Uniloc USA, Inc. et al v. NATIONAL INSTRUMENTS CORP. et al

Filing 265

Responsive CLAIM CONSTRUCTION BRIEF filed by FileMaker, Inc., Pervasive Software, Inc., Symantec Corp.. (Attachments: # 1 Exhibit 1 - '216 patent, # 2 Exhibit 2 - PTO Amendment, # 3 Exhibit 3 - Reply to PTO, # 4 Exhibit 4 - Response to PTO, # 5 Exhibit 5 - PTO Notice of Reexam, # 6 Exhibit 6 - PTO Dec of Pooch, # 7 Exhibit 7 - PTO Interview Summary, # 8 Exhibit 8 - PTO Dec of Rosenblatt)(Jones, Michael)

DEFENDANTS’ RESPONSIVE BRIEF ON
CLAIM CONSTRUCTION

EXHIBIT 2

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1;>1 THE UNITED STATES PATENT AND TRADEMARK OFFlCF.

Applicant

Frederic B. Richardson, II[

Serial No.

08/124,718

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)
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Filed

September 21. 199J

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)

For

SYSIHv! FOR SOFTWARE
REGlSTRA TION

Examiner

David C. Cain

Group Art Unit 2202

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)
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AMENDIVIENT IN RESPONSE TO JUNE 24 1994 OFFICE ACTION

Hon. Commissioner
of Patents and Tradem:uks
Washing lon, D.C. 20211
Dear Sir:
rn response to the June 24, 1994 Otlice Actioll, please amend the above-capLioned
palent application as li.111ows:
IN THE CLAIMS:

Please cancel Claims

2~~nd 27-29

without prejudice.

/

[n Claim 13, at line 1,

~se

delete "security routine or".

Please amend Claim 1S as follow5:
18.

(Amended)

The regi

'stem of Claim

17, wherein said

0 one Of/Ii
'/oIGr;h1.ernents 0 fernents WblCh are I at I east
enVironment detal01s comprise r
c lO
o

one element which is generally 119
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UNILOC 0126

UNI000126

Serial No.
Filed

081124,718
September 2i, 1993

Applicant rcspcctfuUy submits that the foregoing remarks arc fully responsive to the
f~;ectiotls raised by the Examiner under 35 U.S.c. § 102 with re~ped to Chml.

Applicant

respectfully requests the Examiner to withdraw the rejection of Claims 1-21,25,26 and 30
lll1der 15 U.S.c. § lO2.
Discussion of Newly Cited Rererence
The Examiner's attention is directed to U.S. 5,291,598 to Grundy submitted herewith
and identified on form P'TO-1449.

requested

The Examiner's con..<;ideration of Grundy is respectfully

Applicant respectfully submits that Claims 1-21, 25, 26 and 30 of the present

application is patentably distinguished over Grundy for the foHowing reasons,
The key to the present invention as claimed in Claim I, for example, is that a "licensee
unique ID" generated by a local licensee unique IU generating [)leans has matched a licensee
unique 10 generated by a remote licensee unique 10 generating means (see the last four lines
of Claim 1 a..'l filed). This matching requirement reflects the fact that the undeTlying algoriduns

which prOCeSS identifYing iniOmwtion illput into both the local

licens~e

uIliqw: ID generating

means flnd the remote licensee unique TD generating means are the same and that both TO
generating means rely upon the same inl<mnation to generate the licensee unique TD. In effect,
no ne1.v information is provided to the remote lic.:ehsee unique lU generating means as
compared with the information supplied to the local licensee unique ID generating means.

Grundy does not disclose or suggest the claimed invCtltiol1. In particular, in Grundy,
a "registration code" derived from informfltioll available on the local computer is inputted to
a remote computer whick in turn,

genc.rat{~s

only the registration code but also a

u~er

an "authorization code" which is a function of not
code.

The user code is allocated by the remole

computer. See, for exampLe. page IS, lines 49 to 58

ofGrund}'~

Fig. 3, box 317, of Grundy

relating to the authorization process; and Claim I of Grundy.
Because additional inti:mnation is added at the remote computer in Grundy, it follows

automatically that a simpLe comparison or match of the registration code derived from Lhe local

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UNILOC 0129

UNI000129

Serial No.
Filed

08/l24,718
September 21, 1993

computer and the authorization code derived from the remote computer is not possible.

In

order for the local computer to deem the authorization code as valid, the local computer is
required to somehuw lake account of the additional information which has been added by the
remote computer. Grundy does not describe precisely how this is achieved, but it is clear that
the validity of the authorization code of Grundy cannot be determined as a simple match of the
regi~tration

code with the authorization code.

Accordingly, Claim I of the present application which requires a match of the local
license unique III with the remote licensee unique iD is palentahly distinguished over the
fundamentally more complex: process outlined in Grundy.
For similar reasons, Claims 1-12, which depend from Claim 1, and Claims 13-21,25,
26 and 30 are patentably distinguished over Grundy.

Summaor
Having amended the claims in response Lo the rejections under 35 U.S.CO § 112, and
having submitted the J{)reguing Drguments in support of the patentability of the claims,

Applicant respectfully submits that Claims 1-21, 25, 26 and 30 are now in condition for

allowance, and Applicant respectfully requests allowance of Claims 1-21, 25, 26 and 30.
Respectfully submitter.!,

KI'OBRE, MARTENS, OLSON & !lEAR

Vated

DIF~&t- L{I

19'11-

)
By: ~#3~~--L~~UL9;;;~

y T, Sc 'ell
gistration No. 31,567
~ttorne:y of Record

620 Newport Center Drive
Si1<.teenth Floor
Newport Oeach, CA 92660
(7l4) 760-0404
JTS·8BB7
941219/1

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UNILOC 0130

UNI000130