Case 1:20-cv-00034-ADA Document 45-8 Filed 03/20/20 Page 1 of 14
`Case 1:20-cv-00034-ADA Document 45-8 Filed 03/20/20 Page 1 of 14
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`EXHIBIT 6
`EXHIBIT 6
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`Case 1:20-cv-00034-ADA Document 45-8 Filed 03/20/20 Page 1 of 14
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`EXHIBIT 6
`EXHIBIT 6
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`A
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`Case 1:20-cv-00034-ADA Document 45-8 Filed 03/20/20 Page 2 of 14
`0
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`THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
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`PATENT TRADEMARK OFFICE
`
`I e PATENT APPLICATION of
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`4
`
`B~Na
`
`pplicants
`
`Appin. No.
`
`Filed
`
`For
`
`Group Art Unit
`Examiner
`
`Atty. Dkt.
`
`:
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`:
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`:
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`:
`:
`
`:
`
`Miki MULLOR et al.
`
`09/164,777
`
`October 1, 1998
`
`METHOD OF RESTRICTING
`SOFTWARE OPERATION WITHIN
`A LICENSED LIMITATION
`
`2161
`J. Trammell
`
`39636-176166
`
`Assistant Commissioner for Patents
`Washington, D.C. 22031
`
`Sir:
`
`AMENDMENT
`
`REQUEST FOR EXTENSION OF TIME
`
`Please extend the period for responding to the Office Action dated June 22, 2001 by two
`
`months so that the due date expires November 22, 2001. The requisite extension fee of $200.00
`
`under 37 C.F.R. 1.17 (a) (1) is attached. Should no check be attached, please charge our Deposit
`
`Account 22-0261. Please also deduct any additional fees due or credit any overage to the same
`
`account.
`
`Responsive to the Office Action dated June 22, 2001, please amend the application as
`
`1
`
`12/14/2001 WIFEINws00000006 220261 09164777
`01 FC:203
`27.00 CH
`
`11/15/2001 EABOBAK1 00000001 09164777
`200.00 OP
`02 FC:216
`
`ANCORA_00000367
`
`
`
`Case 1:20-cv-00034-ADA Document 45-8 Filed 03/20/20 Page 3 of 14
`
`Amendment`
`U.S. Application No.: 09/164,777
`
`IN THE CLAIMS:
`
`Please amended the claims as follows:
`
`1.
`
`(Twice Amended) A method of restricting software operation within a license
`
`for use with a computer including an erasable, non-volatile memory area of a BIOS/ of the
`
`fi to
`
`computer,tand a volatile memory area; the method comprising the steps of:
`
`selecting a program residing in the volatile memory,
`.
`using an agent to set upkerification structure in the erasable, non-volatile memory of the
`
`BIOS, the verification structure accommodating data that includes at least one license record,
`
`verifying the program using at least the verification structure from the erasable non-
`
`volatile memory of the BIOS, and
`
`acting on the program according to the verification.
`
`3.
`
`(Amended) A method according to claim 2, wherein setting up a verification
`
`structure further comprising the steps of: establishing, between the computer and the bureau, a
`
`two-way data-communications linkage; transferring, from the computer to the bureau, a request-
`
`for-license including an identification of the computer and the license-record's contents from the
`
`selected program; forming an encrypted license-record at the bureau by encrypting parts of the
`
`request-for-license using part of the identification as an encryption key; transferring, from the
`
`bureau to the computer, the encrypted license-record; and storing the encrypted license record in
`
`the erasable non-volatile memory area of the BIOS.
`
`4.
`
`(Amended) A method according to claim 2, wherein verifying the program
`
`further comprises the steps of: establishing, between the computer and the bureau, a two-way
`
`data-communications linkage; transferring, from the computer to the bureau, a request-for-
`2
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`ANCORA_00000368
`
`
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`Case 1:20-cv-00034-ADA Document 45-8 Filed 03/20/20 Page 4 of 14
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`•
`
`'
`Amendment
`U.S. Application No.: 09/164,777
`
`license verification including an identification of the computer, an encrypted license-record for
`
`the selected program from the erasable, non-volatile memory area of the BIOS, and the
`
`program's license-record; enabling the comparing at the bureau; and transferring, from the
`
`bureau to the computer, the result of the comparing.
`
`5.
`
`(Amended)
`
`A method according to claim 3 wherein the identification of the
`
`computer includes the unique key.
`
`6.
`
`(Amended) A method according to claim 1 wherein selecting a program
`
`includes the steps of: establishing a licensed-software-program in the volatile memory of the
`
`computer wherein said licensed-software-program includes contents used to form the license-
`
`record.
`
`7.
`
`(Amended) A method according to claim 6 wherein using an agent to set up
`
`the verification structure includes the steps of: establishing or certifying the existence of a
`
`pseudo-unique key in a first non-volatile memory area of the computer; and establishing at least
`
`one license-record location in the first nonvolatile memory area or in the erasable, non-volatile
`
`memory area of the BIOS.
`
`9.
`
`(Amended) A method according, to claim 7 wherein verifying the program
`
`includes the steps of: encrypting the licensed-software-program's license-record contents from
`
`the volatile memory area or decrypting the license-record in the erasable, non-volatile memory
`
`area of the BIOS, using the pseudo-unique key; and comparing the encrypted licenses-software-
`
`program's license-record contents with the encrypted license-record in the erasable, non-volatile
`3
`
`ANCORA_00000369
`
`
`
`•
`
`Amendment
`U.S. Application No.: 09/164,777
`
`Case 1:20-cv-00034-ADA Document 45-8 Filed 03/20/20 Page 5 of 14
`
`•
`
`memory area of the BIOS, or comparing the license-software-program's license-record contents
`
`with the decrypted license-record in erasable non-volatile memory area of the BIOS.
`
`10.
`
`(Amended) A method according to claim 9 wherein acting on the program
`
`includes the step: restricting the program's operation with predetermined limitations if the
`
`comparing yields non-unity or insufficiency.
`
`11.
`
`(Amended)
`
`method according to claim 22 wherein the first non-volatile
`
`emory area is a ROM section o
`
`12.
`
`(Amended) A method a cording to claim 1 wherein the erasable, non-volatile
`
`memory area is a E2PROM section of the BIO
`
`16.
`
`(Amended) 1lfe method of Claim 22, wherein the unique key includes a
`
`pseudo-unique key:
`
`(Amended) The method according Claim /2, wherein the step of using the
`
`agent to set up the verification record, including the license record, includes encrypting a license
`
`record data in the program using at least the unique key.
`
`t o
`3
`4.
`(Amended) The method according to Claim 2, wherein the step of verifying
`
`the program includes a decrypting the license record data accommodated in the erasable second
`
`non-volatile memory area of the BIOS using at least the unique key.
`
`ANCORA_00000370
`
`
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`Case 1:20-cv-00034-ADA Document 45-8 Filed 03/20/20 Page 6 of 14
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`•
`
`•
`Amendment
`U.S. Application No.: 09/164,777
`
`11
`3,4.
`the program includes encrypting the license record that is accommodated in the program using at
`
`(Amended) The method according to Claim
`
`/3
`wherein the step of verifying
`
`least the unique key.
`
`20.
`
`(Amended)
`
`method for accessing a software program using a pseudo-unique
`
`key stored in a first non-erasable on-volatile memory area of a computer, the first non-volatile
`
`memory area being unable to be pro aromatically changed, the method, comprising:
`
`loading a software program rest ing in a volatile memory area of the computer;
`
`extracting license information fro
`
`the software program;
`
`encrypting license information usi g the pseudo-unique key stored in the first non-
`
`volatile memory area;
`
`storing the encrypting license information in a second erasable, writable, non volatile
`
`memory area of the BIOS of the computer;
`
`subsequently verifying the software program
`
`sed on the encrypted license information
`
`stored in the second erasable, writable, non-volatile mem y area of the BIOS; and
`
`acting on the software program based on the verificati
`
`Please add the following new claims:
`
`/ I/
`
`(New) The method of claim 6, vyjierein the verification comprises:
`1 `‘
`extracting the license information from the software program;
`
`encrypting the license information using the pseudo-unique key stored in the first non-
`
`volatile memory area of the computer to form second encrypted license information; and
`
`541
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`ANCORA_00000371
`
`
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`Case 1:20-cv-00034-ADA Document 45-8 Filed 03/20/20 Page 7 of 14
`
`Amendment . 0 •
`U.S. Application No.: 09/164,777
`
`comparing the encrypted license information stored in the second erasable, writable, non-
`
`volatile memory area of the BIOS of the computer with the second encrypted license
`
`information.
`
`o
`
`/3
`0.
`
`(New) The method of claim 1, wherein a unique key is stored in a first non-
`
`volatile memory area of the computer.
`
`0 .
`
`(New) The method according to claim77, wherein the verification comprises:
`
`extracting the license record from the software program;
`
`encrypting the license record using the unique key stored in the first non-volatile memory
`
`area of the computer to form second encrypted license information; and
`
`comparing the encrypted license information stored in the erasable, non-volatile memory
`
`area of the BIOS of the computer with the second encrypted license information.
`
`6-
`
`ANCORA_00000372
`
`
`
`Case 1:20-cv-00034-ADA Document 45-8 Filed 03/20/20 Page 8 of 14
`
`• ' • 411
`•
`. Amendment
`U.S. Application No.: 09/164,777
`
`•
`
`REMARKS
`
`Claims 1-13 and 16-23 are now pending in this application. New claims 21-23 have been
`
`added by this amendment. Each of the pending claims is believed to define an invention which
`
`is novel and unobvious over the cited references. Favorable reconsideration of this case is
`
`respectfully requested.
`
`Applicant's representative appreciates the Examiner's courtesy in conducting a personnel
`
`interview in this case. The claims have been amended as agreed upon during the interview and it
`
`is respectfully submitted that this application is now in condition for allowance.
`
`Specifically, claim 1 has been amended to recite that the verification structure is stored in
`
`an erasable, non-volatile memory area of the BIOS. This claim amendment overcomes the
`
`rejections under 35 U.S.C. 112, first paragraph in sections 3, 4 and 5 of the Final Office Action,
`
`as well as the rejection under 35 U.S.C. 112, second paragraph in section 7 of the Final Office
`
`Action.
`
`Claim 20 has been amended to correct the informality noted by the Examiner. In view of
`
`these amendments, it is respectfully submitted that all pending claims are now in all aspects in
`
`compliance with 35 U.S.C. 112, first paragraph and 35 U.S.C. 112, second paragraph.
`
`Therefore, the withdrawal of these rejections is respectfully requested.
`
`Claims 1-4, 6 and 10-13 have been rejected under 35 U.S.C. 102(e) as being anticipated
`
`by U.S. Patent No. 5,892,900 to Ginter et al.
`
`Claims 5 and 7-9, and 16-20 have been rejected under 35 U.S.C. 103(a) as being
`
`unpatentable over Ginter et al. in view of U.S. Patent No. 5,684,951 to Goldman et al.
`
`7
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`ANCORA_00000373
`
`
`
`to
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`'
`Amendment
`U.S. Application No.: 09/164,777
`
`Case 1:20-cv-00034-ADA Document 45-8 Filed 03/20/20 Page 9 of 14
`
`•
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`Consequently, it is clear that the cited references do not anticipate or render the present
`
`claims obvious. Therefore, the withdrawal of this rejection is respectfully requested.
`
`As requested by the Examiner during the interview, a description of a specific
`
`embodiment of the invention is attached hereto.
`
`Attached hereto is a marked-up version of the changes made to the specification and
`
`claims by the current amendment. The attached page is captioned "Version with markings to
`
`show changes made."
`
`In view of the foregoing, reconsideration and allowance of this application are believed in
`
`order, and such action is earnestly solicited.
`
`The Commissioner is authorized to charge any fee necessitated by this Amendment to our
`
`Deposit Account No. 22-0261.
`
`Respectfully submitted,
`
`VENABLE, Attorneys at Law
`
`r
`
`J
`
`A. Kaminski
`egistration No. 42,709
`P.O. Box 34385
`Washington, D.C. 20043-9998
`Telephone 202-962-4800
`Telefax 202-962-8300
`
`RIC/JAI<J1rh
`#331676
`
`9
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`Q
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`ANCORA_00000374
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`
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`P
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`1**
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`4
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`494 TRAD
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`Case 1:20-cv-00034-ADA Document 45-8 Filed 03/20/20 Page 10 of 14
`
`Appin. No.: 09/164,777
`
`VERSION WITH MARKINGS TO SHOW CHANGES MADE
`
` CLAIMS:
`
`/i)Ce 1/
`)
`Nov 6
`zoo/
`Technology
`Center 2100
`A method of restricting software operation within a license
`
`Please amended the claims as follows:
`
`(Twice Amended)
`
`for use with a computer including an first, non erasable, non volatile memory area, a second,
`
`nen-erasable, non-volatile memory area of a (BIOS) of the computer, and a volatile memory
`
`area; the first non volatile memory accomodates data that includes unique key; the method
`
`comprising the steps of:
`
`selecting a program residing in the volatile memory,
`
`using an agent to setting up verification structure in the second erasable, non-volatile
`
`memory of the BIOS, the verfication verification structure accommodatinges data that includes
`
`at least one license record,
`
`verifying the program using at least said the verification structure from the erasable non-
`
`volatile memory of the BIOS, and
`
`acting on the program according to the verification.
`
`3.
`
`(Amended) A method according to claim 2, wherein setting up a verification
`
`structure further comprising the steps of: establishing, between the computer and the bureau, a
`
`two-way data-communications linkage; transferring, from the computer to the bureau, a request-
`
`for-license including an identification of the computer and the license-record's contents from the
`
`selected program; forming an encrypted license-record at the bureau by encrypting parts of the
`
`request-for-license using part of the identification as the an encryption key; and—transferring,
`
`from the bureau to the computer, the encrypted license-record; and storing the encrypted license
`
`record in the erasable non-volatile memory area of the BIOS.
`
`ANCORA_00000375
`
`
`
`Case 1:20-cv-00034-ADA Document 45-8 Filed 03/20/20 Page 11 of 14
`
`Appin. No.: 09/164,777
`
`•
`
`•
`
`4.
`
`(Amended) A method according to claim 2, wherein verifying the program
`
`further comprisesing the steps of: establishing, between the computer and the bureau, a two-way
`
`data-communications linkage; transferring, from the computer to the bureau, a request-for-
`
`license verification including an identification of the computer, the an encrypted license-record
`
`for the selected program from the second erasable, non-volatile memory area of the BIOS, and
`
`the lieense-softwafe-program's license-record contents; enabling the comparing at the bureau;
`
`and transferring, from the bureau to the computer, the result of the comparing.
`
`5.
`
`(Amended)
`
`A method according to claim 3 wherein the identification of the
`
`computer includes the pseudo-unique key.
`
`6.
`
`(Amended) A method according to claim 1 wherein selecting a program
`
`includes the steps of: establishing a licensed-software-program in the volatile memory of the
`
`computer wherein said licensed-software-program includes contents used to form a-the license-
`
`record.
`
`7.
`
`(Amended) A method according to claim 4-6 wherein using an agent to setting
`
`up the verification structure includes the steps of: establishing or certifying the existence of a
`
`pseudo-unique key in the a first non-volatile memory area of the computer; and establishing at
`
`least one license-record location in the first or the second nonvolatile memory area or in the
`
`erasable, non-volatile memory area of the BIOS.
`
`9.
`
`(Amended) A method according to claim 74- wherein verifying the program
`
`2
`
`ANCORA_00000376
`
`
`
`Case 1:20-cv-00034-ADA Document 45-8 Filed 03/20/20 Page 12 of 14
`
`Appin. No.: 09/164,777
`
`includes the steps of: encrypting the licensed-software-program's license-record contents from
`
`the volatile memory area or decrypting the license-record in the fifst-er-the-seeenel-erasable non-
`
`volatile memory area of the BIOS, using the pseudo-unique key; and comparing the encrypted
`
`licenses-software-program's license-record contents with the encrypted license-record in the first
`
`or the second erasable, non-volatile memory area of the BIOS, or comparing the license-
`
`software-program's license-record contents with the decrypted license-record in the first or the
`
`second erasable non-volatile memory area of the BIOS.
`
`10.
`
`(Amended) A method according to claim 94- wherein acting on the program
`
`includes the step: restricting the program's operation with predetermined limitations if the
`
`comparing yields non-unity or insufficiency.
`
`11.
`
`(Amended) A method according to claim 224- wherein the first non-volatile
`
`memory area is a ROM section of a BIOS.
`
`12.
`
`(Amended) A method according to claim 1 wherein the second erasable, non-
`
`volatile memory area is a E2PROM section of a-the BIOS.
`
`16.
`
`(Amended) The method of Claim 224-, wherein the unique key includes a
`
`pseudo-unique key.
`
`17.
`
`(Amended) The method according Claim 224-, wherein said the step of using
`
`the agent to setting up a-the verification record, including the license record, includes encrypting
`
`a license record data in said the program using at least said the unique key.
`
`3
`
`ANCORA_00000377
`
`
`
`Case 1:20-cv-00034-ADA Document 45-8 Filed 03/20/20 Page 13 of 14
`•
`
`Appin. No.: 09/164,777
`
`18.
`
`(Amended) The method according to Claim 224-, wherein said the step of
`
`verifying the program includes a decrypting the license record data accommodated in said-the
`
`erasable second non—volatile memory area of the BIOS using at least said the unique key.
`
`19.
`
`(Amended) The method according to Claim 224-, wherein said the step of
`
`verifying the program includes encrypting the license record that is accommodated in said-the
`
`program using at least said the unique key.
`
`20.
`
`(Amended)
`
`A method for restricting accessing t-e-a software program using a
`
`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:
`
`stering-a-pseude-unique-key-in-a-first-nen-velatile-fneinery-afea-ef-a-eeinputeri
`
`selecting loading a software program residing in a volatile memory area of the computer;
`
`extracting license information from the software program;
`
`encrypting license information using the pseudo-unique key stored in the first non-
`
`volatile memory area;
`
`storing the encrypting pseude-unique—key license information in a second erasable,
`
`writable, non volatile memory area of the BIOS of the computer;
`
`subsequently verifying the software program using—based on the encrypted license
`
`information stored in the second erasable, writable, non-volatile memory area of the BIOS
`
`pseude-unique4ey; and
`
`acting on the software program based on the verification.
`
`4
`
`ANCORA_00000378
`
`
`
`Case 1:20-cv-00034-ADA Document 45-8 Filed 03/20/20 Page 14 of 14
`•
`
`Appin. No.: 09/164,777
`
`Please add the following new claims:
`
`21.
`
`(New) The method of claim 20, wherein the verification comprises:
`
`extracting the license information from the software program;
`
`encrypting the license information using the pseudo-unique key stored in the first non-
`
`volatile memory area of the computer to form second encrypted license information; and
`
`comparing the encrypted license information stored in the second erasable, writable, non-
`
`volatile memory area of the BIOS of the computer with the second encrypted license
`
`information.
`
`22.
`
`(New) The method of claim 1, wherein a unique key is stored in a first non-
`
`volatile memory area of the computer.
`
`23.
`
`(New) The method according to claim 17, wherein the verification comprises:
`
`extracting the license record from the software program;
`
`encrypting the license record using the unique key stored in the first non-volatile memory
`
`area of the computer to form second encrypted license information; and
`
`comparing the encrypted license information stored in the erasable, non-volatile memory
`
`area of the BIOS of the computer with the second encrypted license information.
`
`5
`
`ANCORA_00000379
`
`
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