UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONERFORPATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`90/014,865
`
`09/21/2021
`
`6411941
`
`TO BE DETERMINED
`
`2765
`
`03/11/2022
`7590
`22242
`FITCH EVEN TABIN & FLANNERY, LLP
`120 SOUTH LASALLE STREET
`SUITE 2100
`CHICAGO, IL 60603-3406
`
`EXAMINER
`
`NGUYEN, MINH DIEU T
`
`ART UNIT
`
`PAPER NUMBER
`
`3992
`
`MAIL DATE
`
`DELIVERY MODE
`
`03/11/2022
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL-90A (Rev. 04/07)
`
`

`

`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Commissioner for Patents
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`www.uspto.gov
`
`DO NOT USE IN PALM PRINTER
`
`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
`
`FITCH EVEN TABIN & FLANNERY, LLP
`120 SOUTH LASALLE STREET SUITE 2100
`CHICAGO, IL 60603-3406
`
`EX PARTEREEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO. 90/014,865.
`
`PATENT UNDER REEXAMINATION 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)
`
`

`

`Office Action in Ex Parle Reexamination
`
`Control No.
`90/014,865
`
`Patent Under Reexamination
`6411941
`
`Examiner
`MINH DIEU T NGUYEN
`
`Art Unit
`3992
`
`AIA (FITF) Status
`No
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address -(cid:173)
`
`a. ~ Responsive to the communication(s) filed on 21 September 2021.
`0 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on __ .
`
`b. 0 This action is made FINAL.
`
`c. ~ A statement under 37 CFR 1.530 has not been received from the patent owner.
`
`A shortened statutory period for response to this action is set to expire 2 month(s) from the mailing date of this letter.
`Failure to respond within the period for response will result in termination of the proceeding and issuance of an ex parte reexamination
`certificate in accordance with this action. 37 CFR 1.550(d). EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.550(c).
`If the period for response specified above is less than thirty (30) days, a response within the statutory minimum of thirty (30) days
`will be considered timely.
`
`Part I
`THE FOLLOWING ATTACHMENT(S) ARE PART OF THIS ACTION:
`1. 0 Notice of References Cited by Examiner, PTO-892.
`3. 0
`2. 0
`4. 0
`Information Disclosure Statement, PTO/SB/08.
`
`Interview Summary, PTO-474.
`
`Part II
`
`SUMMARY OF ACTION
`
`Claims __ are not subject to reexamination.
`
`Claims __ have been canceled in the present reexamination proceeding.
`
`1 a. ~ Claims 1-3,6-14 and 16 are subject to reexamination.
`1 b. □
`2. □
`3. □
`4. ~
`5. □
`6. □
`The drawings, filed on __ are acceptable.
`0 approved (7b)
`7. □ The proposed drawing correction, filed on __ has been (7a)
`8. □ Acknowledgment is made of the priority claim under 35 U.S.C. 119(a)-(d) or (f).
`a) 0 All b)
`0 Some* c) 0 None
`of the certified copies have
`1 0 been received.
`2 0 not been received.
`3 0 been filed in Application No. __
`4 0 been filed in reexamination Control No. - -
`5 0 been received by the International Bureau in PCT application No. __
`* See the attached detailed Office action for a list of the certified copies not received.
`9. 0 Since the proceeding appears to be in condition for issuance of an ex parte reexamination certificate except for formal
`matters, prosecution as to the merits is closed in accordance with the practice under ExparteQuayle, 1935 C.D.
`11, 453 O.G. 213.
`
`Claims __ are patentable and/or confirmed.
`
`Claims 1-3,6-14 and 16 are rejected.
`
`Claims __ are objected to.
`
`0 disapproved.
`
`10. 0 Other:
`
`cc: Requester (if third oartv requester)
`U.S. Patent and Trademark Office
`PTOL-466 (Rev. 08-13)
`
`Office Action in Ex Parte Reexamination
`
`Part of Paper No.
`
`20220307
`
`

`

`Application/Control Number: 90/014,865
`Art Unit: 3992
`
`Page 2
`
`Notice of Pre-A/A or A/A Status
`
`The present application is being examined under the pre-AIA first to invent
`
`provisions.
`
`DETAILED ACTION
`
`This non-final Office Action is in response to the communication dated 9/21/2021.
`
`Claims 1-3, 6-14 and 16 are subject to reexamination and rejected below.
`
`I. Procedures Governing Reexamination
`
`Proposed Amendments, Affidavits, or Declarations
`
`In order to ensure full consideration of any amendments, affidavits or
`
`declarations, or other documents as evidence of patentability, such documents must be
`
`submitted in response to this Office action. Submissions after the next Office action,
`
`which is intended to be a final action, will be governed by the requirements of 37
`
`CFR 1.116, after final rejection and 37 CFR 41.33 after appeal, which will be strictly
`
`enforced.
`
`Patent owner is notified that any proposed amendment to the specification and/or
`
`claims in this reexamination proceeding must comply with 37 CFR 1.530(d)-(j), must be
`
`formally presented pursuant to 37 CFR 1.52(a) and (b), and must contain any fees
`
`required by 37 CFR 1.20(c).
`
`The US Patent 6,411,941 has expired, pursuant to 37 CFR 1.530(j), "[n]o
`
`arnendment, other than the cancellation of claims, will be incorporated into the patent by
`
`a certificate issued after the expiration of the patent".
`
`

`

`Application/Control Number: 90/014,865
`Art Unit: 3992
`
`Page 3
`
`Extensions of Time
`
`Extensions of time under 37 CFR 1.136(a) will not be permitted in these
`
`proceedings because the provisions of 37 CFR 1.136 apply only to "an applicant" and
`
`not to parties in a reexamination proceeding. Additionally, 35 U.S.C. 305 requires that
`
`reexamination proceedings "will be conducted with special dispatch" (37 CFR 1.550(a)).
`
`Extension of time in ex parte reexamination proceedings are provided for in 37 CFR
`
`1.550(c).
`
`Concurrent Litigation
`
`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 the patent at issue in this reexamination proceeding throughout
`
`the course of this reexamination proceeding. The third party requester is also reminded
`
`of the 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.
`
`II. Grounds of Rejection
`
`Claim Rejections - 35 USC § 103
`
`In the event the determination of the status of the application as subject to AIA 35
`
`U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any
`
`correction of the statutory basis for the rejection will not be considered a new ground of
`
`

`

`Application/Control Number: 90/014,865
`Art Unit: 3992
`
`Page4
`
`rejection if the prior art relied upon, and the rationale supporting the rejection, would be
`
`the same under either status.
`
`The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis
`
`for all obviousness rejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed
`or described as set forth in section 102, if the differences between the subject
`matter sought to be patented and the prior art are such that the subject matter as
`a whole would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said subject matter pertains.
`Patentability shall not be negatived by the manner in which the invention was
`made.
`
`1.
`
`Claims 1-2, 11 and 13 are rejected under pre-AIA 35 U.S.C. 103(a) as being
`
`unpatentable over Hellman (US 4,658,093) and further in view of Chou et al. (US
`
`5,892,806).
`
`As to claim 1, Hellman discloses a method of restricting software operation
`
`within a license (i.e., limiting use of software within authorized uses, Hellman, 9:29-
`
`10:13, 10:33-54, 10:55-65) tor use with a computer (i.e., base unit 12, Hellman: Figs. 1,
`
`6) including a volatile memory area (i.e., base unit 12 has a temporary memory 28,
`
`e.g., RAM (Random Access Memory), Hellman: Fig. 6) and an erasable, non-volatile
`
`memory area of a BIOS of the computer (i.e., base unit 12 has a non-volatile memory
`
`37, which could be implemented as EEPROM, Hellman: Fig. 6). Hellman does not
`
`explicitly disclose the computer (base unit 12) has BIOS stored in memory, Chou
`
`discloses a BIOS EEPROM 15 on a computer (Chou: Figs, 1, 3, 7, 1:54-2:7, 3:21-35).
`
`It would have been obvious for one of ordinary skill in the art to store both the license
`
`information and the BIOS in Hellman's erasable, non-volatile memory 37 (e.g.,
`
`EEPROM), the method comprising the steps of:
`
`

`

`Application/Control Number: 90/014,865
`Art Unit: 3992
`
`Page 5
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`selecting a program residing in the volatile memory (i.e., selecting software
`
`package 17 residing in temporary RAM memory 28. The software package 17 is
`
`obtained "by purchasing it at a store, over telephone lime, or in some similar manner.'
`
`Hellman, 5:51-56; selecting the software package 17 as part of generating a request for
`
`authorization, such as by extracting the software name from the software package 17,
`
`Hellman, 5:57-61; selecting the software package 17 for input to the cryptographic hash
`
`function to calculate the cryptographic hash H, Hellman, 9: 15-28; selecting the software
`
`package 17 for use by the software player 42, Hellman, 10:33-65; if the software
`
`package 17 "is a computer program, then software player 42 would be a microprocessor
`
`or central processing unit (CPU).", Hellman, 10:66-11 :3).
`
`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 (i.e., using update unit 36 (acting as the claimed "agent") to set
`
`up a verification structure in non-volatile memory 37, Hellman, 10: 1-4. The update unit
`
`36 sets up the claimed "verification structure" in the non-volatile memory 37 in the form
`
`of storing value M at a specific address H for a software program identified by that hash
`
`value H. The value Mis the claimed "license record", because it indicates the scope of
`
`authorized use - the number of uses, where "M" is the number- for the specific
`
`software package 17 identified by hash value H, Hellman: Fig. 6. As noted above, Chou
`
`teaches storing sensitive information in the BIOS EEPROM to reduce the risk of
`
`tampering with that information, Chou, 1 :54-2:7, 3:52-62, it would have been obvious to
`
`one of ordinary skill in the art to store Hellman's license information in the BIOS
`
`

`

`Application/Control Number: 90/014,865
`Art Unit: 3992
`
`Page 6
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`EEPROM as Chou teaches so as to discourage users from tampering the license
`
`information and to provide extra protection to the sensitive information);
`
`verifying the program using at least the verification structure from the erasable
`
`non-volatile memory of the BIOS (i.e., Using the value M that is stored in the non(cid:173)
`
`volatile memory 37 to verify software package 17. When an attempt is made to run
`
`software package 17, the value H is generated and sent to the update unit 36, Hellman,
`
`10:33-43. The update unit 36 uses Has an address in the non-volatile memory 37 to
`
`verily if a license exists for the software package 37. Hellman at 10:33-43. If a license
`
`does exist for the software package 17 in the non-volatile memory 37, then the update
`
`unit 36 retrieves the number of remaining authorized uses M, Hellman, 10:44-54);
`
`acting on the program according to the verification (i.e., allowing the software
`
`package 17 to be used if a license record was found in the non-volatile memory 37 and
`
`there are authorized uses remaining, Hellman, 10:40-49 ).
`
`As to claim 2, the combination of Hellman and Chou discloses establishing a
`
`license authentication bureau (i.e., An implementation of the authorization and billing
`
`unit 13 that creates an authorization A in order to securely pass license information to
`
`the base unit 12, Hellman, 6:16-7:16. Authorization A as "an authenticator which is a
`
`cryptographic function of the base unit's key, the software, the number of times use of
`
`the software is authorized, and the random number generated by the base unit",
`
`Hellman, 4:51-55).
`
`

`

`Application/Control Number: 90/014,865
`Art Unit: 3992
`
`Page 7
`
`As to claim 11, the combination of Hellman and Chou discloses wherein the
`
`volatile memory is a RAM (i.e., temporary memory 28 is "for example a RAM", Hellman,
`
`8:67-68)
`
`As to claim 13, the combination of Hellman and Chou discloses wherein a
`
`unique key is stored in a first non-volatile memory area of the computer (i.e., storing a
`
`serial number and a key Kin the permanent memory 31, Hellman, 8:61-9:15, 9:29-32).
`
`2.
`
`Claims 3, 6-10, 12, 14, 16 are rejected under pre-AIA 35 U.S.C.103(a) as
`
`being unpatentable over Hellman (US 4,658,093) in view of Chou et al. (US
`
`5,892,806) and further in view of Schneck et al. (US 5,933,498).
`
`As to claim 3, the combination of Hellman and Chou discloses wherein setting
`
`up a verification structure further comprising the steps of:
`
`establishing, between the computer and the bureau, a two-way data(cid:173)
`
`communications linkage (i.e., a two-way data communication is established between the
`
`base unit 12 and the authorization and billing unit 13 over insecure communication
`
`channel 11, Hellman, 5:39-6:8);
`
`transferring, from the computer to the bureau, a request-for-license including an
`
`identification of the computer and the license-record's contents from the selected
`
`program (i.e., the base unit 12 transferring a "user originated request for software use"
`
`(the claimed "request-for-license'') to the authorization and billing unit 13, Hellman, 5:57-
`
`61. The request includes a "serial number, identification number, user name or similar
`
`identifier unique to base unit 12", Hellman, 5:57-65. The request also includes the
`
`

`

`Application/Control Number: 90/014,865
`Art Unit: 3992
`
`Page 8
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`software name identifying the software, as well as other information like the number of
`
`additional uses, N (i.e., the claimed "license record's contents from the selected
`
`program"), Hellman, 5:57-66);
`
`forming an encrypted license-record at the bureau by encrypting parts of the
`
`request-for-license using part of the identification as an encryption key (i.e., the billing
`
`and authorization unit 13 forming an encrypted license record in the form of
`
`authorization A, Hellman, 6:16-7:16). Hellman discloses that the serial number could be
`
`any "identifier unique to base unit 12", Hellman, 5:59-65. Hellman does not disclose,
`
`however Schneck discloses that a public key could be used to identify a computer
`
`system (Schneck, 11 :32-35). It would have been obvious to one of ordinary skill in the
`
`art at the time of the invention to use the public key as an identifier for a computer in the
`
`system of Hellman and Chou, as Schneck teaches, to securely encrypt the authorization
`
`A.
`
`transferring, from the bureau to the computer, the encrypted license-record (i.e.,
`
`the billing and authorization unit 13 transfers the authorization A to the base unit 12,
`
`Hellman, 6:3-15); and
`
`storing the encrypted license record in the erasable non-volatile memory area of
`
`the BIOS (i.e., Hellman discloses the number of authorized uses Mis stored in the non(cid:173)
`
`volatile memory 37, Hellman, 9:50-10:13). It would have been obvious to one of
`
`ordinary skill in the art to store authorization A - which includes Mas a component
`
`value - at memory address H in non-volatile memory 37, instead of storing plaintext
`
`value M, to prevent a malicious actor from using the license authorization for another
`
`software package on the same base unit (because authorization A is encrypted with has
`
`

`

`Application/Control Number: 90/014,865
`Art Unit: 3992
`
`Page 9
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`value H for the software package 17) and to prevent a malicious actor from using the
`
`license authorization on another base unit (because authorization A is encrypted with a
`
`key unique to the base unit). Schneck discloses any information stored on a non-volatile
`
`memory, as done in Hellman, should be stored in encrypted form to prevent an
`
`unauthorized use of a licensed software (Schneck, 17:6-12, 25:64-67).
`
`As to claim 6, the combination of Hellman and Chou discloses wherein selecting
`
`a program includes the steps of: establishing a licensed-software-program in the volatile
`
`memory of the computer (i.e., loading the software package 17 in the temporary
`
`memory 28. Schneck discloses a first step to access protected information would be to
`
`"request the operating system to read such data into memory, Schneck, 18:7-10. Once
`
`in memory, software package 17 from Hellman would be selected from the temporary
`
`memory 28, such as: by extracting the software name from the software package 17,
`
`Hellman, 5:57-61; for input to the cryptographic hash function to calculate the
`
`cryptographic hash H, Hellman, 9:15-28; or for use by the software player 42, Hellman,
`
`10:33-65) wherein said licensed-software-program includes contents used to form the
`
`license-record (i.e., the licensed software program includes contents used to form the
`
`license record, the software package 17 is itself used to generate the hash value H,
`
`which is part of the authorization A, Hellman, 6:27-35, 6:62-66, 9:16-28).
`
`

`

`Application/Control Number: 90/014,865
`Art Unit: 3992
`
`Page 10
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`As to claim 7, the combination of Hellman, Chou and Schneck discloses
`
`wherein using an agent to set up the verification structure (see addressed claims 1 and
`
`6) includes the steps of:
`
`establishing or certifying the existence of a pseudo-unique key in a first non(cid:173)
`
`volatile memory area of the computer (i.e., storing a serial number and a key, K, (the
`
`claimed "pseudo-unique key") in the permanent memory 31 (the claimed "first non(cid:173)
`
`volatile memory area"), Hellman, 8:61-9:15, 9:29-32); and establishing at least one
`
`license-record location in the first nonvolatile memory area or in the erasable, non(cid:173)
`
`volatile memory area of the BIOS (i.e., a location is established at an address
`
`associated with hash value H (the claimed "license-record location") in the non-volatile
`
`memory 37, Hellman, 9:64-10:12).
`
`As to claim 8, the combination of Hellman, Chou and Schneck discloses
`
`wherein establishing a license-record (see addressed claim 6) includes the steps of:
`
`forming a license-record by encrypting of the contents used to form a license-record
`
`with other predetermined data contents, using the key (i.e., Hellman disclosed: a
`
`"license-record" in the form of authorization A, as modified to Schneck to store
`
`authorization A in non- volatile memory 37; the "contents used to form a license-record"
`
`in the form of the software package 17 and its corresponding hash value H; and a "key"
`
`in the form of key SK. Hellman discloses forming the authorization A by encrypting the
`
`"contents used to form a license-record ... using the key" in the form of encrypting the
`
`hash value H with other contents using the key SK (which can be the same as key K),
`
`

`

`Application/Control Number: 90/014,865
`Art Unit: 3992
`
`Page 11
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`Hellman, 6:62-7:2, 9:29-40. Hellman discloses encrypting "other predetermined data
`
`contents" in the license record in the form of number of requested uses N and random
`
`number R, Hellman, 6:62-7:2, 9:50-63); and establishing the encrypted license-record in
`
`one of the at least one established license-record locations (i.e., storing a license record
`
`at a license-record location in the form of storing a number of authorized uses Mat an
`
`address associated with hash value Hin the non-volatile memory 37, Hellman 9:64-
`
`10:13).
`
`As to claim 9, the combination of Hellman, Chou and Schneck discloses
`
`wherein verifying the program (i.e., see addressed claims 1 and 7) includes the steps of:
`
`encrypting the licensed-software-program's license-record contents from the volatile
`
`memory area or decrypting the license-record in the erasable, non-volatile memory area
`
`of the BIOS, using the pseudo-unique key (i.e. the verification could be performed would
`
`be to decrypt the authorization A using the unique key K for the based unit 12 in order to
`
`retrieve the value M included therein. The value M could then be used as already
`
`described in Hellman, Hellman, 10:33-54. One would recognize that because the
`
`authorization A was encrypted, the authorization A would have to be decrypted in order
`
`to retrieve the number of authorized uses value M); and comparing the encrypted
`
`licenses-software-program's license-record contents with the encrypted license-record
`
`in the erasable, non-volatile memory area of the BIOS, or comparing the license(cid:173)
`
`software-program's license-record contents with the decrypted license-record in
`
`erasable non-volatile memory area of the BIOS (Hellman disclosed: the "license(cid:173)
`
`software-program's license-record contents" in the form of the software package 17 and
`
`

`

`Application/Control Number: 90/014,865
`Art Unit: 3992
`
`Page 12
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`its corresponding hash value H; the "license-record" in the form of authorization A, as
`
`modified to Schneck to store authorization A in non-volatile memory 37; and the "non(cid:173)
`
`volatile memory area of the BIOS" in the form of the non-volatile memory 37, as
`
`modified by Chou to store the BIOS routines. As discussed above, when Hellman was
`
`modified by the teachings of Schneck to store authorization A in the non-volatile
`
`memory 37, it would have been obvious to decrypt the authorization A from the non(cid:173)
`
`volatile memory 37 as part of verification of the software package 17. It would have
`
`been obvious to compare the decrypted authorization A with the software package 17
`
`and the corresponding hash value H. It would be necessary to compare the hash value
`
`H included as part of the authorization A to the software package 17 that the user was
`
`attempting to use. If the base unit 12 did not perform this comparison of the hash value
`
`Him the authorization A to the hash value H for the software package 17 in use, then
`
`the tampering described above would not be prevented. As such, it would have been
`
`obvious to implement this comparison im the modified system of Hellman, and thereby
`
`include "comparing the license-software- program's license-record contents with the
`
`decrypted license-record in erasable non-volatile memory area of the BIOS."
`
`As to claim 10, the combination of Hellman, Chou and Schneck discloses
`
`wherein acting on the program includes the step: restricting the program's operation
`
`with predetermined limitations if the comparing yields non-unity or insufficiency (i.e.,
`
`restricting the software package 17 from being used if there is no license record found
`
`in the non-volatile memory 37 or there are no authorized uses left, Hellman, 10:40-54. It
`
`would have been obvious to compare the hash value H from the authorization A stored
`
`

`

`Application/Control Number: 90/014,865
`Art Unit: 3992
`
`Page 13
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`in the non-volatile memory 37 to the hash value H for the software package 17 that the
`
`user is attempting to use. When those hash values do not match, the authorization A
`
`does not correspond to the software package 17 that the user is attempting to use. In
`
`such a case it would have been obvious to prevent the user form using the software
`
`package 17, Hellman, 10:50-54).
`
`As to claim 12, wherein a pseudo-unique key is stored in the non-volatile
`
`memory of the BIOS (i.e., Hellman discloses "non-volatile memory of the BIOS" in the
`
`form non- volatile memory 37, as modified by Chou to store BIOS routines. Hellman
`
`discloses that the serial number could be any "serial number, identification number, user
`
`name or similar identifier unique to base unit 12." Hellman, 5:57-6:2. Schneck discloses
`
`that "System !Os/Public keys" can be used to identify a device. Schneck 11 :32-34. It
`
`would have been obvious to use a public key (the claimed "pseudo-unique key" in
`
`Hellman's system because Hellman already disclosed that a public key cryptographic
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`system was compatible with Hellman's system, Hellman, 11 :20-68. When Hellman was
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`modified to use a public key, it would have recognized that the public key would need to
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`be stored in the non-volatile memory 37 in order to be maintained when power was lost,
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`Hellman, 9:16-49. Hellman only discloses two such non-volatile memories: permanent
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`memory 31 and non-volatile memory 37. Hellman, 8:61-9:15, Figure 6. It would have
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`been obvious to store the public key in the non-volatile memory 37 as one of a limited
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`number of design choices, i.e., one of two options. Chou discloses that a public key can
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`be stored in the BIOS memory, Chou, 4:6-19, Figs 3, 7. It would have been obvious to
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`

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`Application/Control Number: 90/014,865
`Art Unit: 3992
`
`Page 14
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`store the public key in the non-volatile memory 37 and to use the non-volatile memory
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`37 as the BIOS memory).
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`As to claim 14, the combination of Hellman, Chou and Schneck discloses
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`wherein the step of using the agent to set up the verification record, including the
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`license record, includes encrypting a license record data in the program using at least
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`the unique key (i.e., as discussed in claim 3, with the modification of Hellman, the
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`authorization A is stored instead of the plaintext value M. Hellman discloses the "agent"
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`in the form of the update unit 36 in cooperation with authorization and billing unit 13; a
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`"verification record, including the license record" in the form of the authorization A.
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`Schneck discloses any information stored on a non-volatile memory, as done in
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`Hellman, should be stored in encrypted form to prevent an unauthorized use of a
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`licensed software (Schneck, 17:6-12, 25:64-67). The software package 17 includes data
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`used to form the authorization A. Hellman discloses that the entirety of the software
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`package 17 is used to generate the hash value H, Hellman, 6:31-61, 9:16-28. The hash
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`value His part of the authorization A. Hellman, 6:62-7:2. Hellman discloses that the
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`authorization A is encrypted using the secret key SK, which can be the same as the key
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`K. Hellman, 6:62-7:2, 9:29-40).
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`As to claim 16, the combination of Hellman, Chou and Schneck discloses
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`wherein the step of verifying the program includes a decrypting the license record data
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`accommodated in the erasable second non-volatile memory area of the BIOS using at
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`

`

`Application/Control Number: 90/014,865
`Art Unit: 3992
`
`Page 15
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`least the unique key (i.e., As discussed above, Hellman discloses the "license-record" in
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`the form of authorization A, as modified to Schneck to store authorization A in non(cid:173)
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`volatile memory 37; an "erasable, non-volatile memory area of the BIOS" in the form of
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`the non-volatile memory 37, as modified by Chou to store the BIOS routines; and the
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`"unique key" in the form of the key K. A person of ordinary skill in the arl would have
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`recognized that the non-volatile memory 37, an "erasable, non-volatile memory area of
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`the BIOS" could also be an erasable second non-volatile memory area of the BIOS.
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`When the user attempts to use the software package 17, the plaintext value M stored in
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`the non-volatile memory 37 needs to be verified. The verification would have been
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`performed using the authorization A. One way in which the verification could be
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`performed would be to decrypt the authorization A using the unique key K for the base
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`unit 12 in order to retrieve the value M included therein. The value M could then be used
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`as already described in Hellman. Hellman, 10:33-54. A POSA would have recognized
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`that, because the authorization A was encrypted, the authorization A would have to be
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`decrypted in order to retrieve the number of authorized uses value M).
`
`CORRESPONDENCE
`
`All correspondence relating to this ex parte reexamination proceeding should be
`
`directed:
`
`By EFS:
`
`Registered users may submit via the electronic filing system EFS-Web, at
`!lttps://efs,uspto,aov/efiie/myportaVefs~reaistered
`
`By Mail to:
`
`Mail Stop Ex Parte Reexam
`Central Reexamination Unit
`Commissioner for Patents
`
`

`

`Application/Control Number: 90/014,865
`Art Unit: 3992
`
`Page 16
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`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
`
`For EFS-Web transmissions, 37 CFR 1.8(a)(1 )(i) (C) and (ii) states that correspondence
`
`(except for a request for reexamination and a corrected or replacement request for
`
`reexamination) will be considered timely filed if (a) it is transmitted via the Office's
`
`electronic filing system in accordance with 37 CFR 1.6(a)(4), and (b) includes a
`
`certificate of transmission for each piece of correspondence stating the date of
`
`transmission, which is prior to the expiration of the set period of time in the Office action.
`
`Any inquiry concerning this communication or earlier communications from the
`
`Examiner, or as to the status of this proceeding, should be directed to the Central
`
`Reexamination Unit at telephone number (571) 272-7705.
`
`Signed:
`
`/Minh Dieu Nguyen/
`
`Minh Dieu Nguyen
`Primary Examiner
`USPTO, Art Unit 3992
`(571) 272-3873
`
`Conferees:
`/Ovidio Escalante/
`Primary Examiner, Art Unit 3992
`/M.F/
`Supervisory Patent Examiner, Art Unit 3992
`
`