Case 6:21-cv-00735-ADA Document 32-7 Filed 01/27/22 Page 1 of 8
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`Exhibit 4
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`Case 6:21-cv-00735-ADA Document 32-7 Filed 01/27/22 Page 2 of 8
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`Application N.o.
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`Applicant(s)
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`••
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`Notice of Allowability
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`09/164,777
`Examiner
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`MULLOR ET AL
`Art Unit
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`Calvin L Hewitt II
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`2161
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`- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address-(cid:173)
`All claims being allowable, PROSECUTION ON THE MERITS IS (OR REMAINS) CLOSED in this application. If not included
`herewith (or previously mailed), a Notice of Allowance (PTOL-85) or other appropriate communication will be mailed in due course. THIS
`NOTICE OF ALLOWABILITY IS NOT A GRANT Oli PATENT RIGHTS. This application is subject to withdrawal from issue at the initiative
`of the Office or upon petition by the applicant. See 37 CFR 1.313 and MPEP 1308.
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`1. 12:1 This communication is responsive to 2-fr02.
`2. 12:1 The allowed claim(s) is/are 1-10 13 and 16-23.
`3. D The drawings filed on __ are accepted by the Examiner.
`4. 12:1 Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`a)~ All
`b) 0 Some* c) 0 None
`of the:
`1. ~ Certified copies of the priority documents have been received.
`2. 0 Certified copies of the priority documents have been received in Application No. __ .
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`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)).
`* Certified copies not received: __ .
`5. D Acknowledgment is made of a claim for domestic priority under 35 U.S.C. § 119(e) (to a provisional application}.
`(a) D The translation of the foreign language provisional application has been received.
`6. D Acknowledgment is made of a claim for domestic priority under 35 U.S.C. §§ 120 and/or 121.
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`Applicant has THREE MONTHS FROM THE "MAILING DATE" of this communication to file a reply complying with the requirements noted
`below. Failure to timely comply will result in ABANDONMENT of this application. THIS THREE-MONTH PERIOD IS NOT EXTENDABLE.
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`7. 0 A SUBSTITUTE OATH OR DECLARATION must be submitted. Note the attached EXAMINER'S AMENDMENT or NOTICE OF
`INFORMAL PATENT APPLICATION (PTO-152) which gives reason(s) why the oath or declaration is deficient.
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`8. 0 CORRECTED DRAWINGS must be submitted.
`(a) 0
`including changes required by the Notice of Draftsperson's Patent Drawing Review ( PTO-948) attached
`1) 0 hereto or 2) 0
`to Paper No. __ .
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`(b) 0
`(c) 0
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`including changes required by the proposed drawing correction filed __ , which has been approved by the Examiner.
`including changes required by the attached Examiner's Amendment I Comment or in the Office action of Paper No. __ .
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`Identifying indicia such as the application number (see 37 CFR 1.84(c)) should be written on the drawings in the top margin (not the back)
`of each sheet. The drawings should be filed as a separate paper with a transmittal letter addressed to the Official Draftsperson.
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`9. (cid:143) DEPOSIT OF and/or INFORMATION about the deposit of BIOLOGICAL MATERIAL must be submitted. Note the
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`attached Examiner's comment regarding REQUIREMENT FOR THE DEPOSIT OF BIOLOGICAL MATERIAL.
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`Attachment(s)
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`1 ~ Notice of References Cited (PTO-892)
`30 Notice of Draftperson's Patent Drawing Review (PT0-948)
`5~ Information Disclosure Statements (PTO-1449), Paper No.11.
`70 Examiner's Comment Regarding Requirement for Deposit
`of Biological Material
`
`20 Notice of Informal Patent Application (PT0-152}
`4~ Interview Summary (PTO-413), Paper No.14.
`6~ Examiner's AmendmenUComment
`8~ Examiner's Statement of Reasons for Allowance
`90 Other
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`U.S. Patent and Trademark Office
`PTO-37 (Rev. 04-01)
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`Notice of Allowability
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`Case 6:21-cv-00735-ADA Document 32-7 Filed 01/27/22 Page 3 of 8
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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 1-10, 13, and 16-23 have been examined.
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`Examiner's Amendment
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`2.
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`An examiner's amendment to the record appears below. Should the
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`changes and/or additions be unacceptable to applicant, an amendment may be
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`filed as provided by 37 CFR 1.312. To ensure consideration of such an
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`amendment, it MUST be submitted no later than the payment of the issue fee.
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`Authorization for this examiner's amendment was given in a telephone
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`interview with Jeffri Kaminski on 19 February 2002.
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`3.
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`The application has been amended as follows:
`v
`In claim 1, line 2, replace "(BIOS)" with BIOS.
`/
`In claim 1, line 3, replace " ... computer, _ and" with " ... computer, and"
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`inserted in line 6, as the second limitation after "loading the application ... "
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`and before "extracting license information ... ", detailing that the steps of
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`Case 6:21-cv-00735-ADA Document 32-7 Filed 01/27/22 Page 4 of 8
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`Application/Control Number: 09/164, 777
`Art Unit: 2161
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`Page3
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`"encrypting ... ", "storing ... ", and "subsequently verifying ... " are performed
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`by the agent. This does not apply, however, to the "acting ... " limitation.
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`Reasons for Allowance
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`4.
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`Claims 1-10, 13, and 16-19 have been allowed. The instant application
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`teaches a method for restricting software use by storing a verification structure in
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`a computer BIOS.
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`It is well known to those of ordinary skill in the art of software licensing to
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`monitor the use of software using special code that enforces the preferences of
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`the software provider (e.g. creator, distributor, or service provider), or provider
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`and end-user, by restricting the manner in which an end-user can manipulate
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`(e.g. print, save, redistribute, customize) the software. For example, Ginter et al.
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`(US 5,892,900) implement their software distribution system by dynamically
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`linking a verification structure, such as a PERC or permission record, to software
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`content that dynamically control how the software, and its associated
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`administrative data, may be distributed and used (column 155, lines 46-51 ).
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`Misra et al. (US 6,189,146) disclose a method for licensing software that uses
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`agents to manage software licenses, and stores the licenses in persistent non(cid:173)
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`volatile storage (column 12, lines 8-31 ). Neither reference teaches utilizing BIOS
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`D
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`Case 6:21-cv-00735-ADA Document 32-7 Filed 01/27/22 Page 5 of 8
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`Application/Control Number: 09/164, 777
`Art Unit: 2161
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`Page 4
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`as the non-volatile means for storing a licensed software verification structure.
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`Ewertz et al. (US 5,479,639) teach the use of BIOS memory for storing
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`licensing numbers. Hence, it appears initially, that to one of ordinary skill of the
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`art, the combination of Ewertz et al. with either Ginter et al. and/or Misra et al.,
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`would render the present invention obvious. However, the key distinction
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`between the present invention and the closest prior art, is that the Misra et al.,
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`and Ginter et al. systems and the Ewertz et al. system run at the operating
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`system level and BIOS level, respectively. More specifically, the closest prior art
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`systems, singly or collectively, do not teach licensed programs running at the OS
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`level interacting with a program verification structure stored in the BIOS to verify
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`the program using the verification structure and having a user act on the program
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`according to the verification. Further, it is well known to those of ordinary skill of
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`the art that a computer BIOS is not setup to manage a software license
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`verification structure. The present invention overcomes this difficulty by using an
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`agent to set up a verification structure in the erasable, non-volatile memory of the
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`BIOS.
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`5.
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`Claims 20-23 have been allowed. The instant application teaches a
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`method for restricting software use by storing license information in a computer
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`BIOS.
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`D
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`Case 6:21-cv-00735-ADA Document 32-7 Filed 01/27/22 Page 6 of 8
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`-·
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`Application/Control- Number: 09/164, 777
`Art Unit: 2161
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`Pages
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`Ginter et al. (US 5,892,900) implement their software distribution system
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`by encrypting (column/line 65/55-66/47) software control information (e.g. PERC)
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`and linking control information, to software content that dynamically manages
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`how the software, and its associated administrative data, may be distributed and
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`used (column 155, lines 46-51). Misra et al. (US 6,189,146) disclose a method
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`for licensing software that stores licenses in persistent non-volatile storage
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`(column 12, lines 8-31). Neither reference teaches utilizing BIOS as the non(cid:173)
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`volatile means for storing licensing data. Ewertz et al. (US 5,479,639) teach the
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`use of BIOS memory for storing licensing numbers. Hence, it appears initially,
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`that to one of ordinary skill of the art, the combination of Ewertz et al. with either
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`Ginter et al. and/or Misra et al., would render the present invention obvious.
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`However, a key distinction between the present invention and the closest prior
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`art, is that the Misra et al., and Ginter et al. systems and the Ewertz et al. system
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`run at the operating system level and BIOS level, respectively. More specifically,
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`the closest prior art systems, singly or collectively, do not teach extracting
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`licensing information from a software program, encrypting the information and
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`storing it in the BIOS. Further, it is well known to those of ordinary skill of the art
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`that a computer BIOS is not setup to store license information. The present
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`invention overcomes this difficulty by utilizing an agent to verify the application
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`software program using the license information stored in the erasable, writable,
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`non-volatile memory of the BIOS.
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`Case 6:21-cv-00735-ADA Document 32-7 Filed 01/27/22 Page 7 of 8
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`Application/Control Number: 09/164, 777
`Art Unit: 2161
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`Page6
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`6.
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`Any comments considered necessary by Applicant must be submitted no
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`later that the payment of the issue fee and, to avoid processing delays, should
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`preferably accompany the issue fee. Such submissions should be clearly labeled
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`"Comments on Statement of Reasons for Allowance."
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`Conclusion
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`7.
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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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`•
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`lnfoworld magazine evaluates desktop management software
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`• Saito et al. disclose a method for automatic license monitoring
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`8.
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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(cid:173)
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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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`Any response to this action should be mailed to:
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`Case 6:21-cv-00735-ADA Document 32-7 Filed 01/27/22 Page 8 of 8
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`Application/Control Number: 09/164, 777
`Art Unit: 2161
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`.Page 7
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`Commissioner of Patents and Trademarks
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`c/o Technology Center 2100
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`Washington, D.C. 20231
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`(703) 7 46-7239 (for formal communications intended for entry),
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`(703) 746-7238 (for after-final communications),
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`or faxed to:
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`or:
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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 11
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`February 20, 2002
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`l)
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