Case 1:20-cv-00034-ADA Document 45-5 Filed 03/20/20 Page 1 of 12
`Case 1:20-cv-00034-ADA Document 45-5 Filed 03/20/20 Page 1 of 12
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`EXHIBIT 3
`EXHIBIT 3
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`Case 1:20-cv-00034-ADA Document 45-5 Filed 03/20/20 Page 2 of 12
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`UNITED APS DEPARTMENT OF COMMERCE
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`Patent and Trademark Office
`Address: COMMISSIONER OF PATENTS AND TRADEMARKS
`Washington, D.C. 20231
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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
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`09/164, s77 10/01/98 MULLOR
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`P
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`TM02/1220
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`T
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`SPENCER AND FRANK
`SUITE 300 EAST
`1100 NEW YORK AVENUE NW
`WASHINGTON DO 20005-3955
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`1\1
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`REINC4237.01
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`EXAMINER
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`l.-4PWTTT C
`ART UNIT
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`PAPER NUMBER
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`21o1
`DATE MAILED:
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`12/20/00
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`Please find below and/or attached an Office communication concerning this application or
`proceeding.
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`Commissioner of Patents and Trademarks
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`PTO-90C (Rev. 2/95)
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`'U.S. GPO: 2000-473-000/44602
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`1- File Copy
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`ANCORA_00000322
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`Case 1:20-cv-00034-ADA Document 45-5 Filed 03/20/20 Page 3 of 12
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`Office Action Summary
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`Application No.
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`Applicant(s)
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`09/164,777
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`Examiner
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`MULLOR ET AL.
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`Art Unit
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`2161
`Calvin L Hewitt II
`-- The MAILING DATE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) FROM
`THE MAILING DATE OF THIS COMMUNICATION.
`- Extensions of time may be available under the provisions of 37 CFR 1.136 (a). In no event, however, may a reply be timely filed
`after SIX (6) MONTHS from the mailing date of this communication.
`- If the period for reply specified above is less than thirty (30) days, a reply within the statutory minimum of thirty (30) days will be considered timely.
`- If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`- Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`Status
`1)E Responsive to communication(s) filed on 01 December 2000 .
`2b)Z This action is non-final.
`2a)0 This action is FINAL.
`3)0 Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
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`Disposition of Claims
`is/are pending in the application.
`4)0 Claim(s)
`is/are withdrawn from consideration.
`4a) Of the above claim(s)
` is/are allowed.
`5)0 Claim(s)
`6)0 Claim(s) 1-15 is/are rejected.
` is/are objected to.
`7)0 Claim(s)
`are subject to restriction and/or election requirement.
`8)0 Claims
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`Application Papers
`9)0 The specification is objected to by the Examiner.
` is/are objected to by the Examiner.
`10)0 The drawing(s) filed on
` is: a)0 approved b)0 disapproved.
`11)0 The proposed drawing correction filed on
`12)0 The oath or declaration is objected to by the Examiner.
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`Priority under 35 U.S.C. 119
`13)0 Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d).
`a)E All b)0 Some * c)0 None of:
`1.0 Certified copies of the priority documents have been received.
`2.E Certified copies of the priority documents have been received in Application No. 2.
`3.0 Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`14)0 Acknowledgement is made of a claim for domestic priority under 35 U.S.C. & 119(e).
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`Attachment(s)
`15) E Notice of References Cited (PTO-892)
`16) q Notice of Draftsperson's Patent Drawing Review (PTO-948)
`17) q Information Disclosure Statement(s) (PTO-1449) Paper No(s)
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`18) q Interview Summary (PTO-413) Paper No(s).
`Notice of Informal Patent Application (PTO-152)
`19) q
`20) q Other:
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`U.S. Patent and Trademark Office
`PTO-326 (Rev. 9-00)
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`Office Action Summary
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`Part of Paper No. 5
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`ANCORA_00000323
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`Case 1:20-cv-00034-ADA Document 45-5 Filed 03/20/20 Page 4 of 12
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`Application/Control Number: 09/164,777
`Art Unit: 2161
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`Page 2
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`Status of Claims
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`1.
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`Claims 1-15 have been examined.
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`Response to Applicants' Request
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`2.
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`Applicant's desire for clarity regarding the Examiner's Office Action dated
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`October 18, 2000 has been noted. In response, the Examiner has written another Office
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`Action that the Examiner believes speaks directly to the issues raised by the Applicants.
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`Claim Rejections - 35 USC § 102
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`3.
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
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`form the basis for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless —
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`(e) the invention was described in a patent granted on an application for patent by another filed in the United
`States before the invention thereof by the applicant for patent, or on an international application by another who
`has fulfilled the requirements of paragraphs (1), (2), and (4) of section 371(c) of this title before the invention
`thereof by the applicant for patent.
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`Claims 1-4, 6 and 10-13 are rejected under 35 U.S.C. 102(e) as being clearly anticipated
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`by Ginter et al U.S. Patent No. 5,892,900.
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`As per claim 1, Ginter et al teach of a system and method for secure transactions
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`management and electronic rights protection that:
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`ANCORA_00000324
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`Case 1:20-cv-00034-ADA Document 45-5 Filed 03/20/20 Page 5 of 12
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`Application/Control Number: 09/164,777
`Art Unit: 2161
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`Page 3
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`restricts software operation within a license limitation (column 5, lines 29-41; column
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`6, lines 29-65; column 7, lines 45-57)
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`• utilizes a computer that has a first non-volatile memory area (column 70, lines 40-65)
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`, a second non-volatile memory area (column 70, lines 40-65) and a volatile memory
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`area (column 71, lines 12-25)
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`• provides a means of selecting a program residing in the volatile memory (column 71,
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`lines 25-27 and column 82, lines 12-52)
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`•
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`sets up a verification structure in the non-volatile memories (column 70, lines 23-53
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`and column/line 63/67-64/15)
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`• verifies the program using the structure (column 70, lines 23-53 and column/line
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`63/67-64/15)
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`•
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`and acts on the program according to the verification (column 70, lines 23-53 and
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`column/line 63/67-64/15).
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`As per claim 2, the method and system of Ginter et al provide for a license
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`authorization bureau in the form of a VDE (virtual distribution environment) distributor
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`and/or administrator (column/line 278/40 to 281/44).
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`As per claim 3, the method and system of Ginter et al discloses a verification method
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`with a license authorization bureau that comprises of:
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`ANCORA_00000325
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`Case 1:20-cv-00034-ADA Document 45-5 Filed 03/20/20 Page 6 of 12
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`Application/Control Number: 09/164,777
`Art Unit: 2161
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`Page 4
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`• a two-way data communication link between said bureau and end-user computer
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`(figure 77)
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`• a method for establishing end-user rights (column/line 278/40 to 281/44)
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`• data encryption using keys (column 281, lines 10-22)
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`•
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`creating a license record from the selected program at the bureau (column 71,
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`lines 25-27, column 82, lines 12-52, column/line 278/40 to 281/44 and column 15,
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`lines 10-34).
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`As per claim 4,-the method and system of Ginter et al also provides a means of
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`encrypting the license record for the selected program from the second volatile memory
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`(column/line 65/55 to 66/47).
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`As per claim 6, the method and system of Ginter et al provides a means for
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`establishing a licensed software program. Where said program contains license record
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`data and is found in the volatile memory (column 71, lines 25-27, column 82, lines 12-52,
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`column/line 278/40 to 281/44, column 15, lines 10-34, figure 8 and column 96, lines 37-
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`41).
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`As per claim 10, the method and system of Ginter et al provide a means for restricting
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`a program's operation with predetermined limitations if the authorization is invalid
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`(column 279, lines 21-32).
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`As per claim 11, the method and system of Ginter et al provide for a ROM BIOS
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`(figure 69G and column 70, lines 39-53).
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`ANCORA_00000326
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`Case 1:20-cv-00034-ADA Document 45-5 Filed 03/20/20 Page 7 of 12
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`Application/Control Number: 09/164,777
`Art Unit: 2161
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`Page 5
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`As per claim 12, the method and system of Ginter et al provide for an EEPROM
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`BIOS (figure 69G and column 70, lines 54-65).
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`As per claim 13, the method and system of Ginter et al provide for volatile RAM
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`(column 71, lines 22-25).
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`Claim Rejections - 35 USC § 103
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`4.
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`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
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`obviousness rejections set forth in this Office action:
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`(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in
`section 102 of this title, 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.
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`5.
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`Claims 5 and 7-9 are rejected under 35 U.S.C. 103(a) as being unpatentable over
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`Ginter et al U.S. Patent No. 5,892,900 as applied to claims 1, 3, 4 and 6 above, and
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`further in view of Goldman et al 5,684,951.
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`As per claim 5, Ginter et al disclose a verification structure. In addition, Ginter et
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`al disclose a system and method for secure transaction management and electronic rights
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`protection utilizing encryption keys (column 206, lines 57-65).
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`However, Ginter et al do not disclose pseudo unique keys. Goldman et al teach of a
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`method and system for user authorization over a multi-user computer system. In said
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`system, a user has valid id but lacks an authorized means of access. In order to access the
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`desired data, a user is sent a pseudo unique key (abstract, lines 19-21) that is derived from
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`•
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`ANCORA_00000327
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`Case 1:20-cv-00034-ADA Document 45-5 Filed 03/20/20 Page 8 of 12
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`Application/Control Number: 09/164,777
`Art Unit: 2161
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`Page 6
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`a user id and the current IP address. By utilizing such a method a valid user can be
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`provided access to secured data without comprising the security of the larger system.
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`Therefore, it would have been obvious to a person of ordinary skill in the art of
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`encryption, to incorporate pseudo unique keys into the system of Ginter et al.
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`As per claim 7, Ginter et al teach of a method and system for electronic rights
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`protection comprising of volatile memory, non-volatile memory, license records location
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`and licensed software programs (column 5, lines 29-41; column 6, lines 29-65; column
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`15, lines 10-34; column/line 63/67-64/15; column/line 65/55-66-47; column 70, lines 23-
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`65; column 71, lines 12-27; column 96, lines 37-41; column/line 278/40-281/44). Ginter
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`et al also use encryption keys (column 206, lines 57-65). However, Ginter et al do not
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`make use of pseudo unique keys in their system. Goldman et al teach of a method and
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`system for user authorization over a multi-user computer system through the use of
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`pseudo unique keys (abstract, lines 19-23). In said system, a user has valid id but lacks an
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`authorized means of access. In order to access the desired data, a user is sent a pseudo
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`unique key that is derived from a user id and the current IP address. By utilizing such a
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`method a valid user can be provided access to secured data without comprising the
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`security of the larger system. Therefore, it would have been obvious to a person of
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`ordinary skill in the art of the time the invention was made to utilize pseudo unique keys
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`in the system of Ginter et al.
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`ANCORA_00000328
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`Case 1:20-cv-00034-ADA Document 45-5 Filed 03/20/20 Page 9 of 12
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`Application/Control Number: 09/164,777
`Art Unit: 2161
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`Page 7
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`As per claim 8, Ginter et al disclose a method for authoring content that includes
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`encryption keys (column/line 282/ 33 to 283/34). Ginter et al disclose a method for
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`selecting a licensed software program from the volatile memory to form a license record.
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`However, Ginter et al do not use pseudo unique keys for purposes of encryption.
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`Goldman et al teach of a method and system for user authorization over a
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`multi-user computer system through the use of pseudo unique keys (abstract, lines 19-
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`23). In said system, a user has valid id but lacks an authorized means of access. In order
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`to access the desired data, a user is sent a pseudo unique key that is derived from a user id
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`and the current IP address. By utilizing such a method a valid user can be provided access
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`to secured data without comprising the security of the larger system. Therefore it would
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`have been obvious to a person of ordinary skill in the art at the time the invention was
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`made to use pseudo unique keys.
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`As per claim 9, Ginter et al teach of a system and method for encrypting and
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`decrypting of licensing related communications between end-user(s) and a license
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`authorization bureau (column/line 282/33 to 283/34 and 168/25 to 169/40). Ginter et al
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`also teach of volatile and non-volatile memory areas used in conjunction with licensed
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`software programs (columns 70-72, column 82, lines 12-52, column/line 278/40 to
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`281/44, column 15, lines 10-34, figure 8 and column 96, lines 37-41). However, Ginter et
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`al do not disclose pseudo unique keys. Goldman et al provide for the use of pseudo
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`unique keys (abstract, 19-23). Therefore, it would have been obvious to a person of
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`ordinary skill in the art at the time the invention was made, to incorporate pseudo unique
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`keys into the system of Ginter et al.
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`ANCORA_00000329
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`Case 1:20-cv-00034-ADA Document 45-5 Filed 03/20/20 Page 10 of 12
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`Application/Control Number: 09/164,777
`Art Unit: 2161
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`Page 8
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`6.
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`Claims 14 and 15 are rejected under 35 U.S.C. 103(a) as being unpatentable over
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`Ginter et al, U.S. Patent No. 5,892,900 in view of Goldman et al U.S. Patent No.
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`5,684,951.
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`As per claims 14 and 15, Ginter et al. disclose a rights management system for
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`restricting software operation (column 5, lines 29-41; column 6, lines 29-65; column 7,
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`lines 45-57). Further, in order to execute said rights management system, Ginter et al.
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`disclose read only memory (ROM) that may be used store encryption key information.
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`Ginter et al. also disclose ROM components, such as masked ROM and EEPROM, that
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`store permanent portions of code that interface with the encryption and decryption engine
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`(column/line 70/54-71/11). Recall, Ginter et al utilize encryption keys as a method of
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`encryption (column/line 67/48-68/16). However, Ginter et al. do not disclose pseudo
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`unique keys. Goodman et al disclose pseudo unique keys (abstract, lines 19-23) and
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`provides for the storage in a memory unit (column 8, lines 11-12). In said system, a user
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`has valid id but lacks an authorized means of access. In order to access the desired data, a
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`user is sent a pseudo unique key that is derived from a user id and the current IP address.
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`By utilizing such a method a valid user can be provided access to secured data without
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`comprising the security of the larger system. Therefore, it would have been obvious
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`ANCORA_00000330
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`Case 1:20-cv-00034-ADA Document 45-5 Filed 03/20/20 Page 11 of 12
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`Application/Control Number: 09/164,777
`Art Unit: 2161
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`Page 9
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`Conclusion
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`7.
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`The prior art made of record and not relied upon is considered pertinent to
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`applicant's disclosure:
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`• Richardson , III teaches a system for software protection
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`8.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to Calvin Loyd Hewitt II whose telephone number is (703)
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`305-0625. The examiner can normally be reached on Monday-Friday from 8:30 AM —
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`5:00 PM.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
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`supervisor, James P. Trammell, can be reached at (703) 305-9768.
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`Any response to this action should be mailed to"
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`Commissioner of Patents and Trademarks
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`C/o Technology Center 2700
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`Washington, D.C. 20231
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`or faxed to:
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`(703) 308-9051 (for formal communications intended for entry)
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`or:
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`(703) 308-5397 (for informal or draft communications, please label
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`ANCORA_00000331
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`Case 1:20-cv-00034-ADA Document 45-5 Filed 03/20/20 Page 12 of 12
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`Application/Control Number: 09/164,777
`Art Unit: 2161
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`Page 10
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`"PROPOSED" or "DRAFT")
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`Hand-delivered responses should be brought to Crystal Park II, 2121 Crystal Drive,
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`Arlington, VA, Sixth Floor (Receptionist).
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`Any inquiry of a general nature or relating to the status of this application should be
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`directed to the Group receptionist whose telephone number is (703) 305-3900.
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`Calvin Loyd Hewitt II
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`December 4, 2000
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`ANCORA_00000332
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