Case 6:21-cv-00735-ADA Document 32-6 Filed 01/27/22 Page 1 of 11
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`Exhibit 3
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`Case 6:21-cv-00735-ADA Document 32-6 Filed 01/27/22 Page 2 of 11
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`f4}.002~ J3/c_
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`~~--e).l.
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`Ow
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`'
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`In re PA TENT APPLICATION of
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`Applicants
`
`Appln.No.
`
`Filed
`
`For
`
`Miki MULLOR et al.
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`09/164,777
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`October 1, 1998
`
`METHOD OF RESTRICTING
`SOFTWARE OPERATION WITHIN
`A LICENSED LIMITATION
`
`) Customer No.
`)
`*26694*
`)
`26694
`) PATENT TRADEMARK
`)
`OFFICE
`)
`)
`)
`)
`)
`
`Group Art Unit
`Examiner
`
`2161
`C. Hewitt
`
`Atty. Dkt.
`
`39636-176166
`
`Assistant Commissioner for Patents
`Washingto~ D.C. 22031
`
`Sir:
`
`AMENDMENT
`
`Responsive to the Office Action dated January 15, 2002t please amend the application as
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`follows:
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`INTHECLAI~
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`Please cancel claims 11, 12, 14 and 15 without prejudice to their re-entry at a later date.
`
`Please amended the claims as follows:
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`\ >'
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`.
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`(Amended)
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`The method of Claim 1, wherein a pseudo-unique key is stored in
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`the non-volatile memory of the BIOS.
`\~
`4o.
`Received ~om < 202 962 8300 > at 215102 3:38:28 PM ~astern Standard Time)
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`(Amended)
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`A method for accessing an appJication software program using a
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`Case 6:21-cv-00735-ADA Document 32-6 Filed 01/27/22 Page 3 of 11
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`02/05/02 16: 36 F ~ 2 ~
`VENABLE
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`@003
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`Amendment
`U.S. Application No.: 09/164,777
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`pseudo-unique key stored in a first non-erasable non-volatile memory area of a computer, the
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`first non-volatile memory area being· unable to be prograrnroatically changed, the method,
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`comprising:
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`loading the application software program residing in a non-volatile memory area of the
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`encrypting Ucense information using the pseudo-unique key stored in the first non(cid:173)
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`volatile meillory area;
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`storing the encrypting license infonnation in a second erasable, writable, non-volatile
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`memory area of the BIOS of the computer;
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`subsequently verifying the application software program based on the encrypted license
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`information ~tored in the second erasable, writable, non-volatile memory area of the BIOS; and
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`acting on the application software program based on the verification.
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`REMARKS
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`Claims 1-10, 13 and 16-23 are now pending·in this application. Each of the pending
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`claims is believed to define an invention which is novel and unobvious over the cited references.
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`Favorable reconsideration of this case is respectfully requested.
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`Claims 16 and 20 have been amended to correct the informalities noted by the Examiner.
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`Claims 11~ 12, 14 and 15 have been canceled. In view of these amendments, it is respectfully
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`submitted that all pending claims are now in all aspects in compliance with 35 U.S.C. 112~ ·
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`second paragraph. Therefore, the withdrawal of tbjs rejection is respectfully requested.
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`Recdved ftom, 102 962 8lOO > at V5ro2 3:38:28 PM [Eastern Sllndard Time)84
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`Case 6:21-cv-00735-ADA Document 32-6 Filed 01/27/22 Page 4 of 11
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`f4J004
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`••
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`.Amendment
`U.S. Application No.: 09/164,777
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`Claims 1-23 have been rejected under 35 U.S.C. 103(a) as being unpatentable over Misra
`
`et al. in view of U.S. Patent No. 5,684,951 to Goldman et al. and U.S. Patent No. 5,479,639
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`Ewertzetal.
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`The cited references do not render the present invention obvious as they do not teach or
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`suggest, among other things, storing a verification structure, such as a software license
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`information, in the BIOS of a computer as is recited in the present claims.
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`Misra et al. is cited as the primary reference against the present claims. Misra relates to a
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`system and method for enforcing software licenses. The system of Misra generates unique
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`identifiers for servers and clients, col 12, lines 41-42. The client system ID 142 is a unique
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`identifier for the client computer:-, col 12, lines 50-51. The client system IDs can be based on
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`information collected from a computer's hardware and installed software. For example, hard disk
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`volume numbers, registered software, video cards, and some microprocessors contain unique
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`identifiers. This information· can be combined to uniquely identify a particular PC. Thus, the
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`client system ID of Misra, is similar to tl1e pseudo-unique kev recited in claims 1 and 20.
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`Misra also describes a license ID, which is a unique identifier assigned to a software
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`license when the software license is issued to a client device, col. 11, lines 9-12. The license ID
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`may be a digital certificate indicating the right to use the particular software at issue, col. l 0,
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`lines 60-67. The license ID of Misra is simiJar to the verification structure and license
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`. ,
`/,
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`information recited in claims l and 20, respectively .
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`Misra fails to teach using the BIOS of a computer to store the license ID, as noted in
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`Section 7, Page 6 of the Office Action. Ewertz is cited as supplementing Misra to teach this
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`feature. Howe¥er, the license information described in Ewertz has a diffel"ent meaning and a
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`different function from the license information described in Misra. Therefore, a combination of
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`these references would not result in the claimed invention, as is discussed in detail below.
`3
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`Received ~om < 202 962 8300 > at 215f02 3:38:28 PM ~astern Standard Time!
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`Case 6:21-cv-00735-ADA Document 32-6 Filed 01/27/22 Page 5 of 11
`VE~ABLE
`02/05/02 16:37 FAX 2~
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`~005
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`••
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`Amendment
`U.S. Application No.: 09/164,777
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`In Ewertz, a "software license number' is descnoed as one type of identification
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`information, col. 3, lines 20-22. This identification information may also include an Ethernet
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`address or system serial numbers, col 3, lines 20-22. The identification infonnation is a unique
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`identification value stored in anon-writable, non-erasable area of the BIOS during manufacture.
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`The identification information uniquely identifies a particular oomputer. Therefore, according to
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`Ewertz a "software license number" is one of a type of static data structures identifying a specific
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`computer and the static data structure is stored such that it cannot be modified. Acconlingly, the
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`software license number of Ewertz is simply identification for the operating system of a
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`particular computer.
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`Fol' example, col. 2, lines 47-49 of Ewertz disclose that the memory storing the
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`identification information may be electronically locked to prevent erasure or modification of its
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`contents once inst.al.led. Moreover, in teaching a pfefetred embodiment. col. 11, line 23 - col. 12,
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`line 14 of Ewertz describe that several types of identification information must be retained for
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`individual computer systems. One type of identification number, as mentioned above, is an
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`Ethernet address. The Ethernet address is stored in a protected area 306 in static page 2 of the
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`flash memory of Ewertz and cannot be erased or altered once the device is installed. Thus the
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`identification number cannot be destroyed. Ewertz also teaches other computer system
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`identification numbers, such as unique serial number, printed board assembly (PBA) numbers or
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`operating system license numbers may be stored in the locked memory.
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`Consequently, Ewertz teaches storing identification information for the computer in a
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`non-writable. non-erasable non-volatile memory. This identification information of Ewertz
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`corresponds to the pseudo-unique key stored in the first non-erasable, non-volatile memory as
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`recited in claims 1 and 20 and does not correspond to the license information recited in these
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`claims. The identification information of Ewertz is a static data structure, Hke the system ID of
`4
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`Received from < 202 962 8300 > at 215102 3:38:28 PM ~astern Standard Time)
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`Case 6:21-cv-00735-ADA Document 32-6 Filed 01/27/22 Page 6 of 11
`VENABLE
`---~2/05/02 1 6 _ :~~ 2 •
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`'41006
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`Amendment
`U.S. Application No.: 09/164,777
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`·-
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`Misra, that uniquely identifies a computer and simply does not correspond the license ID of
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`Misra or the license information of the present invention as defined by claims 1 and 20.
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`From the above discussion, it is clear that the "software license number"' according to
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`Ewertz is equivalent in definition and :function to Misra's system ID_ Therefore, eveii if Misra is
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`combined with Ewertz, this combination does not result in the present invention. The proposed
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`combination results in the system ID of Misra being stored in the BIOS, not the verification
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`structure or license infonnation being stored in the BIOS as is required by the present claims.
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`Furthermore, there is no suggestion or motivation to combine Misra and Ewertz in the
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`manner suggested in the Office Action. BIOS is a configuration utility. Software license
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`management applications, such as the one of the present invention. are operating system (OS)
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`level programs. Therefore, BIOS programs and software licensing management applications do
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`not ordinarily interact or communicate becanse when BIOS is running, the computer is in a
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`configuration mode, hence OS is not running. Thus, BIOS cmd OS level programs are normally
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`mutually exclusive.
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`Ewertz teaches that writing to the BIOS area is performed by the BIOS routines:
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`"Referring to Fig. 8~ processing logic for updating the flash memory
`device with configuration data, such as EISA
`infonnation,
`is
`illustrated ... The processing logic shown in Fig. 8 resides in the system
`BIOS of the preferred embodiment', Col 10, lines 20-28
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`Misra teaches a licensing system that is OS level based:
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`.. The license generator 26, license server 28 and intermediate server 32
`are preferably implemented as computer servers, such as Windows NT
`servers that run Windows NT server operating systems from Microsoft
`corporation or UNIX~based servers" Col 5, lines 3-7
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`Thus, the systems described in Misra and Ewertz are an OS program and a BIOS
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`program, respectively, that cannot nm at the same time. Therefore, there is no teaching or
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`suggestion to combine these programs. In fact st1ch a combination would change the operation
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`Received ~om < 202 962 8300 > at 215102 3:38:28 PM ~astern Standard Time)
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`Case 6:21-cv-00735-ADA Document 32-6 Filed 01/27/22 Page 7 of 11
`02/05/02 16: 38 FAX 20•~ . _ _ _ 0
`VENABLE
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`141007
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`Amendment
`U.S. Application No.: 09/164,777
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`of the programs, which is an inclicia of non-obviousness, see MPEP Sec. 214 L03 and related
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`case law.
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`Moreover, the present invention proceeds against conventional wisdom in the art. Using
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`BIOS to store application data such as that stored in Misra's local cache for licenses is not
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`obvious. The BIOS area is not considered a storage area for computer applications. An ordinary
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`skilled artisan would not consider the BIOS as a storage medium to presenre application data for
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`at least two reasons.
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`First, OS does not support this functionality and is not recognized as a bard.ware device
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`like other peripherals. Every OS provides a set of application program interfaces (APls) for
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`applications to access storage devices such as hard drives, removable devices, etc. An ordinary
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`person skilled in the art makes use of OS features to write date to storage mediums. There is no
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`OS support whatsoever to write data to the system BIOS. Therefore, an ordinary person skilled
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`in the art would not consider the BIOS as a possible storage medium. Furthenno~ it is common
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`that all peripheral devices in the PC are listed aud recognized by the OS except for the BIOS. '.
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`This supports the fact that the BIOS is not considered a peripheral device. Accordingly, an
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`ordinary person slcilled in the art would not consider the B1OS for any operatic~ including
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`writing to the BIOS.
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`Second. no file system is associated with the BIOS. Every writable device connected to
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`the PC is associated with an OS file system to arrange and manage data structures. An example
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`for such a file system would be FAT, F AT32~ N1FS~ HPFS, etc. that suggests writing data to the
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`writable device. No such file system is associated with the BIOS. This is further evidence that
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`OS level application programmers would not consider the BIOS as a storage medium for license
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`,',
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`data.
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`Received from < 202 962 8300 > at 215/02 3:38:28 PM ~astern Standard Time)
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`Case 6:21-cv-00735-ADA Document 32-6 Filed 01/27/22 Page 8 of 11
`VENABLE
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`'41008
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`•· -
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`Amendment
`U.S. Application No.: 09/164,777
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`Additionally, Misra teaches away from using the BIOS as a storage area by making a
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`statement about client computers that do not have a persistent non-volatile area
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`"The license cache 136 is kept in persisted (non-volatile) storage. Clients
`that do not have persistent storage can be issued licenses as long as they
`can generate a unique client ID and can respond to the client platform
`challengeprotocoP' (Misra, Col. 12, lines 15-lS)
`
`Since all computers must have a BIOS, it is clear Misra teaches away from using the
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`BIOS as a local storage area for licenses.
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`Goldman et al. do not supplement Misra and Ewertz to teach or suggest the present
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`invention.
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`Thus, in view of the above discussion, it is clear that the cited references. taken alone or
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`in any combjnation, do not fairly teach or suggest the present invention. Therefore the
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`withdrawal of this rejection is respectfully requested. Favorable reconsideration of this case and
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`early issuance of a Notice of Allowance is respectfully requested
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`Attached hereto is a marked-up version of the changes made to the specification and
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`claims by the current amendment. The attached page is captioned "Version with markings to
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`show changes made . .,.,
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`In view of the foregoin& reconsideration and allowance of this application are believed in
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`order> and such actio11 is e.arnestly solicited.
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`Received from < 202 962 8300 > at 2/5102 3:38:28 PM ~astern Standard Time)
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`Case 6:21-cv-00735-ADA Document 32-6 Filed 01/27/22 Page 9 of 11
`02/05/0,2 16:38 FAX 2 0 . 2 -
`VENABLE
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`14!009
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`·-
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`Amendment
`U.S. Application No.: 09/164,777
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`The Commissioner is authorized to charge any fee necessitated by this Amendment to our
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`Deposit Account No. 22-0261.
`
`·Respectfully submi~
`
`Registration No. 26,924
`Jeffri A. Kaminski
`Registration No. 42, 709
`P.O. Box 34385
`Washington,D.C.20043-9998
`Telephone 202-962-4800
`Telefax 202-962-8300
`
`RK/JAK/lrh
`#347353
`
`Received from < 202 962 8300 > at 215fD2 3:38:28 PM ~astern Standard Time)
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`Case 6:21-cv-00735-ADA Document 32-6 Filed 01/27/22 Page 10 of 11
`02/05/02 1 6 :~ 8~
`VEr-fABLE
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`141010
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`••
`
`Amendment
`U.S. Appln. No.: 09/164,777
`
`VERSION WITH MARKINC'..S TO SHOW CHANGES MADE
`
`IN THE CLAIMS:
`
`Please cancel claims 11, 12, 14 and 15 without prejudice to their re-entry at a later date.
`
`Please amended the claims as follows:
`
`16.
`
`(Amended)
`
`The method of Claim ~L wherein the-a pseudo-unique key
`
`i:aelNdes e. pse,-:ida l.W~e key js stored in the non-volatile memory of the BIOS.
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`20.
`
`(Amended)
`
`A method for accessing an application 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 programmati.cally changed, the method,
`
`comprising:
`
`loading thea application software program residing in a non-volatile memory area of the
`
`computer;
`
`extracting license information from the software program;
`
`encrypting Jicense information using the pseudo-unique key stored in the first non(cid:173)
`
`volatile memory area;
`
`storing the encrypting -license information in a second erasable, 'Writable, . oon
`
`volatilenon-volatile memory area of the BIOS of the computer;
`
`subsequently verifying the application software program based on the encrypted license
`
`infonnation stored in the second erasable, writable, non-volatile memory area of the BIOS; and
`
`acting on the application software program based on the verification.
`
`Received from< 202 962 8300 > at 2/5f02 3:38:28 PM ~astern Standard Time)
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`

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`Case 6:21-cv-00735-ADA Document 32-6 Filed 01/27/22 Page 11 of 11
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`•VENABLE ~ - - - ·-
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`141001
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`Under tho p_,
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`11110fk Roductlon Ad er 11195. no
`
`~ d PTOl$a/117 (OB-00)
`Attorney Docket NO. ~
`Appmvcdfarusethrauvh 10/31/200Z. 011'8 C65HJ031"'
`U.S. Pstsnt and Tradermlrl( omca; U.S. DEPARTMl:NT OP ~~,
`nd ia a eo11ec!l1111 of inforTtmiO!I unlaaa It c:antairn; a v;ilid O
`111n11,nuriiii'¥:!\:
`
`Certificate of Transmission under 37 CFR 1.8
`
`The undersigned certifies that the attached Amendment is being
`facsimile filed to the Examiner C. Hewitt (703} 746-7239) on
`February 5, 2002.
`
`Typed or printed name of person signing Certificate
`
`Note: Each paper must have its own certificate of transmission, or this
`certificate must identify each submitted paper.
`
`Burden Hour Statement: TIits fOml ls es!lm~ to take 0..03 houni to complete. Tme will vary depandin9 upon Iha naeds of the indMdual case. Any
`ccmmerus on the amol.lllt or ~me requimd ta complete thi& form should be sent ID the Chief Information Ol!lcer, u.s. Patent ~nd Tqide,mirk Office,
`Washington, DC 20231. 00 NOT SEND FEES OR COMPL.ETEO FORMS 10 THIS ADDRESS. ~NO TO: Assishmt Ccmmiaaianer for Pa!Enta,
`~~ingtQn, DC 20231.
`
`PCIOOCS:va498BB
`
`Received from < 202 962 8300 > at 215102 3:38:28 PM ~astern Standard Time)
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`C
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