Case 1:20-cv-00034-ADA Document 44-4 Filed 03/20/20 Page 1 of 11
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`Exhibit 3
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`16 , 36 ~~ 20f2 ~ ·; VENABLE
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`Case 1:20-cv-00034-ADA Document 44-4 Filed 03/20/20 Page 2 of 11
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`02/06/0,2
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`TIIE UNITED STATES PATENT AND TRADEMARK OFFICE
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`iet~{\(i\O'Q'§
`
`Inre PATENT APPLICATION of
`
`Applicants
`
`Appln.No.
`
`Filed
`
`For
`
`Miki MULLOR et al.
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`09/164,777
`
`October 1, 1998
`
`METHOD OF RESTRICTING
`S0F1W ARE OPERATION WTIHIN
`A LICENSED LIMITATION
`
`) Customer No.
`•26694*
`)
`26694
`)
`) PATENT TRADEMARK
`OFFICE
`)
`)
`)
`)
`)
`)
`
`Group Art Unit
`Examiner
`
`2161
`C. Hewitt
`
`Atty. Dkt.
`
`39636-176166
`
`Assistant Commissioner for Patents
`Washington. D.C. 22031
`
`Sir:
`
`AMENDMENT
`
`Responsive to the Office Action dated January 15, 2002, please amend the application as
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`follows:
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`IN THE CLAIMSY
`
`Please cancel claims 11, 12, 14 and 15 without prejudice to their re-entry at a later date.
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`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 memory of the BIOS .
`l~
`4o. (Amended)
`Received from < 202 962 8300 > at 215102 3:38:28 PM ~astern Standard Time]
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`A method for accessing nn application software program using a
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`!"
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`ANCORA_00000433
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`Case 1:20-cv-00034-ADA Document 44-4 Filed 03/20/20 Page 3 of 11
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`02/05/02 16:36 F~ 2 ~ ' VENABLE
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`Amendment
`U.S. Application No.: 09/164,777
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`•••
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`~003
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`pseudo-unique key stored in a first non-erasable non-volatile memory area of a coJDputer, the
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`first non-volatile me1I1ory area being · unable to be programmntically 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
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`co_,~ter; ~ - ·-. L: "' , \. 1 •. •• • '.~.
`• . • , 1 '- • 1 • •
`.._
`( ) • p ·· ~~ -· ; ~c~ lic~se information fro~ the so~ pro~~(- · ·
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`. •• ·• •
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`encrypting license iDformation using the pseuderunique key stored in the first non(cid:173)
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`volatile memory area;
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`storing the encrypting license infonnation 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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`infonnation ~tored 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 1;1ow pending·in this application. Each of the pending
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`claims is believed to define an invention which is novel and unobvious 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 Ex.amio.er.
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`Claims 11, 12, 14 and 15 have been canceJecL 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 thjs rejection is respectfully requested.
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`Recelild Croll< 2Gl !62 l300 > at 2lll12 3:38:28 PM tEast!m Standard TimeJ8-4
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`2
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`ANCORA_00000434
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`Case 1:20-cv-00034-ADA Document 44-4 Filed 03/20/20 Page 4 of 11
`VENABLE
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`••
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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
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`et al. in view of U.S. Patent No. 5,684,951 to Goldman et al. and U.S. Patent No. 5,479,639
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`Ewertz et al.
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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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`·
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`Misra et al. is cited ~ 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. Toe client system ID 142 is a unique
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`_identifier for the client computer, col 12, lines 50-51. TI1e client system IDs can be based on
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`information collected from a computer's hardware a:od installed softwilre. For example, hard disk
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`volume numbers, 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 key recited in claims 1 and 20.
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`Misra also describes a license ID. which is a wrique 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 certificate indicating the right to use the particular software at issue, col. 10,
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`Jines 60-67. The license ID of Misra is similar to the verification structure end license
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`information recited in claims 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 bas a diffetent meaning and a
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`different function :from the license information· described in Misra. Therefore, a coinbination 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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`Received from< 202 962 8300 > at 215f02 3:38:28 PM ~astern Standard Time)
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`ANCORA_00000435
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`Case 1:20-cv-00034-ADA Document 44-4 Filed 03/20/20 Page 5 of 11
`VENABLE
`--~2/05/0_!_ 16: 37 FAX 2~
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`lg] 005
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`••
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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, col. 3, lines 20-22. This identification information may also in.elude 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 th.e BIOS during manufacture.
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`The identification information uniquely identifies a particular c.omputer. 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 emd 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 ofEwertz 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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`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 unjque 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 ~udo-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 ofEwertz is a static data structure, like the system ID of
`4
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`Received kom < 202 962 8300 > at 215f02 3:38:28 PM ~astern Standard Time)
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`ANCORA_00000436
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`___ o_21os102
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`Case 1:20-cv-00034-ADA Document 44-4 Filed 03/20/20 Page 6 of 11
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`VENABLE
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`~006
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`Amendment
`U.S. Application No.: 09/164,777
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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 fimction to Misra's system ID. Therefore, eveii 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 JD of Misra being stored in the BIOS, not the verification
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`structure or license infonnation 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 nonnally
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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
`infonnation,
`is
`illustrated ... The processing logic shown in Fig. 8 resides in the system
`BIOS of the preferred embodiment,, Col 10, lines 20-28
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`Misra teaches a licensing system that is OS level based:
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`"Toe 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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`program, respectively, that cannot nm 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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`;. i;
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`Received from< 202 962 8300 > at 215/02 3:38:28 PM ~astern Standard Time I
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`ANCORA_00000437
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`Case 1:20-cv-00034-ADA Document 44-4 Filed 03/20/20 Page 7 of 11
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`VENABLE
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`Amendment
`U.S. Application No.: 09/164,777
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`of the programs, which is an indicia of non-obviousness. see MPEP Sec. 2 J 41.03 and re1ated
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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 presenre application data for
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`at least two reasons.
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`First, OS does not support this timctionality and is not recognized as a bard.ware 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 data 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 mediwn. Furthei:more. it is common
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`that all peripheral devices in the PC are listed aud 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 sldlled in the art would not consider the BlOS for any operation, including
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`writing to the BIOS.
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`Second, no file system is associated with the B10S. 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 ~ch a file system would be FAT, FAT32, NIFS, 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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`.,.
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`data.
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`Received from< 202 962 8300 > at 215/02 3:38:28 PM !Eastern Standard Time!
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`ANCORA_00000438
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`Case 1:20-cv-00034-ADA Document 44-4 Filed 03/20/20 Page 8 of 11
`VENABLE
`__ _ 02105/02 16:~8 PAX 2 ·L - - -
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`f4J 008
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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 protocoP' (Misra, 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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`~ any combination, do not fairly teach or suggest the present invention. Therefore the
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`withdrawal ofthis 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 VeT$iOn of the changes made to the specification and
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`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 arc believed in
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`order, and such action is earnestly solicited.
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`Received from < 202 962 8300 > at 2/5/02 3:38:28 PM ~astern Standard TimeJ
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`ANCORA_00000439
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`Case 1:20-cv-00034-ADA Document 44-4 Filed 03/20/20 Page 9 of 11
`02/0S/Q2 16:38 FAX 20~2 ~ VENABLE
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`@009
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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 Account No. 22-0261.
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`·Respectfully submitted,
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`Registration No. 26,924
`Jeffri A. Kaminski
`Registration No. 42, 709
`P.O. Box 34385
`\Vashington,D.C. 20043-9998
`Telephone 202-962-4800
`Telefax 202-962-8300
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`RK/JAK/lrh
`#347353
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`Received fiom < 202 962 8300 > at 215102 3:38:28 PM ~astern Standard Time)
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`ANCORA_00000440
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`Case 1:20-cv-00034-ADA Document 44-4 Filed 03/20/20 Page 10 of 11
`_ _ _ 0_21_05/02 16: ~8 FAX 20 . . VEr-!'.ABLE
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`~010
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`••
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`Amendment
`U.S. Appln. No.: 09/164,777
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`VERSION WITH MARKINGS TO SHOW CHANGES MADE
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`IN THE CLAIMS:
`
`Please cancel claims 11, 12, 14 and 15 without prejudice to their re-entry at a later date.
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`Please amended the claims as follows:
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`16.
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`(A.mended)
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`The method of Claim ~L wherein the--a pseudo-unique key
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`~kules a ~seaaa l:leiE11:1e k:ey js stored in qe non-volatile memory of the BIOS.
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`20.
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`(Amended)
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`A method for accessing an application software program using a
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`pseudo-unique key stored in a first non-erasable non-volatile memory area of a computer, the
`
`first non-volatile memory area being unable to be programmatically changed, the method,
`
`comprising:
`
`loading thea application software program residing in a non-volatile memory area of the
`
`computer;
`
`extracting license information from the software program.;
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`encrypting Jicense information using the pseudo-unique key stored in the first non(cid:173)
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`volatile memory area;
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`storing the encrypting - license information in a second erasable, writable, . B8ft
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`volatilenon-yolatile 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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`imonnati.on 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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`Received from< 202 962 8300 > at 215102 3:38:28 PM ~astern Standard Time)
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`I
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`ANCORA_00000441
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`Case 1:20-cv-00034-ADA Document 44-4 Filed 03/20/20 Page 11 of 11
`VENA~J,.E~---
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`la) 001
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`Und.crtt,., P, NIOl1t Rodualon Act of 1905. no
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`~$C<I FTOJ$Ml1 (D!l-00)
`Amltref Docl<ct NO. ~
`Appnwe4 far U!I<! through 10,131/200Z, OMS D651-0031 "
`U.S. PSl8nt and T~demall< ome&: U.S. DEPARTMl!NT 01" J;.91',lMlii:tc'E\'
`" "ei>11e"111111 of infomi.ttil>o\ un1aa1 It contain& a v.il~
`Bttormo/;'nuriti,'ir.i\;
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`Certificate of Transmission under 37 CFR 1.8
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`The undersigned certifies that the attached Amendment is being
`facsimile filed to the Examiner C. Hewitt (703) 746-7239) on
`February 5, 2002.
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`7.//.'6/~· ~ Signature •
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`Typed or printed name of person signing Certificate
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`Note: Each paper must have its own certificate of transmission, or this
`certificate must identify each submitted paper.
`
`Burd&n Hour Statamont TIiis form Is esdmllled to tskl> 0.03 hout11 to complete. T,me will vary depending upon Ula needs or u,e indMdual ease. Any
`comments on Ille amoum ot Orne requirud ta complete this form &houtd be sent ID the ChiGf tn!ormation Oll1cer, U.S. Patefll and T111i:lem1111c Olftce,
`WasllinglOll, CIC 20231. 00 NOT SEND FEES OR COMPLETED FORMS TO TltlS ADDRl;SS. SEND TO: Asailllant Cammiaaioner fer Patenta,
`~ington. OC 20231.
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`PCIOOCS:v349BSB
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`ANCORA_00000442
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