Case 1:20-cv-00034-ADA Document 50-3 Filed 04/10/20 Page 1 of 14
`
`Exhibit 19
`
`
`
`Exhibit 19
`
`
`
`.,
`. ., ..
`
`.
`j.,
`"' ·"!
`
`~·
`
`•
`
`Case 1:20-cv-00034-ADA Document 50-3 Filed 04/10/20 Page 2 of 14
`'.
`
`•
`
`THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Miki MULLOR et al.
`
`) Customer No.
`
`I llllll lllll lllll 111111111111111111
`26694
`
`PA TEN"r TRADEMARK OFFICE
`
`Appln. No.
`
`09/164,777
`
`Filed
`
`For
`
`October 1, 1998
`
`METHOD OF RESTRICTING
`SOFTWARE OPERATION WITHIN
`A LICENSED LIMITATION
`
`Group Art Unit
`Examiner
`
`2161
`J. Trammell
`
`Atty. Dkt.
`
`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, 200 I by two
`
`months so that the due date expires November 22, 200 I. The requisite extension foe of $200.00
`
`under 37 C.F.R. 1.17 (a) (I) is attached. Should no check be a~hed, 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, 200 l, please amend the application as
`
`I, f 12/14/2001 dbllmlwS00000006 220261
`01 FC:203
`27.00 CH
`
`09164777
`
`11/15/2001 EABUBAKl 00000001 09164m
`200.00 <P
`02 FC:216
`
`ANCORA_00000367
`
`
`
`Case 1:20-cv-00034-ADA Document 50-3 Filed 04/10/20 Page 3 of 14
`
`•
`
`•
`...._ _____ _ Please amended the claims as follows:
`
`Amendment
`U.S. Application No. : 09/164,777
`
`IN THE CLAIMS:
`
`1.
`
`(Twice Amended)
`
`A method of restricting software operation within a license
`
`for use with a computer including ~ erasable, non-volatile memory area of a J.Bios/ of the
`computer,1and a volatile memory area; the method compris~g the steps of:
`
`selecting a program residing in the volatile memory,
`
`using an agent to set u;erification 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(cid:173)
`
`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(cid:173)
`
`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
`r"V 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-
`
`ANCORA_00000368
`
`
`
`••
`
`Amendment
`U.S. Application No. : 09/164,777
`
`Case 1:20-cv-00034-ADA Document 50-3 Filed 04/10/20 Page 4 of 14
`
`•
`
`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 w~erein 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(cid:173)
`
`record.
`
`.
`- .
`-
`.
`(Amended) A method according to claim 6 wherein using an agent to set up
`
`7.
`
`.,
`'
`
`\
`
`the verification structure includes the steps of: establishing or ~ertifying the existence of a
`
`pseudo-unique key in a fust 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 verif:ri~g ~e p_rogram
`
`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(cid:173)
`
`program 's license-record contents with the encrypted license-record in the erasable, non-volatile
`
`3 lq
`
`ANCORA_00000369
`
`
`
`Amendment
`U.S. Application No.: 09/164,777
`
`•
`
`Case 1:20-cv-00034-ADA Document 50-3 Filed 04/10/20 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
`
`e method of Claim 22, wherein the unique key includes a
`
`I~
`f.
`
`I~
`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
`
`(Amended)
`
`record data in the program using at least the unique key.
`
`The method according to Claim f 2, wherein the step of verifying
`
`('3
`
`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
`
`
`
`•
`
`(Amended)
`
`Case 1:20-cv-00034-ADA Document 50-3 Filed 04/10/20 Page 6 of 14
`"
`Amendment
`U.S. Application No.: 09/164,777
`/~
`f.
`the program includes encrypting the license record that is accommodated in the program using at
`
`•
`
`/3
`The method according to Claim p, 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 ammatically changed, the method, comprising:
`
`loading a software program res1 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(cid:173)
`
`volatile memory area;
`
`storing the encrypting
`
`n 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 th~ verificati
`
`Please add the following new claims:
`
`(New) The method of claim t°•//f erein 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(cid:173)
`
`volatile memory area of the computer to form second encrypted license information; and
`
`sc9-\
`
`ANCORA_00000371
`
`
`
`Case 1:20-cv-00034-ADA Document 50-3 Filed 04/10/20 Page 7 of 14
`.
`Amendment
`U.S. Application No.: 09/164,777
`
`•
`
`•
`
`comparing the encrypted license information stored in the second erasable, writable, non(cid:173)
`
`volatile memory area of the BIOS of the computer with the second encrypted license
`
`information.
`
`17
`'f · (New) The method of claim 1, wherein a unique key is stored in a first non-
`
`volatile memory area of the computer.
`
`l 5
`p.
`
`(New) The method according to claim/7, wherein the verification comprises:
`
`( 1
`
`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.
`
`ANCORA_00000372
`
`
`
`Amendment
`U.S. Application No.: 09/164,777
`
`•
`
`Case 1:20-cv-00034-ADA Document 50-3 Filed 04/10/20 Page 8 of 14
`
`•
`
`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
`
`ANCORA_00000373
`
`
`
`Amendment
`U.S. Application No. : 09/164,777
`
`•
`
`Case 1:20-cv-00034-ADA Document 50-3 Filed 04/10/20 Page 9 of 14
`
`•
`
`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
`
`egistration No. 42,709
`P.O. Box 34385
`Washington, D.C. 20043-9998
`Telephone 202-962-4800
`Telefax 202-962-8300
`
`RK/JAK/lrh
`#331676
`
`9
`
`ANCORA_00000374
`
`
`
`Appln. No.: 09/164,777 ,
`
`Case 1:20-cv-00034-ADA Document 50-3 Filed 04/10/20 Page 10 of 14
`
`•
`
`VERSION WITH MARKINGS TO SHOW CHANGES MADE
`FIEcE,vEo
`Nov 1 6
`Tech
`2001
`no1og11 e,
`J enter21aa
`
`(Twice Amended)
`
`A method of restricting software operation within a license
`
`for use with a computer including ay first, non erasable, non volatile memory area, a seeond,
`
`Heft-erasable~ non-volatile memory area of a (BIOS) of the computer, and a volatile memory
`
`area; the first non •1ola-tile memory accomoaa-tes data that includes uniEJ:ue IEey; the method
`
`comprising the steps of:
`
`selecting a program residing in the volatile memory,
`
`using an agent to setting up verification structure in the seemid erasable, non-volatile
`
`memory of the BIOS, the verfioa-tion verification structure accommodatinges data that includes
`
`at least one license record,
`
`verifying the program using at least satd-the verification structure from the erasable non(cid:173)
`
`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(cid:173)
`
`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; ~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 50-3 Filed 04/10/20 Page 11 of 14
`
`Appln. No.: 09/164,777 •
`
`•
`
`4.
`
`(Amended) A method according to claim 2, wherein verifying the program
`
`further comprisesi:ftg 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(cid:173)
`
`license verification including an identification of the computer, the-an encrypted license-record
`
`for the selected program from the seeoea erasable, non-volatile memory area of the BIOS, and
`
`the lieense software program's license-record eonteets; 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 pseHao unique key.
`
`6.
`
`(Amended) A method according to claim I 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(cid:173)
`
`record.
`
`7.
`
`(Amended) A method according to claim .J--§_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-~first non-volatile memory area of the computer; and establishing at
`
`least one license-record location in the first or the seeoea nonvolatile memory area or in the
`
`erasable, non-volatile memory area of the BIOS.
`
`9.
`
`(Amended) A method according to claim z+ wherein verifying the program
`
`2
`
`D
`
`ANCORA_00000376
`
`
`
`Appln. No.: 091164,777 •
`
`.
`
`Case 1:20-cv-00034-ADA Document 50-3 Filed 04/10/20 Page 12 of 14
`.
`
`•
`
`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 first er tee seeoAd erasable, non(cid:173)
`
`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 HFSt
`
`er the secend erasable, non-volatile memory area of the BIOS, or comparing the Iicense(cid:173)
`
`software-program 's license-record contents with the decrypted license-record in the fH'st er tee
`
`secend erasable non-volatile memory area of the BIOS.
`
`I 0.
`
`(Amended) A method according to claim .2-l- 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 22+ wherein the first non-volatile
`
`memory area is a ROM section of a BIOS.
`
`12.
`
`(Amended) A method according to claim 1 wherein the seeond erasable, non-
`
`volatile memory area is a E2PROM section of a-the BIOS.
`
`16.
`
`(Amended)
`
`The method of Claim 22-l-, wherein the unique key includes a I
`
`pseudo-unique key.
`
`17.
`
`(Amended)
`
`The method according Claim 22+, wherein 59ffl-the step of using
`
`the agent to setting up a-the verification record, including the license record, includes encrypting
`
`a license record data in sate-the program using at least sate-the unique key.
`
`3
`
`ANCORA_00000377
`
`
`
`Case 1:20-cv-00034-ADA Document 50-3 Filed 04/10/20 Page 13 of 14
`
`Appln. No.: 091164,?°77 •
`
`•
`
`18.
`
`(Amended)
`
`The method according to Claim 22+, wherein ~the step of
`
`verifying the program includes a decrypting the license record data accommodated in saie-the
`
`erasable second non-:volatile memory area of the BIOS using at least said-the unique key.
`
`19.
`
`(Amended)
`
`The method according to Claim 22+, wherein said-the step of
`
`verifying the program includes encrypting the license record that is accommodated in said-the
`
`program using at least ~the unique key.
`
`20.
`
`(Amended)
`
`A method for restricting accessing te-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:
`
`storing a pseudo umque key if! a first nee volatile memory area of a comptiter;
`
`seleotiag 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(cid:173)
`
`volatile memory area;
`
`storing the encrypting pseudo lHlique 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
`
`pseedo unique key; and
`
`acting on the software program based on the verification.
`
`4
`
`ANCORA_00000378
`
`
`
`Case 1:20-cv-00034-ADA Document 50-3 Filed 04/10/20 Page 14 of 14
`
`· A.ppln. No.: 091164,7°77 ••
`
`•
`
`Please add the following new claims:
`
`21.
`
`(New) The method of claim 20, wherein the verification comprises:
`
`extracting the license infonnation from the software program;
`
`encrypting the license information using the pseudo-unique key stored in the first non(cid:173)
`
`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
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
