Skip to main content

Full text of "USPTO Patents Application 09870801"

See other formats


Appln. No. 09/870,801 

Amdt. dated March 26, 2004 

Reply to Office action dated Sept. 26, 2003 


PATENT 
Customer No. 22,852 
Attorney Docket No. 7451.0001-18000 
InterTrust Ref. No.: IT-5.2.1.1 (US) 


REMARKS / ARGUMENTS 


In response to the Office action dated September 26, 2004, Applicants 
respectfully request the Office to enter the following amendments and consider the 
following remarks. By this response, claims 91, 93, 94, 96, 97, 103, 121, 123, and 
126-128 have been amended. With respect to the pending claims, claims 91-128 
remain pending in this application (claims 1-90 were canceled without prejudice via 
preliminary amendment). 

In the Office action, the Examiner: (i) rejected claims 91-95, 103-104 and 
121-127 under 35 U.S.C. § 112, first paragraph, (ii) rejected claims 93, 97, 103, 
123 and 128 under 35 U.S.C. § 112, second paragraph, (iii) rejected claims 91-127 
under 35 U.S.C. § 101 as allegedly being directed to non-statutory subject matter, 
(iv) rejected claims 91-96, 98-107, and 111-128 under 35 U.S.C. § 102(e) as 
allegedly being anticipated by U.S. Patent No. 5,715,403 to Stefik ("Stefik"), and (v) 
rejected claims 108-110 under 35 U.S.C. § 103(a) as allegedly being unpatentable 
over Stefik in view of U.S. Patent No. 5,457,746 to Dolphin ("Dolphin"). 

Applicants respectfully request reconsideration of the above rejections for 
the reasons set forth below. 

Information Disclosure Statement 

The Office has indicated that the information disclosure statement filed 
06/03/2003, Paper No. 5, is not available to the examiner. Applicants are unsure if 
the missing IDS refers to the Information Disclosure Statement/Notice of Litigation 
filed October 31 , 2002, or the Updated Notice Regarding Related Litigation dated 
April 3, 2003. Applicants note, however, that neither of these submissions appears 
in the U.S. Patent Office's PAIR records. Therefore, Applicants enclose herewith 
(at Tabs 1 and 2, respectively) copies of these submissions as well as copies of 
the stamped, returned post cards that were mailed along with both of these 
disclosure statements. Both of these submissions include two types of information: 
(1 ) papers from a related court proceeding, attached as exhibits or tabs, and (2) 


Appln. No. 09/870,801 

Amdt. dated March 26, 2004 

Reply to Office action dated Sept. 26, 2003 


PATENT 
Customer No. 22,852 
Attorney Docket No. 7451.0001-18000 
InterTrust Ref. No.: IT-5.2.1.1 (US) 


other references that are provided in list format (either in a form PTO-1449, or in 
the same lists provided during litigation). In an abundance of caution, all of this 
information is being resubmitted herewith as follows. 

With respect to the combined Information Disclosure Statement / Notice of 
Litigation filed October 31, 2002, the IDS and the Notice of Litigation (with all of the 
associated documents, Exhibits A-M) are being resubmitted herewith in paper form 
(1 st Attachment hereto), as they were originally submitted. Regarding the 3 pages 
of references cited on the form PTO-1449, these references are being resubmitted 
via CD-ROM entitled "IDS materials previously submitted on 10/31/02^ attached 
(2 nd Attachment hereto). 

With respect to the Updated Notice of Related Litigation filed April 3, 2003, it 
and all of the associated documents (Tabs 1-11) are also being resubmitted 
herewith in paper form, as they were originally submitted (3 rd Attachment hereto). 
Regarding Exhibits F and G to Microsoft Corporation's Patent Local Rule 4-2 
Disclosure of Preliminary Claim Construction and Extrinsic Evidence (Limited to 
'Mini-Markman' Claims)" (Tab 8), all of these references are cited in the 
Information Disclosure Statement (form PTO-1449) being submitted herewith (on 
March 26, 2004) in a separate IDS document. 

Rejection of Claims 91-95 and 121-127 under 35 U.S.C. S 112. 1 st paragraph 
Claims 91-95 and 121-127 stand rejected under 35 U.S.C. § 112, first 
paragraph, as allegedly failing to comply with the written description requirement in 
that the "description of a public portion and a private portion is not supported in the 
specification." 

Claims 91-95 and 121-127 also stand rejected under 35 U.S.C. § 1 12, first 
paragraph, for allegedly failing to enable "a public portion and a private portion" in 
the specification. 

Applicants respectfully submit that description of a public portion and a 
private portion is supported by and enabled in the specification. By way of 


-12- 


Appln. No. 09/870,801 

Amdt. dated March 26, 2004 

Reply to Office action dated Sept. 26, 2003 


PATENT 
Customer No. 22,852 
Attorney Docket No. 7451.0001-18000 
InterTrust Ref. No.: IT-5.2.1.1 (US) 


example, Applicants direct the Examiner's attention to FIG. 23, and the related 
discussion in the specification, which includes examples of the layout for a load 
module public header and a load module private header. See, application as filed, 
pg. 353, line 6 - pg. 361, line 24, with public/private header examples at pg. 356, 
line 1 - pg. 358, line 15. Therefore, it is respectfully submitted that the claimed 
public portion and private portion subject matter is supported and enabled by at 
least these portions of the specification. The Examiner is invited to contact 
Applicants should he need any assistance in locating additional support for a 
particular claim element. 

Claims 103 and 104 stand rejected under 35 U.S.C. § 1 12, first paragraph, 
as allegedly failing to comply with the written description requirement in that the 
"description of a public tag and a private tag are not supported in the specification." 

Claims 103 and 104 also stand rejected under 35 U.S.C. § 1 12, first 
paragraph, for allegedly failing to enable "a public tag and a private tag" in the 
specification. 

Applicants respectfully submit that such use of public tags and private tags 
is supported and enabled in the written description. By way of example, Applicants 
direct the Examiner's attention to the discussion appearing at pg. 219, line 6 - pg. 
220, line 10 of the application as filed. Therefore, it is respectfully submitted that 
the claimed subject matter is supported and enabled by at least this portion of the 
specification. 

Rejection of Claims 93. 97. 103. 123 and 128 under 35 U.S.C. §112. 2 nd paragraph 

Claims 93 and 123 stand rejected under 35 U.S.C. § 112, second 
paragraph, as allegedly being indefinite for failing to provide antecedent basis for 
the term "the type of computer" in line 2 of claim 93, and in line 2 of claim 123. 

Applicants have amended claims 93 and 123 to each recite "a type of 
computer" so as to remove any need for antecedent basis. Applicants respectfully 
submit that these rejections to claims 93 and 123 are thereby overcome. 


-13- 


Appln. No. 09/870,801 

Amdt. dated March 26, 2004 

Reply to Office action dated Sept. 26, 2003 


PATENT 
Customer No. 22,852 
Attorney Docket No. 7451 .0001-18000 
InterTrust Ref. No.: IT-5.2.1.1 (US) 


Similarly, claim 103 stands rejected under 35 U.S.C. § 112, second 
paragraph, as allegedly being indefinite for failing to provide antecedent basis for 
the term "the public tag" in line 3 of claim 103. 

Applicants have amended claim 103 to recite "a public tag" so as to remove 
any need for antecedent basis. Applicants respectfully submit that the rejection to 
claim 103 has thereby been overcome. 

Claim 97 stands rejected under 35 U.S.C. § 1 12, second paragraph, as 
allegedly being indefinite for using a trademark to attempt to identify/describe the 
operating system. 

Although Applicants respectfully disagree that the usage here is indefinite, 
in order to expedite prosecution Applicants have amended claim 97 to remove the 
reference to a trademark, and respectfully submit that the instant rejection is now 
moot. 

Claim 128 stands rejected under 35 U.S.C. § 112, second paragraph, as 
allegedly being incomplete for omitting essential elements, such omission 
amounting to a gap between the elements. 

Although Applicants respectfully disagree with the Examiner's basis for this 
rejection, in order to expedite prosecution Applicants have amended claim 128 to 
more clearly recite the nexus between system elements, and thus respectfully 
submit that claim 128 is allowable. 

Rejection of Claims 91-127 under 35 U.S.C. § 101 

Claims 91-95 stand rejected under 35 U.S.C. § 101 as allegedly being 
directed to non-statutory subject matter. These claims now reflect that the load 
module header and the load module body are embodied on a computer-readable 
medium. Accordingly, Applicants respectfully submit that this rejection has been 
overcome. 

Claims 96-120 stand rejected under 35 U.S.C. § 101 as allegedly being 
directed to non-statutory subject matter. These claims now reflect that the 


-14- 


Appln. No. 09/870,801 

Amdt. dated March 26, 2004 

Reply to Office action dated Sept. 26, 2003 


PATENT 
Customer No. 22,852 
Attorney Docket No. 7451.0001-18000 
InterTrust Ref. No.: IT-5.2.1.1 (US) 


operating system, comprising validation programming and communications 
programming, is embodied on a computer readable medium. Accordingly, 
Applicants respectfully submit that this rejection has been overcome. 

Claims 121-125, 126 and 127 stand rejected under 35 U.S.C. § 101 as 
allegedly being directed to non-statutory subject matter. These claims now reflect 
that the respective component assemblies are embodied on computer readable 
media. Accordingly, Applicants respectfully submit that the rejection of these 
claims has been overcome. 

Rejection of Claims 91-96. 98-107 and 111-128 under 35 U.S.C. § 102(b) 

Claims 91-96, 98-107, and 1 11-128 stand rejected under 35 U.S.C. § 102(e) 
as allegedly being anticipated by Stefik. 

Claim 91 recites a load module that includes a header and a body that 
includes executable programming specifying that information relating to a use of 
the load module be communicated to a remote site. 

Applicants respectfully submit that Stefik does not teach or disclose, inter 
alia, a load module that includes executable programming specifying that 
information relating to a use of the load module be communicated to a remote site. 
Instead, the cited portions of Stefik describe billing for the use of a digital work 
(see, e.g., Office Action at page 8, citing Stefik, col. 29 lines 60-61 and col. 30, 
lines 10-22). There is no indication that the digital work itself comprises a load 
module including executable programming specifying that information relating to a 
use of the load module be communicated to a remote site. For at least these 
reasons, Applicants respectfully submit that Claim 91 is not anticipated by Stefik. 

Claims 92-95 are dependent on Claim 91 , and are thus allowable for at least 
the reasons set forth above in connection with Claim 91 . 

Claim 96 recites an operating system that includes component assembly 
programming which assembles a plurality of elements into a component. 

Applicants submit that Stefik does not teach or disclose, inter alia, 


-15- 


Appln. No. 09/870.801 

Amdt. dated March 26, 2004 

Reply to Office action dated Sept. 26, 2003 


PATENT 
Customer No. 22,852 
Attorney Docket No. 7451.0001-18000 
InterTrust Ref. No.: IT-5.2.1.1 (US) 


component assembly programming which assembles a plurality of elements into a 
component. Instead, the cited portions of Stefik describe printing or viewing one or 
more digital works, where each digital work may have multiple parts (see, e.g., 
Office Action at page 9, citing Stefik, col. 30, lines 38-62). However, there is no 
indication that the digital works that are being printed or viewed are assembled into 
a component of a component assembly in the manner recited in claim 96. For at 
least these reasons, Applicants respectfully submit that Claim 96 is not anticipated 
by Stefik. 

. Claims 98-107 and 111-120 are dependent on Claim 96, and are thus 
allowable for at least the reasons set forth above in connection with Claim 96. 

Claim 121 recites a component assembly comprising first and second load 
modules, in which at least one load module comprises executable programming 
requiring the storage of audit information relating to the use of the component 
assembly. 

Applicants submit that Stefik does not teach or disclose, inter alia, a 
component assembly that includes load module executable programming requiring 
the storage of audit information relating to the use of the component assembly. 
Instead, the cited portions of Stefik describe billing for the use of a digital work 
(see, e.g., Office Action at page 17, citing Stefik, col. 29 lines 60-61, and col. 30, 
lines 23-26). There is no indication that the digital work comprises a component 
assembly or load module comprising executable programming requiring the 
storage of audit information relating to the use of the component assembly. For at 
least these reasons, Applicants respectfully submit that Claim 121 is not 
anticipated by Stefik. 

Claims 122-125 are dependent on Claim 121 , and are thus allowable for at 
least the reasons set forth above in connection with Claim 121. 

Claim 126 recites a component assembly comprising a load module 
including executable programming requiring the storage of information uniquely 
identifying a device at which the component assembly is stored. 


-16- 


Appln. No. 09/870,801 

Amdt. dated March 26, 2004 

Reply to Office action dated Sept. 26, 2003 


PATENT 
Customer No. 22,852 
Attorney Docket No. 7451.0001-18000 
InterTrust Ref. No.: IT-5.2.1.1 (US) 


Applicants respectfully submit that Stefik does not teach or suggest a load 
module including executable programming requiring the storage of information 
uniquely identifying a device at which the component assembly is stored, as 
recited in claim 126, and, furthermore, that portions of Stefik that correspond to the 
claim language have not been identified by the Examiner (e.g., where, in Stefik, a 
load module including executable programming requiring the storage of information 
uniquely identifying a device at which a component assembly is stored - see Office 
Action at pages 18-19). Passages cited from Stefik by the Office are purported to 
show executable programming specifying that information relating to a use of a 
load module be communicated to a remote site (see Office Action at page 19, 
citing Stefik, col. 29 lines 60-61 , and col. 30, lines 23-26). As set forth above in 
connection with Claim 91 , Applicants have explained that the cited portions of 
Stefik do not disclose this material. Moreover, Applicants submit that the elements 
discussed in the cited portions of Stefik are not the same as a load module 
including executable programming requiring the storage of information uniquely 
identifying a device at which a component assembly is stored, as recited in Claim 
126. For at least these reasons, Applicants respectfully submit that Claim 126 is 
not anticipated by Stefik. 

Claim 127 recites a component assembly comprising first and second load 
modules, in which at least one of the load modules includes executable 
programming requiring communicating a unique identification for a device at which 
said component assembly is stored to a remote location. 

Applicants respectfully submit that the Examiner has not identified where 
Stefik discloses a load module including executable programming requiring 
communicating a unique identification for a device at which said component 
assembly is stored to a remote location (see Office Action at pages 20-21). 
Instead, the Examiner cites passages in Stefik that allegedly show executable 
programming specifying that information relating to a use of a load module be 
communicated to a remote site (see Office Action at page 21 , citing Stefik, col. 29 


-17- 


Appln. No. 09/870,801 

Amdt. dated March 26, 2004 

Reply to Office action dated Sept. 26, 2003 


PATENT 
Customer No. 22,852 
Attorney Docket No. 7451.0001-18000 
InterTrust Ref. No.: IT-5.2.1.1 (US) 


lines 60-61, and col. 30, lines 23-26). As set forth above in connection with Claim 
91 , Applicants respectfully disagree that the cited portions of Stefik disclose this 
material. However, Applicants also submit that even if Stefik did disclose a load 
module including executable programming specifying that information relating to a 
use of the load module be communicated to a remote site, as recited in Claim 91 , 
that element is not the same as a load module including executable programming 
requiring communicating a unique identification for a device at which said 
component assembly is stored to a remote location, as recited in Claim 127. For at 
least these reasons, Applicants respectfully submit that Claim 127 is not 
anticipated by Stefik. 

Claim 128 recites a computer processing system that includes a component 
assembler which assembles a plurality of elements into a component assembly. 
Applicants respectfully submit that Stefik does not teach or disclose, inter alia, a 
component assembler which assembles a plurality of elements into a component 
assembly. Instead, the cited portions of Stefik describe printing or viewing one or 
more digital works, where each digital work can have multiple parts (see, e.g., 
Office Action at page 21 , citing Stefik, col. 30, lines 38-62). However, there is no 
indication that the one or more digital works that are being printed or viewed are 
assembled into a component assembly by a component assembler such as that 
recited in claim 128. For at least these reasons, Applicants respectfully submit that 
Claim 128 is not anticipated by Stefik. 

Rejection of Claims 108-110 under 35 U.S.C. § 103(a) 

Claims 108-1 10 stand rejected under 35 U.S.C. § 103(a) as allegedly being 

unpatentable over Stefik in view of U.S. Patent No. 5,457,746 to Dolphin 

("Dolphin"). 

All of the claims subject to the instant rejection are ultimately dependent on 
Claim 96, and are thus allowable for at least the reasons set forth above in 
connection with Claim 96. 


-18- 


Appln. No. 09/870,801 

Amdt. dated March 26, 2004 

Reply to Office action dated Sept. 26, 2003 


PATENT 
Customer No. 22,852 
Attorney Docket No. 7451.0001-18000 
InterTrust Ref. No.: IT-5.2.1.1 (US) 


Conclusion 

In view of the foregoing amendments and remarks, Applicants submit that 
the pending claims are in allowable form, and respectfully request reconsideration 
of the rejections and the timely allowance of the claims. 

Please grant any extensions of time required to enter this response and 
charge any additional required fees to our deposit account 06-0916. 


Finnegan Henderson Farabow 

Garrett & Dunner L.L.P. 
1300 I Street, NW 
Washington, D.C. 20005 
(202) 408-4000 


Attachments: 

1 st - Notice of Litigation (w/Exhibits), filed 10/31/02 

2 nd - CD-ROM containing references from IDS filed 10/31/02 

3 rd - Updated Notice of Related Litigation (w/Attachments) filed 4/3/03 


Respectfully submitted, 

FINNEGAN, HENDERSON, FARABOW, 
GARRETT & DUNNER, L.L.P. 


Dated: March 26, 2003 



Andrew B. Schwaab 
Reg. No. 38,611 


-19- 



United States Patent and Trademark Office 


fATES DEPARTMENT OF C 


UNITED STATES DEPARTMENT Of COMMERCE 
United States Patent and Trademark Office 

Address: COMMISSIONER FOR PATENTS 
P.O.Box 1 450 

Alexandria, Virginia 223 13-1450 
www.usplO.gov 


APPLICATION NO. 

FILING DATE 

FIRST NAMED INVENTOR 

ATTORNEY DOCKET NO. 

CONFIRMATION NO. | 

09/870,801 

06/01/2001 

Karl L. Ginter 

7451.0001-18000 

9392 


22852 7590 05/20/2004 

FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER 
LLP 

1300 I STREET, NW 
WASHINGTON, DC 20005 


EXAMINER 


DARROW, JUSTIN T 


ART UNIT 


PAPER NUMBER 


2132 

DATE MAILED: 05/20/2004 


Please find below and/or attached an Office communication concerning this application or proceeding. 



\ 


PTO-90C (Rev. 10/03) 


i 

Application No. 

Applicant(s) 

Notice of Abandonment 

09/870,801 

GINTER ET AL. 

Examiner 

Art Unit 



Justin T. Darrow 

2132 



• The MAILING DATE of this communication appears on the cover sheet with the correspondence address 
This application is abandoned in view of: 

1 H Applicant's failure to timely file a proper reply to the Office letter mailed on 26 September 2003 . 

' (a) □ A reply was received on (with a Certificate of Mailing or Transmission dated ), which is after the expiration of the 

period for reply (including a total extension of time of month(s)) which expired on . 

(b) □ A proposed reply was received on but it does not constitute a proper reply under 37 CFR 1.113 (a) to the final rejection. 

(A Drooer reply under 37 CFR 1 .1 1 3 to a final rejection consists only of: (1 ) a timely filed amendment which places the 
application in condition for allowance; (2) a timely filed Notice of Appeal (with appeal fee); or (3) a timely filed Request for 
Continued Examination (RCE) in compliance with 37 CFR 1.1 14). 

(c) □ A reply was received on but it does not constitute a proper reply, or a bona fide attempt at a proper reply, to the non- 
final rejection. See 37 CFR 1 .85(a) and 1 .1 1 1 . (See explanation in box 7 below). 

(d) No reply has been received. 

2. □ Applicant's failure to timely pay the required issue fee and publication fee. if applicable, within the statutory period of three months 

from the mailing date of the Notice of Allowance (PTOL-85). 
fal □ The issue fee and publication fee. if applicable, was received on (with a Certificate of Mailing or Transm.ssic >n dated 

(a) □ Tr^s 5 ^.^ js a aft P the expjratjon 0{ tne statutory perjod for payment of the issue fee (and publ.cabon fee) set in the Notice of 

Allowance (PTOL-85). 

(b) □ The submitted fee of $ is insufficient. A balance of $ is due. 

The issue fee required by 37 CFR 1.18 is $ . The publication fee. if required by 37 CFR 1.18(d). is $ 

(c) □ The issue fee and publication fee, if applicable, has not been received. 

3. Q Applicant's failure to timely file corrected drawings as required by, and within the three-month period set in, the Notice of 

(a) nProwsel corded drawings were received on (with a Certificate of Mailing or Transmission dated ), which is 

after the expiration of the period for reply. 

(b) □ No corrected drawings have been received. 

4. □ The letter of express abandonment which is signed by the attorney or agent of record, the assignee of the entire interest, or all of 

the applicants. 

5. □ The letter of express abandonment which is signed by an attorney or agent (acting in a representative capacity under 37 CFR 
1.34(a)) upon the filing of a continuing application. 

6 □ The decision by the Board of Patent Appeals and Interference rendered on and because the period for seeking court review 

of the decision has expired and there are no allowed claims. 

7. □ The reason(s) below: 


JUSTIN T. DARROW 
PRIMARY EXAMINER 
TECHNOLOGY CENTER 2100 

Petitions to revive under 37 CFR 1.137(a) or <b), or requests to withdraw the holding of abandonment under 37 CFR 1.181, should be promptly filed to 
minimize any negativ e effects on patent term. m — 


U S. Patent and Trademark Office 
FTOL-1432 (Rev. 04-01) 


Notice of Abandonment 


Part of Paper No. 8