Case 1:20-cv-00034-ADA Document 45-7 Filed 03/20/20 Page 1 of 16
`Case 1:20-cv-00034-ADA Document 45-7 Filed 03/20/20 Page 1 of 16
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`EXHIBIT 5
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`EXHIBIT 5
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`Case 1:20-cv-00034-ADA Document 45-7 Filed 03/20/20 Page 2 of 16
`UNITED STA
`EPARTMENT OF COMMERCE
`Patent and Trademark Office
`Address: COMMISSIONER OF PATENTS AND TRADEMARKS
`Washington, D.C. 20231
`
`APPLICATION NO.
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`FILING DATE
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
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`09/164,777 10/01/98
`
`MULLOR
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`T
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`SPENCER AND FRANK
`SUITE 300 EAST
`1100 NEW YORK AVENUE NW
`WASHINGTON DC 2000S-958
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`TM01/0622
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`7
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`REINC4237.01
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`EXAMINER
`
`HFIA .....
`ART UNIT
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`.. .FT r
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`PAPER NUMBER
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`2161
`DATE MAILED: —
`OE / 22/ 0 1
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`Please find below and/or attached an Office communication concerning this application or
`proceeding.
`
`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_00000350
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`

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`• •
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`Case 1:20-cv-00034-ADA Document 45-7 Filed 03/20/20 Page 3 of 16
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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.
`
`Art Unit
`
`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)E1 Responsive to communication(s) filed on 21 May 2001 .
`2b)0 This action is non-final.
`2aa 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.
`
`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)12g Claim(s) 1-13 and 16-20 is/are rejected.
` is/are objected to.
`7)0 Claim(s)
`are subject to restriction and/or election requirement.
`8)0 Claims
`
`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.
`
`Priority under 35 U.S.C. § 119
`13)E] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`a)E] All b)0 Some * c)0 None of:
`1.Z Certified copies of the priority documents have been received.
`2.0 Certified copies of the priority documents have been received in Application No.
`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).
`
`Attachment(s)
`
`15) q Notice of References Cited (1310-892)
`16) q Notice of Draftsperson's Patent Drawing Review (PTO-948)
`17) q Information Disclosure Statement(s) (PTO-1449) Paper No(s)
`
`18) q Interview Summary (PTO-413) Paper No(s).
`19) q Notice of Informal Patent Application (PTO-152)
`20) q Other:
`
`U.S. Patent and Trademark Office
`PTO-326 (Rev. 01-01)
`
`Office Action Summary
`
`Part of Paper No. 7
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`ANCORA_00000351
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`Case 1:20-cv-00034-ADA Document 45-7 Filed 03/20/20 Page 4 of 16
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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 1-13 and 16-20 have been examined.
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`Response to Arguments and Amendment
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`2.
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`The Applicants are of the opinion that the Ginter et al. reference is insufficient as
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`it is believed that it does not teach, "... setting up a verification structure and verifying
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`the program using the verification structure". The Examiner will focus his comments to
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`this matter as other comments regarding the intended use of the claimed invention (e.g.
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`"stationary object" vs. "travelling object") do not result in a structural difference between
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`the claimed invention and the prior art. And, if the prior art structure is capable of
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`performing the intended use, then it meets the claim- See In re Casey, 152 USPQ 235
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`(CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963). To this end, the
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`Examiner would like to reiterate that Ginter et al. the system of Ginter et al. supports,
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`"launchable content" (column/line 24/54-25/27) and maintains, and allows for evolving,
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`content and content control as it passes through a "chain of handling" (column/line
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`28/42-32/60).
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`Regarding verification structure, Ginter et al. create for each VDE object a
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`permission record (PERC) (column/line 93/5-94/4; column/line 155/38-159/12) that "...
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`ANCORA_00000352
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`Case 1:20-cv-00034-ADA Document 45-7 Filed 03/20/20 Page 5 of 16
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`Application/Control Number: 09/164,777
`Art Unit: 2161
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`Page 3
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`controls how access and/or manipulation permissions are distributed and/or how content
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`and/or other information may otherwise be used (column 155, lines 46-51). Ginter et al
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`teach that electronic appliances may include one or more SPUs (column 64, lines 1-4)
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`and may be a standardized feature on microprocessors (column 65, lines 17-55). As
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`previously stated, the SPU contains, volatile and non-volatile memories (column/line
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`70/11-71/15; column/line 71/51-72/67). The SPU Internal ROM contains, "...kernel
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`programs, load modules and encryption key information [that] enable the control of
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`certain basic functions of the SPU" and ". . . components that are at least in part
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`dependent on [device configuration] may be loaded in [ROM] along with additional load
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`modules that have been determined to be required for specific installations or applications
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`(column 70, lines 48-53). Further, Ginter et al. teach that SPU hardware, provides at least
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`enough processing capabilities to support the secure parts of processing such as events
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`that generate a usage permission (figure 3; column 58, lines 22-49; column 60, lines 45-
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`55). Therefore, the Examiner regards the generation of usage permissions as basic to a
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`SPU, hence, the appropriate load modules would be present in the ROM or EEPROM
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`(column 70, lines 54-65) to allow for such minimum processing. Also, Ginter et al. teach
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`that content control information follows the content (e.g. PERC) therefore, it is inherent
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`that PERC-relevant data would be stored in non-volatile memory (relying on the standard
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`definition of "non-volatile" memory as memory that is maintained even when the power
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`is removed from :the storage system). Finally, the Examiner takes issue with the
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`Applicant using EEPROM to store a license record including author name, program name
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`ANCORA_00000353
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`Case 1:20-cv-00034-ADA Document 45-7 Filed 03/20/20 Page 6 of 16
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`Application/Control Number: 09/164,777
`Art Unit: 2161
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`Page 4
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`and number of licensed users. The Applicant has not disclosed the necessary hardware to
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`allow a user to add, remove and modify a license record stored in an EEPROM.
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`EEPROM is read-only memory. Therefore the ability to update existing and add new
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`records to data stored in the EEPROM is contradictory.
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`Claim Rejections - 35 USC 1 112
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`3.
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`Claim 1 is rejected under 35 U.S.C. 112, first paragraph, as containing subject
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`matter which was not described in the specification in such a way as to reasonably
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`convey to one skilled in the relevant art that the inventor(s), at the time the application
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`was filed, had possession of the claimed invention. The specification does not support
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`the Applicants' claim of using non-erasable, non-volatile memory being used to store
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`license records.
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`Claims 2-19 are also rejected as they depend from claim 1.
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`4.
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`Claim 1 is rejected under 35 U.S.C. 112, first paragraph, as containing subject
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`matter which was not described in the specification in such a way as to enable one skilled
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`in the art to which it pertains, or with which it is most nearly connected, to make and/or
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`use the invention. The applicant refers to secondary non-volatile storage as EEPROM
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`(Specification, page 8, lines 1 and 25-27). However, EEPROMs require a special or
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`programmer voltage to program it, store 0's and 1's, are programmed at the factory and
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`ANCORA_00000354
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`Case 1:20-cv-00034-ADA Document 45-7 Filed 03/20/20 Page 7 of 16
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`Application/Control Number: 09/164,777
`Art Unit: 2161
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`•
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`Page 5
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`when erased all data is removed. The Applicants do not teach the device necessary to edit
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`an EEPROM nor have they made it clear to the Examiner how their system would be
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`implemented in light of the non-trivial processing required to write and erase its data.
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`Claims 2-19 are also rejected as they depend from claim 1.
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`5.
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`Claim 1 is rejected under 35 U.S.C. 112, first paragraph, as based on a disclosure
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`which is not enabling. A device to write to an EEPROM and a method taking into
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`account said device are critical or essential to the practice of the invention, but not
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`included in the claim(s) is not enabled by the disclosure. See In re Mayhew, 527
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`F.2d 1229, 188 USPQ 356 (CCPA 1976). The Applicants do not teach the device
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`necessary to edit an EEPROM nor have they made it clear to the Examiner how their
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`system would be implemented in light of the non-trivial processing required to write and
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`erase its data.
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`Claims 2-19 are also rejected as they depend from claim 1.
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`6.
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`7
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`The following is a quotation of the second paragraph of 35 U.S.C. 112:
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`The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the
`subject matter which the applicant regards as his invention.
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`While applicant may be his or her own lexicographer, a term in a claim may not
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`be given a meaning repugnant to the usual meaning of that term. See In re Hill, 161
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`F.2d 367, 73 USPQ 482 (CCPA 1947). The term "non-volatile" in claim 1 is used by
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`ANCORA_00000355
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`Case 1:20-cv-00034-ADA Document 45-7 Filed 03/20/20 Page 8 of 16
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`Application/Control Number: 09/164,777
`Art Unit: 2161
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`•
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`Page 6
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`the claim to exclude "hard disk," while it is accepted that a "hard disk" is "non-volatile"
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`as it does not lose data when the power is removed from it.
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`Claims 2-19 are also rejected as they depend from claim 1.
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`8.
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`Claim 20 is rejected under 35 U.S.C. 112, second paragraph, as being incomplete
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`for omitting essential steps, such omission amounting to a gap between the steps. See
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`MPEP § 2172.01. The omitted steps are: the encrypting of the pseudo unique key.
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`Claim Rejections - 35 USC 11102
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`9.
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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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`• 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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`ANCORA_00000356
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`

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`Case 1:20-cv-00034-ADA Document 45-7 Filed 03/20/20 Page 9 of 16
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`Application/Control Number: 09/164,777
`Art Unit: 2161
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`Page 7
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`• utilizes a computer that has a first non-volatile memory column/line 70/45-71-16;
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`column/line 71/52-72/67; column 231, lines 13-32; column 236, lines 43-53; column
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`240, lines 7-42; column 241, lines 19-30; column/line 245/55-246/24), a second non-
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`volatile memory area (column/line 70/45-71-16; column/line 71/52-72/67; column
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`231, lines 13-32; column 236, lines 43-53; column 240, lines 7-42; column 241, lines
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`19-30; column/line 245/55-246/24) and a volatile memory area (column 71, lines 12-
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`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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`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_00000357
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`

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`Case 1:20-cv-00034-ADA Document 45-7 Filed 03/20/20 Page 10 of 16
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`Application/Control Number: 09/164,777
`Art Unit: 2161
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`Page 8
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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 15,
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`lines 10-34; column 71, lines 25-27, column 82, lines 12-52, column/line 278/40
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`to 281/44 ).
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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
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`restricting a program's operation with predetermined limitations if the authorization is
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`invalid (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_00000358
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`

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`Case 1:20-cv-00034-ADA Document 45-7 Filed 03/20/20 Page 11 of 16
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`Application/Control Number: 09/164,777
`Art Unit: 2161
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`Page 9
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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 g 103
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`10.
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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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`11.
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`Claims 5 and 7-9 and 16-20 are rejected under 35 U.S.C. 103(a) as being
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`unpatentable over Ginter et al. U.S. Patent No. 5,892,900 as applied to claims 1, 3, 4 and
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`6 above, and further in view of Goldman et al. 5,684,951.
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`As per claim 5 and 16-20, Ginter et al. disclose a verification structure. In
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`addition, Ginter et al. disclose a system and method for secure transaction management
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`and electronic rights protection utilizing encryption keys (column 15, lines 35-60;
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`column/line 45/3-46/26; column 49, lines 47-52; column 206, lines 57-65). Ginter et al.
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`also teach unique keys and storing keys in non-volatile memory (column/line 21/60-
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`22/25; column/line 70/45-71-16; column/line 71/52-72/67). However, Ginter et al. do not
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`disclose pseudo unique keys. Goldman et al. teach of a method and system for user
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`ANCORA_00000359
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`

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`Case 1:20-cv-00034-ADA Document 45-7 Filed 03/20/20 Page 12 of 16
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`Application/Control Number: 09/164,777
`Art Unit: 2161
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`Page 10
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`authorization over a multi-user computer system. In said system, a user has valid id but
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`lacks an authorized means of access. In order to access the desired data, a user is sent a
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`pseudo unique key (abstract, lines 19-21) that is derived from a user id and the current IP
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`address. 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. By utilizing
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`such a method a valid user can be provided access to secured data without comprising the
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`security of the larger system. It would have also been obvious to encrypt communications
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`using pseudo unique keys if less secure means of data exchange was deemed appropriate.
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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
`
`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. Therefore, it would
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`have been obvious to a person of ordinary skill in the art of the time the invention was
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`made to utilize pseudo unique keys in the system of Ginter et al.. By utilizing such a
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`ANCORA_00000360
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`

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`Case 1:20-cv-00034-ADA Document 45-7 Filed 03/20/20 Page 13 of 16
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`Application/Control Number: 09/164,777
`Art Unit: 2161
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`Page 11
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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.
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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. Therefore it would have been obvious to a person of ordinary
`
`skill in the art at the time the invention was made to use pseudo unique keys. By utilizing
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`such a method a valid user can be provided access to secured data without comprising the
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`security of the larger system. In addition, it would have also been obvious to encrypt
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`communications using pseudo unique keys if less secure means of data exchange was
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`deemed appropriate.
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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 (figure 8; column 15, lines 10-34; columns 70-72, column 82, lines
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`ANCORA_00000361
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`

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`Case 1:20-cv-00034-ADA Document 45-7 Filed 03/20/20 Page 14 of 16
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`tti
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`Application/Control Number: 09/164,777
`Art Unit: 2161
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`Page 12
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`12-52„ column/line 70/45-71-16; column/line 71/52-72/67; column 96, lines 37-41;
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`column 231, lines 13-32; column 236, lines 43-53; column 240, lines 7-42; column 241,
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`lines 19-30; column/line 245/55-246/24; column/line 278/40-281/44). 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.. 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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`Conclusion
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`12.
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`Applicant's amendment necessitated the new ground(s) of rejection presented in
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`this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP
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`§ 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37
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`CFR 1.136(a).
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`A shortened statutory period for reply to this final action is set to expire THREE
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`MONTHS from the mailing date of this action. In the event a first reply is filed within
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`TWO MONTHS of the mailing date of this final action and the advisory action is not
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`mailed until after the end of the THREE-MONTH shortened statutory period, then the
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`shortened statutory period will expire on the date the advisory action is mailed, and any
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`ANCORA_00000362
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`

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`Case 1:20-cv-00034-ADA Document 45-7 Filed 03/20/20 Page 15 of 16
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`Application/Control Number: 09/164,777
`Art Unit: 2161
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`Page 13
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`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the
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`advisory, action. In no event, however, will the statutory period for reply expire later than
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`SIX MONTHS from the date of this final action.
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`13.
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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 , HI teaches a system for software protection
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`14.
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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.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, James P. Trammell, can be reached at (703) 305-9768.
`
`Any response to this action should be mailed to"
`
`Commissioner of Patents and Trademarks
`
`C/o Technology Center 2700
`
`Washington, D.C. 20231
`
`or faxed to:
`
`(703) 308-9051 (for formal communications intended for entry)
`
`or:
`
`ANCORA_00000363
`
`

`

`Case 1:20-cv-00034-ADA Document 45-7 Filed 03/20/20 Page 16 of 16
`
`Application/Control Number: 09/164,777
`Art Unit: 2161
`
`Page 14
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`(703) 308-5397 (for informal or draft communications, please label
`
`"PROPOSED" or "DRAFT")
`
`Hand-delivered responses should be brought to Crystal Park II, 2121 Crystal Drive,
`
`Arlington, VA, Sixth Floor (Receptionist).
`
`Any inquiry of a general nature or relating to the status of this application should
`
`be directed to the Group receptionist whose telephone number is
`
`703 305-3900.
`
`Calvin Loyd Hewitt II
`
`June 21, 2001
`
`JA
`SUPERVISORY PATENT
`TECHNOLOGY CENTER 2100
`
`ANCORA_00000364
`
`