Case 1:20-cv-00034-ADA Document 45-9 Filed 03/20/20 Page 1 of 10
`Case 1:20-cv-00034-ADA Document 45-9 Filed 03/20/20 Page 1 of 10
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`EXHIBIT 7
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`EXHIBIT 7
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`Case 1:20-cv-00034-ADA Document 45-9 Filed 03/20/20 Page 2 of 10
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`I
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`UNITED STATES PATENT AND MADEMARK OFFICE
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`APPLICATION NO.
`09/164,777
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`FILING DATE
`10/01/1998
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`FIRST NAMED INVENTOR
`MIKI MULLOR
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`ATTORNEY DOCKET NO.
`REINC4237.01
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`CONFIRMATION NO.
`7068
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER OF PATENTS AND TRADEMARKS
`Washington, D.C. 20231
`www.uspto.gov
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`7590
`01/15/2002
`SPENCER AND FRANK
`SUITE 300 EAST
`1100 NEW YORK AVENUE NW
`WASHINGTON, DC 200053955
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`EXAMINER
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`HEWITT II, CALVIN L
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`ART UNIT
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`PAPER NUMBER
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`2161
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`DATE MAILED: 01/15/2002
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`PTO-90C (Rev. 07-01)
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`ANCORA_00000421
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`Case 1:20-cv-00034-ADA Document 45-9 Filed 03/20/20 Page 3 of 10
`Application No.
`Applicant(s)
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`•
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`Office Action Summary
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`MULLOR ET AL.
`09/164,777
`Art Unit
`Examiner
`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)Z Responsive to communication(s) filed on 14 November 2001 .
`2a)❑ This action is FINAL.
`2b)Z This action is non-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
`4)E3 Claim(s) 1-2.3 is/are pending in the application.
`4a) Of the above claim(s)
`is/are withdrawn from consideration.
`Claim(s)
`is/are allowed.
`6)Z Claim(s) 1-23 is/are rejected.
`7)0 Claim(s)
`is/are objected to.
`8)0 Claim(s)
`are subject to restriction and/or election requirement.
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`Application Papers
`9)0 The specification is objected to by the Examiner.
`10)0 The drawing(s) filed on
` is/are: a)0 accepted or b)0 objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`11)1=1 The proposed drawing correction filed on
`is: a)0 approved b)Ej disapproved by the Examiner.
`If approved, corrected drawings are required in reply to this Office action.
`12)0 The oath or declaration is objected to by the Examiner.
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`Priority under 35 U.S.C. §§ 119 and 120
`13)0 Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`a)0 All b)❑ Some * c)E None of:
`1.0 Certified copies of the priority documents have been received.
`2.❑ 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 fora list of the certified copies not received.
`14)❑ Acknowledgment is made of a claim for domestic priority under 35 U.S.C. § 119(e) (to a provisional application).
`a) q The translation of the foreign language provisional application has been received.
`15)1=1 Acknowledgment is made of a claim for domestic priority under 35 U.S.C. §§ 120 and/or 121.
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`Attachment(s)
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`1) Z Notice of References Cited (P10-892)
`2) q Notice of Draftsperson's Patent Drawing Review (PTO-948)
`3) Z
`Information Disclosure Statement(s) (PTO-1449) Paper No(s) //.
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`4) q Interview Summary (PTO-413) Paper No(s).
`5) q Notice of Informal Patent Application (PTO-152)
`6) q Other:
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`U.S. Patent and Trademark Office
`P10-326 (Rev. 04-01)
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`Office Action Summary
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`Part of Paper No. 12
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`ANCORA_00000422
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`Case 1:20-cv-00034-ADA Document 45-9 Filed 03/20/20 Page 4 of 10
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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 1-23 have been examined.
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`Claim Rejections - 35 USC § 112
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`2.
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`The following is a quotation of the first paragraph of 35 U.S.C. 112:
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`The specification shall contain a written description of the invention, and of the manner and process of
`making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the
`art to which it pertains, or with which it is most nearly connected, to make and use the same and shall
`set forth the best mode contemplated by the inventor of carrying out his invention.
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`3.
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`Claims 11, 12, 15 and 16 are rejected under 35 U.S.C. 112, first
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`paragraph, as containing subject matter which was not described in the
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`specification in such a way as to enable one skilled in the art to which it pertains,
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`or with which it is most nearly connected, to make and/or use the invention.
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`Claims 11, 12 and 15 are rejected as flash memory is a type of EEPROM.
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`Flash memory can be used as a computer BIOS. Therefore, a computer BIOS
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`would not contain an EEPROM and/or ROM section.
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`Claim 16 is rejected because a key cannot be simultaneously "unique" and
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`"pseudo-unique".
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`ANCORA_00000423
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`Case 1:20-cv-00034-ADA Document 45-9 Filed 03/20/20 Page 5 of 10
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`Application/Control Number: 09/164,777
`Art Unit: 2161
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`Page 3
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`4.
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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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`5.
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`Claims 20 and 21 are rejected under 35 U.S.C. 112, second paragraph, as
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`being indefinite for failing to particularly point out and distinctly claim the subject
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`matter which applicant regards as the invention.
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`Claim 20 recites, "loading a software program residing in volatile memory
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`area of the computer". This limitation would not be clear to one of ordinary skill as
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`the software would have to be loaded a priori in order to reside in volatile
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`memory.
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`Claim 21 is rejected because it depends from claim 20.
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`Claim Rejections - 35 USC § 103
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`6.
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`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for
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`all 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
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`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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`ANCORA_00000424
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`Case 1:20-cv-00034-ADA Document 45-9 Filed 03/20/20 Page 6 of 10
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`Application/Control Number: 09/164,777
`Art Unit: 2161
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`Page 4
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`7
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`Claims 1-23 have been rejected under 35 U.S.C. 103(a) as being
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`unpatentable over Misra et al., U.S. Patent No. 6,189,146, Goldman et al., U.S.
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`Patent No. 5,684,951. and Ewertz et al., U.S. Patent No. 5,479,639.
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`Misra et al. teach a system and method for software licensing that
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`comprises:
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`• selecting a program from volatile memory (figure 2)
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`• using data stored in various memory locations to implement the
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`system (figure 2; column 5, lines 2-67)
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`• using an agent to set up a verification structure in computer
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`memory where structure data includes a license record (column 4,
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`lines 14-20 and 49-67; column 11, lines 45-59; column 12, lines 8-
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`31)
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`• verifying and acting on the program according to the verification
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`structure (e.g. software license) (column/line 13/65-14/53;
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`column/line 14/54-17/40)
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`• a licensing authentication bureau in a two-way connection with a
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`computer that handles requests for licenses (where license data
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`includes computer identification and license record contents),
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`encrypts a request for license (e.g. license) using computer
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`identification, performs license validation and transfers a license to
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`a computer (figures 1 and 3-8; column 6, lines 50-64; column 9,
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`ANCORA_00000425
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`Case 1:20-cv-00034-ADA Document 45-9 Filed 03/20/20 Page 7 of 10
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`Application/Control Number: 09/164,777
`Art Unit: 2161
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`Page 5
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`• lines 40-50; column/line 11/60-12/27; column/line 13/65-14/52;
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`column 15, lines 37-49)
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`• a license that contains predetermined information (column 10, lines
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`60-67; column 11, lines 1-24)
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`• storing a license record in non-volatile memory (column 12, lines 8-
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`27)
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`• comparing licenses to determine validity and restricting the
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`program's operations if a license is determined to be invalid
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`(column 14, lines 30-51)
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`• encryption using an identification of a computer that is a unique key
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`(column 15, lines 37-49)
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`Regarding the storage of encrypted licenses, Misra et al. teach licenses
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`that are encrypted using a unique key as they are placed in storage (column 8,
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`lines 35-52). Therefore, it would have been obvious to one of ordinary skill of the
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`art to allow user nodes to store licenses in encrypted form for additional security.
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`In addition, as Misra et al. implement their system using various computer
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`system memory such as RAM (e.g. volatile), ROM (which houses a BIOS),
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`portable and hard disk memory (column 5, lines 37-67) it would have been
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`obvious to perform encryption processes using the appropriate memory given the
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`characteristics of the target system (figures 1 and 2). Misra et al. also teach
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`ANCORA_00000426
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`Case 1:20-cv-00034-ADA Document 45-9 Filed 03/20/20 Page 8 of 10
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`Application/Control Number: 09/164,777
`Art Unit: 2161
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`Page 6
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`encryption keys and programs ("agent") used in the license collation process that
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`belong to various parties (column 8, lines 35-52; column 15, lines 37-54).
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`Therefore, it would have been obvious to one of ordinary skill of the art to store
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`these keys in non-volatile memory as these keys are used to securely
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`communicate between and identify parties, as well as access encrypted data.
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`Misra et al., however, do not teach pseudo-unique keys nor constructing
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`license records within a computer BIOS. Goldman et al. teach pseudo-unique
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`keys (abstract) while, Ewertz et al. teach of expanding BIOS memory to store
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`identification and/or configuration data such as software licenses (column 3, lines
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`15-40; column/line 11/3-12/14). Therefore, it would have been obvious for one of
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`ordinary skill of the art to combine the teachings of Misra et al., Goldman et al.
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`and Ewertz et al.. Recall, Ewertz et al. teach of expanding non-volatile memory
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`(e.g. BIOS) (`639, column 3, lines 15-40) for maintaining data such as software
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`licenses. Hence, it would have been obvious to one of ordinary skill to use the
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`BIOS to store licenses in the Misra et al. system as they teach of users storing
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`license data in persistent- non-volatile storage ('146, column 12, lines 8-27). Also
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`pseudo unique keys can be issued, on a temporary basis (say), (`951, abstract),
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`to encrypt licenses (1 46, column 13, lines 42-48). This allows a client to access
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`secured data without comprising the security of the larger system.
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`ANCORA_00000427
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`Case 1:20-cv-00034-ADA Document 45-9 Filed 03/20/20 Page 9 of 10
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`Application/Control Number: 09/164,777
`Art Unit: 2161
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`Page 7
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`Conclusion
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`8.
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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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`• Edenson et al. teach a system for protecting copyrighted program
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`material using a BIOS
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`• Fette et al. teach a programmable radio and operating software in
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`accordance with a license
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`• Steinberg et al. teach software branding
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`• Smith et al. teach a system for distributing, registering and purchasing
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`software over a network using an agent program embedded in each
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`software application
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`9.
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`Any inquiry concerning this communication or earlier communications from
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`the Examiner should be directed to Calvin Loyd Hewitt II whose telephone
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`number is (703) 308-8057. The Examiner can normally be reached on Monday-
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`Friday from 8:30 AM-5:00 PM.
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`If attempts to reach the Examiner by telephone are unsuccessful, the
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`Examiner's supervisor, James P. Trammell, can be reached at (703) 305-9768.
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`ANCORA_00000428
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`Case 1:20-cv-00034-ADA Document 45-9 Filed 03/20/20 Page 10 of 10
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`Application/Control Number: 09/164,777
`Art Unit: 2161
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`Page 8
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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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`do Technology Center 2100
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`Washington, D.C. 20231
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`or faxed to :
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`or:
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`(703) 746-7239 (for formal communications intended for entry),
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`(703) 746-7238 (for after-final communications),
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`(703) 746-7240 (for informal or draft communications, please label
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`"PROPOSED" or "DRAFT")
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`Hand-delivered responses should be brought to Crystal Park II, 2121
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`Crystal Drive, Arlington, VA, Sixth Floor (Receptionist).
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`Any inquiry of a general nature or relating to the status of this application
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`should be directed to the Group receptionist whose telephone number is (703)
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`305-3900.
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`Calvin Loyd Hewitt II
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`January 7, 2002
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`ANCORA_00000429
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