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Case 3:17-cv-05659-WHA Document 182-12 Filed 08/20/18 Page 1 of 8
`Case 3:17-cv-05659-WHA Document 182-12 Filed 08/20/18 Page 1 of 8
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`EXHIBIT 11
`EXHIBIT 11
`
`
`
`
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`•
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`'
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`~ro 8
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`..
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`Case 3:17-cv-05659-WHA Document 182-12 Filed 08/20/18 Page 2 of 8
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`O \ P 1$ ,
`·~v~-----------------------------------------------------------------
`"'~~ \ \ lt}~Q -l
`CERTIFICATE OF MAILING
`~~~JJ~aper (along with any paper referred to as being attached or enclosed) is being deposited with the United
`~~ 7R ~~tates Postal Service on the date shown below with sufficient postage as first class inail in an enveloped addressed to the Assistant
`AO
`Commissioner for Patents, Washington, D.C. on
`
`sf oloo
`
`. o· k
`y: anon
`8 M
`
`"-I~A.
`"" '"' · 'n
`IC _ _ l_!_!t.:...!..,;.........__:...;;.;,:;,..._.=;__...:::V:..;_v=.,:=L'----
`
`Serial No.: 08/995,648
`
`Examiner:
`
`C. Revak
`
`Filed: December 22, 1997
`
`For:
`
`System and Method for Attaching a
`Downloadable Security Profile to a
`Downloadable
`
`Assistant Commissioner for Patents
`Washington, D.C. 20231
`
`Art Unit:
`
`2785
`
`RECEIVED
`IMAY11a1 8 2000
`GROUP 2700
`
`Sir:
`
`AMENDMENT AND RESPONSE
`
`In response to the office action mailed on February 8, 2000, the three-month
`
`shortened statutory period for response ending on May 8, 2000, please amend the
`
`application as follows:
`
`IN THE SPEC!FICATION:
`
`On page 2 line 8, after "number" please inrert=08/964,388--.
`/
`On page 11 line 6, after "number" please inse~8/964,388--.
`On page 12 line 15, after"nurilber" please ins~8/964,388--.
`
`On page 18 line 12, after "number" please insert --08/964,388--.
`
`131/202631.01
`050200/1223/40492.00005
`
`

`

`Case 3:17-cv-05659-WHA Document 182-12 Filed 08/20/18 Page 3 of 8
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`•
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`•
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`c IN THE CLAIMS:
`
`1.
`
`(Twice amended) A method comprising [the steps of]:
`receiving by an inspector a Downloadable;
`generating by the inspector a first Downloadable security profile that identifies
`
`suspicious code in the received Downloadable; and
`
`linking by the inspector the first Downloadable security profile to the
`
`Downloadable before a web server makes the Downloadable available to web clients.
`
`11.
`
`(Once amended) The method of claim 1, wherein the first Downloadable security
`
`profile includes a list of operations deemed suspicious by [an] the inspector.
`
`15.
`
`(Twice amended) An inspector system comprising:
`
`memory storing a first rule set; and
`
`a first content inspection engine for using the first rule set to generate a first
`
`Downloadable security profile that identifies suspicious code in a Downloadable, and for
`
`linking the first Downloadable security profile to the Downloadable before a web server
`
`makes the Downloadable available to web clients.
`
`(Twice amended) A method performed by a network gateway com
`
`steps of]:
`
`receiving a Downloadable with a linked Downloadable
`
`identifies suspicious code in the Downloadable; and
`
`comparing the Downloadable security profi
`
`23.
`
`(Twice amended) A method ll§:~~d.l!Ullill}Y.Q~~~lY
`
`steps of]:
`
`receiving a Download
`
`e with a linked first Downloadable security profile that
`
`identifies suspicious cod n the Downloadable;
`
`hether to trust the first Downloadable security profile; and
`
`comp
`
`· g the first Downloadable security profile against the security policy if
`
`wnloadable security profile is trustworthy.
`
`131/202631.01
`050200/1223/40492.00005
`
`2
`
`

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`Case 3:17-cv-05659-WHA Document 182-12 Filed 08/20/18 Page 4 of 8
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`•
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`•
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`(Twice amended) A network gateway system compri · g:
`a Downloadable interceptor for receiving a Do
`
`a file reader coupled to the interceptor
`
`determining whether the Downloadable
`
`includes a Downloadable security pro
`
`Downloadable;
`
`that identifies suspicious code in the
`'
`
`he file reader for determining whether to trust the
`
`licy analysis engine coupled to the verification engine for comparing
`
`le security profile against a security policy if the engine determines that
`
`adable security profile is trustworthy.
`-L-------------~~---------------------------------------------------------------~--------
`
`41.
`
`(Twice amended) A computer-readable storage medium storing program code for
`
`causing a data processing system on an inspector to perform the steps of:
`
`receiving a Downloadable;
`
`generating a first Downloadable security profile that identifies suspicious code in
`
`the received Downloadable; and
`
`linking the first Downloadable security profile to the Downloadable before a web
`
`server makes the Downloadable available to web clients.
`
`(Twice amended) A computer-readable storage medium storing
`
`causing a data processing system on a network gateway to perfo
`
`e steps of:
`
`receiving a Downloadable with a linked first Dow
`
`adable security profile that
`
`identifies suspicious code in the Downloadable;
`
`the first Downloadable sec
`
`· y profile is trustworthy.
`
`able security profile against the security policy if
`
`131/202631.01
`050200/1223/40492.00005
`
`l
`
`3
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`

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`Case 3:17-cv-05659-WHA Document 182-12 Filed 08/20/18 Page 5 of 8
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`•
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`•
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`43.
`
`(Twice amended) An inspector system comprising:
`
`means for receiving a Downloadable;
`
`means for generating a first Downloadable security profile that identifies
`
`suspicious code in the received Downloadable; and
`
`means for linking the first Downloadable security profile to the Downloadable
`
`before a web server makes the Downloadable available to web clients.
`
`4.
`
`(Twice amended) A network gateway system c
`
`means for receiving a Downloadable with mked first Downloadable security
`
`profile that identifies suspicious code in the
`
`trust the first Downloadable security profile;
`
`and
`
`e first Downloadable security profile against the security
`
`adable security profile is trustworthy.
`
`131 /202631.0 I
`050200/1223/40492.00005
`~
`
`4
`
`

`

`Case 3:17-cv-05659-WHA Document 182-12 Filed 08/20/18 Page 6 of 8
`
`••
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`•
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`REMARKS
`
`Claims 1-44 were examined and rejected in this case. Claims 1, 11, 15, 22, 23, 32
`
`and 41-44 are being amended. Claims 1-44 are still pending. Reconsideration of the
`
`application as amended is respectfully requested.
`
`Applicant requests the Examiner to enter the above amendments to the
`
`Specification. No new matter is being added.
`
`Before discussing the rejections ofthe claims, a briefrev.iew of an embodiment of
`
`Applicant's invention is helpful. A system includes an inspector for generating and
`
`link~ng a Downloadable security profile to a Downloadable before a web server makes
`
`the Downloadable available to web clients. The system also includes a network gateway
`
`which examines the Downloadable security profile for security policy violations if the
`
`Downloadable security profile is deemed trustworthy.
`
`In paragraphs 3 and 4, the Examiner rejected claims 1-3, 11, 15-17,22,23, 32 and
`
`41-44 under 35 USC§ 102(e) as anticipated by Ji. Ji teaches a method performed on a
`
`network gateway of examining application programs for lines of code that the client
`
`computer should monitor for security policy violations. Independent claims 1, 15, 41 and
`
`43 as amended similarly recite generating and linking a Downloadable security profile to
`
`a Downloadable before a web server makes the Downloadable available to web clients.
`
`Independent claims 22, 23, 32, 42 and 44 as amended similarly recite comparing a
`..__
`Downloadable security profile linked to the Downloadable against a security policy, if
`
`-- --- ~ - -
`
`the Downloadable security profile is deemed trustworthy.
`
`,li does not teach generating
`
`the Downloadable security profile or linking the Downloadable security profile to a
`
`Downloadable before the web server makes the Downloadable security profile available
`
`to web clients. Further, ,li does not teach examining an already linked Downloadable
`
`security profile by network gateways, if the profile is deemed trustworthy. In ,li's system,
`
`the burden of examining a Downloadable for the suspicious code is always on the
`
`network gateway, and must be done every time. In Applicant's system, some of the
`
`burden may be transferred to the inspector, and generation of the Downloadable security
`
`profile may be performed only once. Applicant therefore requests the Examiner to
`
`1311202631.01
`050200/1223/40492.00005
`
`5
`
`

`

`Case 3:17-cv-05659-WHA Document 182-12 Filed 08/20/18 Page 7 of 8
`
`•
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`'
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`,.
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`••
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`withdraw the rejection of independent claims 1, 15, 22, 23,32 and 41-44, and of claims 2,
`
`3, 11, 16 and 17 dependent therefrom.
`
`In paragraphs 5 and 6, the Examiner rejected claims 5-8, 12, 19, 27 and 36 under
`35 USC§ 103(a) as unpatentable over li. Since claims 5-8, 12, 19, 27 and 36 depend
`from the independent claims above, Applicant submits that these claims are patentable
`
`for at least the same reasons.
`
`In paragraph 7, the Examiner rejected claims 4, 9, 10, 13, 14, 18, 20, 21,24-26,
`28-31,33-35 and 37-40 as unpatentable over li in view of Atkinson. The Examiner.
`indicates that Ji does not teach examination of a digital signature to assure the integrity of
`
`the Downloadable, or the attachment of a certificate and a Downloadable ID with the
`
`Downloadable. The Examiner then asserts that Atkinson teaches sending an attached
`
`certificate that is included in the digital signature with the downloadable. However,
`
`Atkinson does not teach generating the Downlo<1;dable security profile or linking the
`
`Downloadable security profile to a Downloadable before the web server makes the
`
`Downloadable security profile available to web clients. Further, Atkinson does not teach
`
`examining an already linked Downloadable security profile by network gateways, if the
`
`profile is deemed trustworthy. Accordingly, Applicant submits that, for at least the
`
`reasons described above with reference to the independent claims, claims 4, 9, 10, 13, 14,
`
`18, 20, 21, 24-26, 28-31, 33-35 and 37-40 dependent therefrom are also patentable over
`
`the art of record. Applicant therefore requests the rejection be withdrawn.
`
`If the Examiner has any questions or needs any additional information, the
`
`Examiner is invited to telephone the undersigned attorney at (650) 843-3392.
`
`If for any reason an insufficient fee has been paid, the Assistant Commissioner is
`
`hereby authorized to charge the insufficiency to Deposit Account No. 05-0150.
`
`Respectfully Submitted,
`Touboul et al.
`
`Marc A. Sockol
`Attorney for Applicants
`Reg. No. 40,823
`
`Graham & James LLP
`600 Hansen Way
`Palo Alto, CA 94304-1043
`650-856-6500
`
`131/202631.0 I
`050200/1224/40492.00005
`
`6
`
`

`

`\.
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`Gpcr
`Case 3:17-cv-05659-WHA Document 182-12 Filed 08/20/18 Page 8 of 8
`
`• 61--l - u<J •
`
`AMENDMENT TRANSMITTAL LETTER (Small Entity)
`Applicant(s): Shlomo Touboul et al.
`
`Serial No.
`08/995,648
`
`Filing Date
`December 22, 1997
`
`Examiner
`·Revak, C.
`
`Docket No.
`40492.00005
`
`Group Art Unit ·
`. 2785
`~
`
`~ • Cb
`.:5'
`
`J4. .
`
`Invention: svy!(!@M ;:;~OD FOR ATIACHING A DOWNWADABLE SECURITY PRO~O A
`. # " ~
`DOWNLOADA,~LJMAY 1 6 2000 ~
`n'S
`\:g..
`#:§
`""
`~~4111'iAn~~<l~~~ TI::!E 8~~1SI8~T QOMMI~~IQNER FQB E8TENTS:
`~ rP
`
`(!j
`Transmitted herewith is an amendment in the above-identified application.
`181 Small Entity status of this application has been established under 37 CFR 1.27 by a verified statement
`previously submitted.
`0 A verified statement to establish Small Entity status under 37 FR 1.27 is enclosed.
`The fee has been calculated and is transmitted as shown below.
`
`CLAIMS REMAINING
`
`HIGHEST#
`
`NUMBER EXTRA
`
`CLAIMS AS AMENDED
`
`TOTAL CLAIMS
`
`INDEP. CLAIMS
`
`9
`
`AFTER AMENDMENT
`-
`44
`-
`Multiple Dependent Claims {check if applicable)
`
`PREV. PAID FOR
`=
`44
`
`3
`
`=
`
`0
`
`CLAIMS PRESENT
`
`RATE
`
`0 X·
`
`$9.00
`
`6 X
`
`$39.00
`
`TOTAL ADDITIONAL FEE FOR THIS AMENDMENT
`
`ADDITIONAL
`
`FEE
`
`$0.00
`
`$234.00
`
`$0.00
`
`$234.00
`
`181 No additional fee is required for amendment.
`0 Please charge Deposit Account No.
`A duplicate copy of this sheet is enclosed.
`0 A check in the amount of
`to cover the filing fee is enclosed.
`181 The Commissioner is hereby authorized to charge payment of the following fees associated with this
`communication or credit any overpayment to Deposit Account No. 05-0150
`A duplicate copy of this sheet is enclosed.
`181 Any additional filing fees required under 37 C.F.R. 1.16.
`
`in the amount of
`
`tt.:y Jfe~sing fees under 37 CFR 1.17.
`
`~.
`
`Dated: May 3, 2000
`
`Signature
`Marc A. Sockol, Reg. No. 40,823
`Attorney for Applicants
`Graham & James LLP
`600 Hansen Way
`Palo Alto, CA 94304-1043
`Tel: (650) 856-6500
`Fax: (650) 856-3619
`
`cc:
`
`I certify thr this document and fee is being deposited
`,5 a/o.o
`
`with the U.S. Postal Service as
`on
`first class mail under 37 C.F.R. 1.8 and is addressed to the
`Assistant Commissioner for Patents, Washington, D.C.
`20231.
`
`Y"'- CM..... "o...... ~~·o_
`Signature of Person Mailing Correspondence
`
`Marion Dick
`Typed or Printed Name of Person Mailing Correspondence
`
`P11 SMALUREV06
`
`

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