not recognized as a hardware device
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`like other peripherals. Every OS provides a set of application program interfaces (APIs) for
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`applications to access storage devices such as hard drives, removable devices, etc. An ordinary
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`person skilled in the art makes use of OS features to write date to storage mediums. There is no
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`OS support whatsoever to write dota to the system BIOS. Therefore, an ordinary person skilled
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`in the art would not consider the BIOS as a possible storage medium. Furthermore, it is common
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`that all peripheral devices in the PC are listed and recognized by the OS except for the BIOS.
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`This supports the fact that the BIOS is not considered a peripheral device. Accordingly, an
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`ordinary person skilled in the art would not consider the BIOS for any operation, including
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`writing to the BIOS.
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`Second, no file system is associated with the BIOS. Every -writable device connected to
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`the PC is associated with an OS file system to arrange and manage data structures. An example
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`for such a file system would be FAT, FAT32, NTFS, HPFS, etc. that suggests writing data to the
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`writable device. No such file system is associated with the BIOS. This is further evidence that
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`OS level application programmers would not consider the BIOS as a storage medium for license
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`data.
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`1008
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`Amendment
`U.S. Application No.: 09/164,777
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`Additionally, Misra teaches away from using the BIOS as a storage area by making a
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`statement about client computers that do not have a persistent non-volatile area.
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`"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)
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`Since all computers must have a BIOS, it is clear Misra teaches away from using the
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`BIOS as a local storage area for licenses.
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`Goldman et al. do not supplement Misra and Ewertz to teach or suggest the present
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`invention.
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`Thus, in view of the above discussion, it is clear that the cited references, taken alone or
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`in any combination, do not fairly teach or suggest the present invention. Therefore the
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`withdrawal of this rejection is respectfully requested_ Favorable reconsideration of this case and
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`early issuance of a Notice of Allowance is respectfully requested
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`Attached hereto is a marked-up version of the changes mnde to the specification and
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`(cid:149) claims by the current amendment The attached page is captioned "Version with markings to
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`.show changes made."
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`In view of the foregoing, reconsideration and allowance of this application are believed in
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`order, and. such action is earnestly solicited.
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`Received from <202 962 8300> at 215102 3:383 PM [Eastern Standard Time]
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`Amendment
`U.S. Application No.: 09/164,777
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`The Commissioner is authorized to charge any fee necessitated by this Amendment to our
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`Deposit Ac-count No. 22-0261.
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`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
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`Amendment
`U.S. Appin. No.: 09/164,777
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`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
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`Zooi
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`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
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