`1 i UNITED STATES PATENT AND TRADEMARK OFFICE
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspio.gov
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`APPLICATION NO.
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`FILING DATE
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
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`CONFIRMATION NO.
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`-
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`90/010,560
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`05/29/2009
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`6411941
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`ANCC0104R
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`1017
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`22045 7590 03/09/2010
`BROOKS KUSHMAN P.C.
`1000 TOWN CENTER
`TWENTY-SECOND FLOOR
`SOUTHFIELD, MI 48075
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`EXAMINER
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`ART UNIT 1 PAPER NUMBER
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`DATE MAILED: 03/09/2010
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`PTO-90C (Rev. 10/03)
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`Page 1 of 8
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`ANCORA 2003
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`UNITED STATES PATENT AND TRADEMARK OF 1,10E
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`Commissioner for Patents
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`NANNIJSMO.gov
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`DO NOT USE IN PALM PRINTER
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`(THIRD PARTY REQUESTERS CORRESPONDENCE ADDRESS)
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`PERKINS COE LLP/MSFT
`P.O. BOX 1247
`SEATTLE, WA 98111-1247
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`EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
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`REEXAMINATION CONTROL NO. 90/010,560.
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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 of 8
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`ANCORA 2003
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`
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`Notice of Intent to Issue
`Ex Parte Reexamination Certificate
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`Control No.
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`90/010,560
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`Examiner
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`Patent Under Reexamination
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`6411941
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`Art Unit
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`MATTHEW HEN EGHAN
`3992
`-- The MAILING DATE of this communication appears on the cover sheet with the correspondence address --
`1. Z 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) 111 Patent owner’s communication(s) filed:
`(b) LI Patent owner’s late response filed:
`(c) CI Patent owner’s failure to file an appropriate response to the Office action mailed:
`(d) 111 Patent owner’s failure to timely file an Appeal Brief (37 CFR 41.31).
`(e) Z Other: See Continuation Sheet.
`Status of Ex Parte Reexamination:
`(f) Change in the Specification: [’Yes [g] No
`(g) Change in the Drawing(s): El Yes 1E] 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. Z 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. El Note attached NOTICE OF REFERENCES CITED (PTO-892).
`4. CI Note attached LIST OF REFERENCES CITED (PTO/SB/08).
`5. CI The drawing correction request filed on is: CI approved El disapproved.
`6. Z Acknowledgment is made of the priority claim under 35 U.S.C. § 119(a)-(d) or (f).
`a)Z.All b)1=1 Some* c)0 None of the certified copies have
`El been received.
`I=1 not been received.
`[E] been filed in Application No. 09/164,777.
`1=I been filed in reexamination Control No.
`El been received by the International Bureau in PCT Application No.
`* Certified copies not received:
`7. LII Note attached Examiner’s Amendment.
`8. CI Note attached Interview Summary (PTO-474).
`9. 111 Other:
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`cc: Requester (if third party requester)
`U.S. Patent and Trademark Office
`PTOL-469 (Rev.08-06)
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`Notice of Intent to Issue Ex Parte Reexamination Certificate Part of Paper No 20100222
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`Page 3 of 8
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`ANCORA 2003
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`Continuation Sheet (PTOL-469) Reexam Control No. 90/010,560
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`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.
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`2
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`ANCORA 2003
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`Application/Control Number: 90/010,560 Page 2
`Art Unit: 3992
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`DETAILED ACTION
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`Reexamination
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`An Ex Parte Reexamination has been granted for claims 1-19 of U.S. Patent No.
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`6,411,941 (hereinafter "the ’941 patent"). See Order, mailed 3 August 2009.
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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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`Claims 1-19 have been examined.
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`References Submitted by Requester
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`The following reference has been cited as establishing a substantial new question of
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`patentability. See Order, mailed 3 August 2009.
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`U.S. Patent No. 5,734,819 to Lewis (hereinafter Lewis)
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`Application/Control Number: 90/010,560 Page 3
`Art Unit: 3992
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`Allowable Subject Matter
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`Claims 1-19 are confirmed.
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`The following is a statement of reasons for the indication of allowable subject
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`matter:
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`Claim 1 recites: A method of restricting software operation within a license for
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`use with a computer including an erasable, non-volatile memory area of a BIOS of the
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`computer, 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
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`memory of the BIOS, the verification structure accommodating data that includes at
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`least one license record,
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`verifying the program using at least the verification structure from the erasable
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`non-volatile memory of the BIOS, and
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`acting on the program according to the verification.
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`Claim 18 recites: A method for accessing an application software program using
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`a pseudo-unique key stored in a first non-erasable non-volatile memory area of a
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`computer, the first non-volatile memory area being unable to be programmatically
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`changed, the method, comprising:
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`Application/Control Number: 90/010,560 Page 4
`Art Unit: 3992
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`loading the application software program residing in a non-volatile memory area
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`of the computer;
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`using an agent to perform the following steps:
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`extracting license information from software program;
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`encrypting license information using the pseudo-unique key stored in the first
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`non-volatile memory area;
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`storing the encrypting license information in a second erasable, writable, non-
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`volatile memory area of the BIOS of the computer;
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`subsequently verifying the application software program based on the encrypted
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`license 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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`Lewis discloses an invention that stores license information in non-volatile
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`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
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`cache controller, for which a program having instructions to control that device (a device
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`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
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`in non-volatile memory by Lewis is derived from a combination of non-functional
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`descriptive material and information on the device itself, rather from the substance of
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`the device driver, and is only being used to verify the device itself (or the information for
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`Application/Control Number: 90/010,560 Page 5
`Art Unit: 3992
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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
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`the application software program (as per claim 18), but rather just the device that the
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`program is being used to access (see Lewis, column 5, lines 27-49). Lewis therefore
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`does not anticipate or render obvious claims 1 or 18 and no art has been supplied that
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`overcomes these deficiencies in Lewis.
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`Claims 2-17 and 19 are confirmed based upon their dependence upon allowable
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`claims.
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