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`FIN0001CON 1CIP1CON 1
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`PATENT
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Examiner: Christopher A. Revak
`
`Art Unit:
`
`2431
`
`In Re Patent Application of:
`
`Yigal Mordechai Edery
`Nimrod Itzhak Vered
`David R. Kroll
`
`Application No: 11/159,455
`
`Filed:
`
`June 22, 2005
`
`For:
`
`MALICIOUS MOBILE CODE
`RUNTIME MONITORING
`SYSTEM AND METHODS
`
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`_______________
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`FILED ELECTRONICALLY
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`Mail Stop AMENDMENT
`Commissioner for Patents
`P. 0. Box 1450
`Alexandria, VA 22313-1450
`
`AMENDMENT AND RESPONSE TO OFFICE ACTION
`
`UNDER 37 C.F.R. §1.111
`
`Sir:
`
`In response to the Office Action dated February 25, 2009,
`
`applicants respectfully request that the above-identified application be
`
`amended as follows:
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`WDC_IMAJ\AGE-1180898 vl-lSl 57.105012
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`Page 1 of 21
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`Case 3:17-cv-05659-WHA Document 182-10 Filed 08/20/18 Page 2 of 21
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`FIN0001CON 1CIP1CON 1
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`PATENT
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`IN THE SPECIFICATION
`
`Please replace the first paragraph on page 2
`
`with the following:
`
`This application is a continuation of and incorporates
`
`by reference patent application serial number 09/861,229, now U.S.
`
`patent number 7,058,822, which claims benefit of reference provisional
`
`application serial number 60/205,591 entitled "Computer Network
`
`Malicious Code Runtime Monitoring," filed on May 17, 2000 by inventors
`
`Nimrod Itzhak Vered, et al.
`
`This application also incorporates by
`
`reference the provisional application serial number 60/205,591. This
`
`application is also a Continuation-In-Part of and hereby incorporates by
`
`reference patent application serial number 09/539,667, now U.S. Patent
`
`No. 6,804,780, entitled "System and Method for Protecting a Computer
`
`and a Network from Hostile Downloadables" filed on March 30, 2000 by
`
`inventor Shlomo Touboul. This application is also a Continuation-In
`
`Part of and hereby incorporates by reference patent application serial
`
`number 09/551,302, now U.S. Patent No. 6,480,962, entitled "System
`
`and Method for Protecting a Client During Runtime From Hostile
`
`Downloadables", filed on April 18, 2000 by inventor Shlomo Touboul.
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`WDC_IMAJ\AGE-1180898 vl-lSl 57.105012
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`Page 2 of 21
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`FIN0001CON 1CIP1CON 1
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`PATENT
`
`IN THE CLAIMS
`
`Please cancel claims 29, 60 and 76 without prejudice.
`
`Please substitute the following claims for the pending
`
`claims with the same number:
`
`1. ( currently amended)
`
`A
`
`computer
`
`processor-based method,
`
`comprising:
`
`receiving, by a computer, downloadable-information;
`
`determininq, by the computer, whether the downloadable
`
`information includes executable code; and
`
`based upon the determination, transmitting from the
`
`computer causing mobile protection code to be communicated to at least one
`
`information-destination
`
`of
`
`the
`
`downloadable-information,
`
`if
`
`the
`
`downloadable-information is determined to include executable code.
`
`2. (previously presented)
`
`The method of claim 1, wherein the receiving
`
`includes monitoring received information of an information re-communicator.
`
`3. (previously presented)
`
`The method of claim 2, wherein the information
`
`re-communicator is a network server.
`
`4. (previously presented)
`
`The method of
`
`claim 1, wherein
`
`the
`
`determining comprises analyzing the downloadable-information for an
`
`included type indicator indicating an executable file type.
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`WDC_IMAJ\AGE-1180898 vl-lSl 57.105012
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`Page 3 of 21
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`Case 3:17-cv-05659-WHA Document 182-10 Filed 08/20/18 Page 4 of 21
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`FIN0001CON 1CIP1CON 1
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`PATENT
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`5. (previously presented)
`
`The method of
`
`claim 1, wherein
`
`the
`
`determining comprises analyzing the downloadable-information for an
`
`included type detector indicating an archive file that contains at least one
`
`executable.
`
`6. (previously presented)
`
`The method of
`
`claim 1, wherein
`
`the
`
`determining comprises analyzing the downloadable-information for an
`
`included file type indicator and an information pattern corresponding to one
`
`or more information patterns that tend to be included within executable
`
`code.
`
`7. (currently amended)
`
`The method of claim 1, further comprising
`
`receiving, by the computer, one or more executable code characteristics of
`
`executable code that is capable of being executed by the information
`
`destination, and wherein the determining is conducted in accordance with the
`
`executable code characteristics.
`
`8. - 15. (canceled)
`
`16. (currently amended)
`
`A
`
`computer processor-based
`
`system
`
`for
`
`computer security, the system comprising
`
`an
`
`information monitor
`
`for
`
`receiving downloadable
`
`information by a computer;
`
`a content inspection engine communicatively coupled to the
`
`information monitor for determining, by the computer, whether the
`
`downloadable-information includes executable code; and
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`WDC_IMAJ\AGE-1180898 vl-lSl 57.105012
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`Page 4 of 21
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`Case 3:17-cv-05659-WHA Document 182-10 Filed 08/20/18 Page 5 of 21
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`FIN0001CON 1CIP1CON 1
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`PATENT
`
`a protection agent engine communicatively coupled to the
`
`content inspection engine for causing mobile protection code ("MPC") to be
`
`communicated by the computer to at least one information-destination of the
`
`downloadable-information, if the downloadable-information is determined to
`
`include executable code.
`
`17. (previously presented) The
`
`system of claim 16, wherein
`
`the
`
`information monitor
`
`intercepts received
`
`information
`
`received by an
`
`information re-communicator.
`
`18. (previously presented) The
`
`system of claim 17, wherein
`
`the
`
`information re-communicator is a network server.
`
`19. (previously presented) The system of claim 16, wherein the content
`
`inspection engine comprises a file type detector for determining whether the
`
`downloadable-information
`
`includes a
`
`file
`
`type
`
`indicator
`
`indicating an
`
`executable file type.
`
`20. (previously presented) The system of claim 16, wherein the content
`
`inspection engine comprises a parser for parsing the downloadable
`
`information and a content analyzer communicatively coupled to the parser
`
`for determining whether one or more downloadable-information elements of
`
`the downloadable-information correspond with executable code elements.
`
`21. - 27. (canceled)
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`WDC_IMAJ\AGE-1180898 vl-lSl 57.105012
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`Page 5 of 21
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`Case 3:17-cv-05659-WHA Document 182-10 Filed 08/20/18 Page 6 of 21
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`FIN0001CON 1CIP1CON 1
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`PATENT
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`28. (currently amended)
`
`A processor-based
`
`system
`
`for
`
`computer
`
`security, the system comprising:
`
`means for receiving downloadable-information;
`
`means
`
`for determining whether
`
`the downloadable
`
`information includes executable code; and
`
`means
`
`for causing mobile protection code
`
`to be
`
`communicated to at least one information-destination of the downloadable
`
`information,
`
`if the downloadable-information
`
`is determined to
`
`include
`
`executable code.
`
`29. (canceled)
`
`30. (currently amended)
`
`A computer program product, comprising a
`
`computer usable medium having a computer readable program code therein,
`
`the computer readable program code adapted to be executed for computer
`
`security, the processor based method, comprising:
`
`providing a system, wherein the system comprises distinct
`
`software modules, and wherein the distinct software modules comprise an
`
`information re-communicator and a mobile code executor:
`
`receiving, at a-A
`
`the
`
`information
`
`re-communicator,
`
`downloadable-information including executable code; and
`
`causing mobile protection code to be executed by [[a]] the
`
`mobile code executor at a downloadable-information destination such that
`
`one or more operations of the executable code at the destination,
`
`if
`
`attempted, will be processed by the mobile protection code.
`
`WDC_IMAJ\AGE-1180898 vl-lSl 57.105012
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`Page 6 of 21
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`Case 3:17-cv-05659-WHA Document 182-10 Filed 08/20/18 Page 7 of 21
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`FIN0001CON1CIP1CON1
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`PATENT
`
`31. (previously presented) The method of claim 30, wherein the mobile
`
`code executor is a Java Virtual Machine.
`
`32. (previously presented) The method of claim 30, wherein the mobile
`
`code executor is the operating system, running native code executables.
`
`33. (previously presented) The method of claim 30, wherein the mobile
`
`code executor is a subsystem of the operating system.
`
`34. (previously presented) The method of claim 30, wherein the mobile
`
`code executor is a scripting host.
`
`35. - 43. (canceled)
`
`43. (previously presented) The method of claim 30, wherein the re
`
`communicator is at least one of a firewall and a network server.
`
`44. - 45. (canceled)
`
`46. (previously presented) The method claim 30, wherein executing the
`
`mobile protection code at the destination causes downloadable interfaces to
`
`resources at the destination to be modified such that at least one attempted
`
`operation of the executable code is diverted to the mobile protection code.
`
`47. (currently amended)
`
`A
`
`processor-based
`
`system
`
`for computer
`
`security, the system comprising :
`
`WDC_IMAJ\AGE-1180898 vl-lSl 57.105012
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`Page 7 of 21
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`
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`Case 3:17-cv-05659-WHA Document 182-10 Filed 08/20/18 Page 8 of 21
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`FIN0001CON 1CIP1CON 1
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`PATENT
`
`receiving means for receiving, at an
`
`information re
`
`communicator
`
`of a
`
`computer, downloadable-information,
`
`including
`
`executable code; and
`
`mobile code means communicatively coupled to the
`
`receiving means for causing. by the computer. mobile protection code to be
`
`executed by a mobile code executor at a downloadable-information
`
`destination such that one or more operations of the executable code at the
`
`destination, if attempted, will be processed by the mobile protection code.
`
`48. (previously presented) The system of claim 47, wherein the mobile
`
`code executor is a Java Virtual Machine.
`
`49. (previously presented) The system of claim 47, wherein the mobile
`
`code executor is an operating system, running native code executables.
`
`SO. (previously presented) The system of claim 47, wherein the mobile
`
`code executor is a subsystem of the windows operating system.
`
`51. (previously presented) The system of claim 47, wherein the mobile
`
`code executor is a scripting host.
`
`52. - 57. (canceled)
`
`58. (previously presented) The system of claim 47, wherein the re
`
`communicator is at least one of a firewall and a network server.
`
`WDC_IMAJ\AGE-1180898 vl-lSl 57.105012
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`Page 8 of 21
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`Case 3:17-cv-05659-WHA Document 182-10 Filed 08/20/18 Page 9 of 21
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`FIN0001CON 1CIP1CON 1
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`PATENT
`
`59. (previously presented) The system of claim 47, wherein executing the
`
`mobile protection code at the destination causes downloadable interfaces to
`
`resources at the destination to be modified such that at least one attempted
`
`operation of the executable code is diverted to the mobile protection code.
`
`60. (canceled)
`
`61. (currently amended)
`
`A processor-based method, comprising:
`
`receiving a sandboxed package that
`
`includes mobile
`
`protection code ("MPC") and a Downloadable and one or more protection
`
`policies at a computer at a Downloadable-destination;
`
`causing, by the MPC on the computer, one or more
`
`operations attempted by the Downloadable to be received by the MPC;
`
`receiving, by the M PC on the computer, an attempted
`
`operation of the Downloadable; and
`
`initiating, by the MPC on the computer, a protection policy
`
`corresponding to the attempted operation.
`
`62. (canceled)
`
`63. (previously presented) The method of
`
`claim 61, wherein
`
`the
`
`sandboxed package is configured such that the MPC is executed first, the
`
`Downloadable is executed by the MPC and the protection policies are
`
`accessible to the MPC.
`
`WDC_IMAJ\AGE-1180898 vl-lSl 57.105012
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`Page 9 of 21
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`Case 3:17-cv-05659-WHA Document 182-10 Filed 08/20/18 Page 10 of 21
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`FIN0001CON 1CIP1CON 1
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`PATENT
`
`64. (previously presented) The method of claim 61, wherein the causing
`
`comprises modifying, by
`
`the MPC,
`
`interfaces of a corresponding
`
`downloadable to resources at the destination.
`
`65. (previously presented) The method of claim 64, wherein the modifying
`
`is accomplished by initiating a loading of the Downloadable, thereby causing
`
`a mobile code executor to provide and initialize the interfaces, modifying one
`
`or more interface elements to divert corresponding attempted Downloadable
`
`operations to the MPC, and initiating execution of the Downloadable.
`
`66. (previously presented) The method of claim 64, wherein the interfaces
`
`comprise an
`
`import address table ("IAT") of a native code executable
`
`downloadable.
`
`67. (previously presented) The method of claim 64, wherein modifying the
`
`interfaces
`
`installs a
`
`filter-driver between the downloadable and the
`
`resources.
`
`68. (currently amended)
`
`A processor-based
`
`system
`
`for
`
`computer
`
`security. the system comprising:
`
`a mobile code executor on a computer
`
`for
`
`initiating
`
`received mobile code; and
`
`a sandboxed package capable of being received and
`
`initiated by the mobile code executor on the computer, the sandboxed
`
`package including a Downloadable and mobile protection code ("MPC") for
`
`causing one or more Downloadable operations to be intercepted by the
`
`WDC_IMAJ\AGE-1180898 vl-lSl 57.105012
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`Page 10 of 21
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`Case 3:17-cv-05659-WHA Document 182-10 Filed 08/20/18 Page 11 of 21
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`FIN0001CON 1CIP1CON 1
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`PATENT
`
`computer and for processing the intercepted operations by the computer, if
`
`the Downloadable attempts to initiate the operations.
`
`69. (currently amended)
`
`The system of claim 68, wherein the MPC
`
`comprises:
`
`an MPC installer for causing MPC elements to be installed;
`
`a Downloadable installer communicatively coupled to the
`
`MPC element installer for installing the Downloadable;
`
`a resource access diverter communicatively coupled to the
`
`MPC installer for causing the Downloadable operations to be intercepted;
`
`a resource access analyzer communicatively coupled to the
`
`MPC installer for receiving an intercepted Downloadable operation and
`
`determining a protection policy corresponding
`
`to
`
`the
`
`intercepted
`
`Downloadable operation; and
`
`a policy enforcer communicatively coupled to the resource
`
`access analyzer for processing the intercepted Downloadable operation.
`
`70. (previously presented) The system of claim 69, wherein the resource
`
`access diverter modifies one or more elements of an interface usable by the
`
`Downloadable to effectuate the Downloadable operations.
`
`71. (previously presented) The system of claim 69, wherein the mobile
`
`code-executor is a Java Virtual Machine.
`
`72. (previously presented) The system of claim 69, wherein the mobile
`
`code executor is an operating system, running native code executables.
`
`WDC_IMAJ\AGE-1180898 vl-lSl 57.105012
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`Page 11 of 21
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`Case 3:17-cv-05659-WHA Document 182-10 Filed 08/20/18 Page 12 of 21
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`FIN0001CON1CIP1CON1
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`PATENT
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`73. (previously presented) The system of claim 69, wherein the mobile
`
`code executor is a subsystem of the operating system.
`
`74. (previously presented) The system of claim 69, wherein the mobile
`
`code executor is a scripting host.
`
`75. (currently amended)
`
`A processor-based
`
`system
`
`for
`
`computer
`
`security. the system comprising:
`
`receiving means for receiving a sandboxed package that
`
`include includes mobile protection code ("MPC") and a Downloadable and one
`
`or more protection policies at a Downloadable-destination;
`
`monitoring means for causing, by the MPC, one or more
`
`operations attempted by the Downloadable to be received by the MPC;
`
`second receiving means receiving, by
`
`the MPC, an
`
`attempted operation of the Downloadable; and
`
`initiating means for initiating, by the MPC, a protection
`
`policy corresponding to the attempted operation.
`
`76. (canceled)
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`WDC_IMAJ\AGE-1180898 vl-lSl 57.105012
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`Page 12 of 21
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`Case 3:17-cv-05659-WHA Document 182-10 Filed 08/20/18 Page 13 of 21
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`FIN0001CON 1CIP1CON 1
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`PATENT
`
`REMARKS
`
`Applicants have carefully studied the outstanding Office
`
`Action. The present amendment is intended to place the application in
`
`condition for allowance and is believed to overcome all of the objections and
`
`rejections made by the Examiner. Favorable reconsideration and allowance
`
`of the application are respectfully requested.
`
`The undersigned representative reminds the Examiner that
`
`a Preliminary Response was filed on June 22, 2005. Those arguments have
`
`not been considered and have been incorporated herein.
`
`Applicants have canceled claims 29, 60 and 76, and have
`
`amended claims 1 - 7, 16, 28, 20, 47, 61, 68, 69 and 75 to more properly
`
`claim the present invention. No new matter has been introduced. Claims 1
`
`- 7, 16 - 20, 28, 30 - 34, 43, 46 - 51, 58, 59, 61 and 63 - 75 are
`
`presented for examination.
`
`In Paragraph 1 of the Office Action, the Examiner has
`
`objected to the specification because an informality. Applicants have
`
`amended the specification accordingly.
`
`In Paragraphs 2 and 3 of the Office Action, the Examiner
`
`has rejected claims 1 - 7, 16 - 20, 28 - 34, 43, 46 - 51, 58 - 61 and 63
`
`- 76 on the ground of non-statutory obviousness-type double patenting as
`
`being unpatentable over claims 1 - 35 of U.S. Patent No. 7,058,822.
`
`Although the Examiner also listed 62 under this rejection, that claim was
`
`previously canceled. Applicants are accordingly filing a terminal disclaimer
`
`concurrent with this response.
`
`In Paragraphs 4 and 5 of the Office Action, the Examiner
`
`has rejected claims 1, 2, 4 - 7, 16, 17, 19, 20, 28, 30 - 34, 46 - 51, 59,
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`WDC_IMAJ\AGE-1180898 vl-lSl 57.105012
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`Page 13 of 21
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`Case 3:17-cv-05659-WHA Document 182-10 Filed 08/20/18 Page 14 of 21
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`FIN0001CON 1CIP1CON 1
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`PATENT
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`61 and 63 - 76 under 35 U.S.C. §101 as being directed to non-statutory
`
`matter. Although the Examiner also listed claims 8, 52 - 57 and 62 under
`
`this rejection,
`
`those claims were previously canceled.
`
`Accordingly,
`
`applicants have amended all of the pending claims in view of controlling
`
`case law, including Ex Parte Bo Li, Appeal No. 2008-1213 (BPAI Nov. 6,
`
`2008).
`
`In Paragraphs 6 and 7 of the Office Action, the Examiner
`
`has rejected claims 1 - 7, 16 - 20, 28 - 34, 43, 46 - 51, 58 - 61 and 63
`
`- 76 under 35 U.S.C. §102(e) as being anticipated by Golan, U.S. Patent
`
`No. 5,974,549 ("Golan"). Although the Examiner also listed claim 62 under
`
`this rejection, that claim was previously canceled. Applicants have canceled
`
`claims 29, 60 and 76 without acquiescence to the Examiner's reasons for
`
`rejection, and respectfully submit that rejection of these claims is thus
`
`rendered moot. Therefore only claims 1 - 7, 16 - 20, 28, 30 - 34, 43, 46
`
`- 51, 58, 59, 61 and 63 - 75 remain rejected in these Paragraphs under
`
`35 U.S.C. § 1 02(e).
`
`Distinctions between Claimed Invention and U.S. Patent No.
`
`5,974,549 to Golan
`
`The claimed invention
`
`rovides a
`
`of mobil
`
`rotection code with a downloadable intended for a destination com uter
`
`when the downloadable is deemed sus icious The acka e is structured so
`
`that when it is received at its intended destination com uter the mobile
`
`protection code
`
`is executed prior to executing the downloadable, as
`
`illustrated in elements 340 - 343 of FIGS. 3 and 4 of the present
`
`specification.
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`WDC_IMAJ\AGE-1180898 vl-lSl 57.105012
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`Page 14 of 21
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`FIN0001CON 1CIP1CON 1
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`PATENT
`
`Golan describes a security monitor that creates a sandbox
`
`around an application, such as a web browser, and controls the behavior of
`
`software components, such as ActiveX controls, that are operative in
`
`conjunction with the application. Specifically, Golan re-directs API calls of
`
`the application and the software components to corresponding monitored API
`
`functions (Golan/ FIGS. 10 and 14). Golan also re-directs non-API calls of
`
`the software components, in order to further protect against indirect calls to
`
`API functions (Golan/ FIGS. 11 and 15). Re-direction of API and non-API
`
`calls is performed by modifying function addresses within function import
`
`tables (Golan/ FIG. 4).
`
`In distinction with the claimed invention, Golan does not
`
`describe the packaging of protection code.
`
`Instead, Golan discusses a
`
`situation whereby a security monitor
`
`is already resident on a client
`
`computer, as illustrated in FIGS. 2, 5 and 9 of Golan, without concerning
`
`itself as to how the security monitor was installed. In fact, prima facie the
`
`methodology of the claimed invention, of packaging mobile protection code
`
`with downloadable information, seems wasteful and counter-intuitive, since
`
`such protection code is typically re-transmitted to the client computer many
`
`times - in particular, each time a downloadable with executable code is
`
`downloaded. However, the advantage of this methodology is control over
`
`the ability to customize the mobile protection code and to update it as
`
`necessary, thus obviating the need for a user to be responsible for ensuring
`
`that his security code be appropriate to his computer and up to date.
`
`Response to Examiner's Arguments
`
`In Paragraph 7 of the Office Action, the Examiner, citing
`
`col. 2, lines 12 - 28, col. 3, lines 45 - 58 and col. 4, line 50 - col. 5, line 14
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`WDC_IMAJ\AGE-1180898 vl-lSl 57.105012
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`Page 15 of 21
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`Case 3:17-cv-05659-WHA Document 182-10 Filed 08/20/18 Page 16 of 21
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`FIN0001CON 1CIP1CON 1
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`PATENT
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`of Golan, indicated that Golan discloses " ... causing mobile protection code to
`
`be communicated to one information-destination of the downloadable
`
`information,
`
`if the downloadable-information
`
`is determined to
`
`include
`
`executable code. " Applicants respectfully submit that Golan does not
`
`describe causing mobile protection code, which corresponds to Golan's
`
`security monitor, to be communicated.
`
`The rejections of claims 1 - 7, 16 - 20, 28 - 34, 43, 46
`
`- 51, 58 - 61 and 63 - 76 in pars. 6 and 7 of the Office Action will now be
`
`dealt with specifically.
`
`As to amended
`
`independent claim 1 for a computer
`
`readable storage medium, applicants respectfully submit that the limitation
`
`in claim 1 of
`
`"based upon the determination, transmitting from the
`
`computer mobile protection code to at least one information-destination of
`
`the downloadable-information, if the downloadable-information is determined
`
`to include executable code"
`
`is neither shown nor suggested in Golan, as explained hereinabove.
`
`Because claims 2 - 7 depend from claim 1 and include
`
`additional features, applicants respectfully submit that claims 2 - 7 are not
`
`anticipated or rendered obvious by Golan.
`
`Accordingly claims 1 - 7 are deemed to be allowable.
`
`As to amended independent claim 16 for a computer
`
`readable storage medium, applicants respectfully submit that the limitation
`
`in claim 16 of
`
`"a protection agent engine communicatively coupled to the
`
`content inspection engine for causing mobile protection code ("MPC") to be
`
`communicated by the computer to at least one information-destination of the
`
`WDC_IMAJ\AGE-1180898 vl-lSl 57.105012
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`Page 16 of 21
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`
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`Case 3:17-cv-05659-WHA Document 182-10 Filed 08/20/18 Page 17 of 21
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`FIN0001CON 1CIP1CON 1
`
`PATENT
`
`downloadable-information, if the downloadable-information is determined to
`
`include executable code"; and
`
`is neither shown nor suggested in Golan.
`
`Because claims 17 - 20 depend from claim 16 and include
`
`additional features, applicants respectfully submit that claims 17 - 20 are
`
`not anticipated or rendered obvious by Golan.
`
`Accordingly claims 16 - 20 are deemed to be allowable.
`
`As to amended independent claim 28 for a computer
`
`readable storage medium, applicants respectfully submit that the limitation
`
`in claim 28 of
`
`"means for causing mobile protection code
`
`to be
`
`communicated to at least one information-destination of the downloadable
`
`information,
`
`if the downloadable-information
`
`is determined to
`
`include
`
`executable code"
`
`is neither shown nor suggested in Golan.
`
`Accordingly claim 28 is deemed to be allowable.
`
`As to amended independent claim 30 for a computer
`
`readable storage medium, applicants respectfully submit that the limitation
`
`in claim 30 of
`
`"causing, by the processor of the computer, mobile
`
`protection code to be executed by a mobile code executor at a
`
`downloadable-information destination such that one or more operations of
`
`the executable code at the destination, if attempted, will be processed by the
`
`mobile protection code"
`
`is neither shown nor suggested in Golan.
`
`WDC_IMAJ\AGE-1180898 vl-lSl 57.105012
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`Page 17 of 21
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`
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`Case 3:17-cv-05659-WHA Document 182-10 Filed 08/20/18 Page 18 of 21
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`FIN0001CON 1CIP1CON 1
`
`PATENT
`
`Because claims 31 - 34, 43, and 46 depend from claim 30
`
`and include additional features, applicants respectfully submit that claims 31
`
`- 34, 43 and 46 are not anticipated or rendered obvious by Golan.
`
`Accordingly claims 30 - 34, 43 and 46 are deemed to be
`
`allowable.
`
`As to amended independent claim 47 for a computer
`
`readable storage medium, applicants respectfully submit that the limitation
`
`in claim 47 of
`
`"mobile code means communicatively coupled to the
`
`receiving means for causing, by the computer, mobile protection code to be
`
`executed by a mobile code executor at a downloadable-information
`
`destination such that one or more operations of the executable code at the
`
`destination, if attempted, will be processed by the mobile protection code"
`
`is neither shown nor suggested in Golan.
`
`Because claims 48 - 51, 58 and 59 depend from claim 47
`
`and include additional features, applicants respectfully submit that claims 48
`
`- 51, 58 and 59 are not anticipated or rendered obvious by Golan.
`
`Accordingly claims 47 - 51, 58 and 59 are deemed to be
`
`allowable.
`
`As to amended independent claim 61 for a computer
`
`readable storage medium, applicants respectfully submit that the limitation
`
`in claim 61 of
`
`"receiving a sandboxed package that includes mobile
`
`protection code ("MPC") and a Downloadable and one or more protection
`
`policies at a computer at a Downloadable-destination"
`
`is neither shown nor suggested in Golan. In rejecting claim 62 on page 7 of
`
`the Office Action, the Examiner cited Golan, col. 1, lines 34 - 43; col. 2, lines
`
`WDC_IMAJ\AGE-1180898 vl-lSl 57.105012
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`Page 18 of 21
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`
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`Case 3:17-cv-05659-WHA Document 182-10 Filed 08/20/18 Page 19 of 21
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`FIN0001CON1CIP1CON1
`
`PATENT
`
`12 - 28; and col. 5, lines 60 - 67. Applicants respectfully submit that,
`
`although Golan does describe a sandbox, the limitation of a sandboxed
`
`package that includes mobile protection code and a Downloadable and one or
`
`more protection policies does not appear at the locations cited.
`
`Because claims 63 - 67 depend from claim 61 and include
`
`additional features, applicants respectfully submit that claims 63 - 67 are
`
`not anticipated or rendered obvious by Golan.
`
`Accordingly claims 6 1 and 63 - 67 are deemed to be
`
`allowable.
`
`As to amended independent claim 68 for a computer
`
`readable storage medium, applicants respectfully submit that the limitation
`
`in claim 68 of
`
`"a sandboxed package capable of being received and
`
`initiated by the mobile code executor on the computer, the sandboxed
`
`package including a Downloadable and mobile protection code ("MPC") for
`
`causing one or more Downloadable operations to be intercepted by the
`
`computer and for processing the intercepted operations by the computer, if
`
`the Downloadable attempts to initiate the operations"
`
`is neither shown nor suggested in Golan.
`
`In rejecting claim 68, the
`
`Examiner cited Golan, col. 1, lines 34 - 43; col. 2, lines 12 - 28; col. 3, lines
`
`45 - 58; col. 4, line 50 through col. 5, line 14; and col. 5, lines 60 - 67.
`
`Applicants respectfully submit that, although Golan does describe a sandbox,
`
`the limitation of a sandboxed package including a Downloadable and mobile
`
`protection code does not appear at the locations cited.
`
`Because claims 69 - 74 depend from claim 68 and include
`
`additional features, applicants respectfully submit that claims 69 - 74 are
`
`not anticipated or rendered obvious by Golan.
`
`WDC_IMAJ\AGE-1180898 vl-lSl 57.105012
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`Page 19 of 21
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`
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`Case 3:17-cv-05659-WHA Document 182-10 Filed 08/20/18 Page 20 of 21
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`FIN0001CON 1CIP1CON 1
`
`PATENT
`
`Accordingly claims 68 - 74 are deemed to be allowable.
`
`As to independent system claim 75, applicants respectfully
`
`submit that the limitation in claim 75 of
`
`"receiving means for receiving a sandboxed package that
`
`include mobile protection code ("MPC") and a Downloadable and one or more
`
`protection policies at a Downloadable-destination"
`
`is neither shown nor suggested in Golan.
`
`Accordingly claim 75 is deemed to be allowable.
`
`WDC_IMAJ\AGE-1180898 vl-lSl 57.105012
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`Page 20 of 21
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`
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`Case 3:17-cv-05659-WHA Document 182-10 Filed 08/20/18 Page 21 of 21
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`FIN0001CON 1CIP1CON 1
`
`PATENT
`
`CONCLUSION
`
`The undersigned
`
`representative
`
`respectfully submits
`
`that
`
`this
`
`application is in condition for allowance, and such disposition is earnestly
`
`solicited. If the Examiner believes that the prosecution might be advanced
`
`by discussing the application with the undersigned representative, in person
`
`or over the telephone, we welcome the opportunity to do so. In addition, if
`
`any additional fees are required in connection with the filing of this response,
`
`the Commissioner is hereby authorized to charge the same to Deposit
`
`Account 50-4402.
`
`Respectfully submitted,
`
`Date: May 26, 2009
`
`KING & SPALDING LLP
`1700 Pennsylvania Ave., NW, Suite 200
`Washington, DC 20006
`( 202) 626-8980
`
`By: /Eric Sophir, Reg. No. 48,499/
`Eric L. Sophir
`Registration No. 48,499
`
`WDC_IMAJ\AGE-1180898 vl-lSl 57.105012
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`Page 21 of 21
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`