`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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`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
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`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
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`sf oloo
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`IC _ _ l_!_!t.:...!..,;.........__:...;;.;,:;,..._.=;__...:::V:..;_v=.,:=L'----
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`Serial No.: 08/995,648
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`Examiner:
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`C. Revak
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`Filed: December 22, 1997
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`For:
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`System and Method for Attaching a
`Downloadable Security Profile to a
`Downloadable
`
`Assistant Commissioner for Patents
`Washington, D.C. 20231
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`Art Unit:
`
`2785
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`RECEIVED
`IMAY11a1 8 2000
`GROUP 2700
`
`Sir:
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`AMENDMENT AND RESPONSE
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`In response to the office action mailed on February 8, 2000, the three-month
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`shortened statutory period for response ending on May 8, 2000, please amend the
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`application as follows:
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`IN THE SPEC!FICATION:
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`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--.
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`On page 18 line 12, after "number" please insert --08/964,388--.
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`131/202631.01
`050200/1223/40492.00005
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`Case 3:17-cv-05659-WHA Document 182-12 Filed 08/20/18 Page 3 of 8
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`c IN THE CLAIMS:
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`1.
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`(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
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`suspicious code in the received Downloadable; and
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`linking by the inspector the first Downloadable security profile to the
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`Downloadable before a web server makes the Downloadable available to web clients.
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`11.
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`(Once amended) The method of claim 1, wherein the first Downloadable security
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`profile includes a list of operations deemed suspicious by [an] the inspector.
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`15.
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`(Twice amended) An inspector system comprising:
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`memory storing a first rule set; and
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`a first content inspection engine for using the first rule set to generate a first
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`Downloadable security profile that identifies suspicious code in a Downloadable, and for
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`linking the first Downloadable security profile to the Downloadable before a web server
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`makes the Downloadable available to web clients.
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`(Twice amended) A method performed by a network gateway com
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`steps of]:
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`receiving a Downloadable with a linked Downloadable
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`identifies suspicious code in the Downloadable; and
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`comparing the Downloadable security profi
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`23.
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`(Twice amended) A method ll§:~~d.l!Ullill}Y.Q~~~lY
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`steps of]:
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`receiving a Download
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`e with a linked first Downloadable security profile that
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`identifies suspicious cod n the Downloadable;
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`hether to trust the first Downloadable security profile; and
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`comp
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`· g the first Downloadable security profile against the security policy if
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`wnloadable security profile is trustworthy.
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`131/202631.01
`050200/1223/40492.00005
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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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`(Twice amended) A network gateway system compri · g:
`a Downloadable interceptor for receiving a Do
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`a file reader coupled to the interceptor
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`determining whether the Downloadable
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`includes a Downloadable security pro
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`Downloadable;
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`that identifies suspicious code in the
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`he file reader for determining whether to trust the
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`licy analysis engine coupled to the verification engine for comparing
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`le security profile against a security policy if the engine determines that
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`adable security profile is trustworthy.
`-L-------------~~---------------------------------------------------------------~--------
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`41.
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`(Twice amended) A computer-readable storage medium storing program code for
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`causing a data processing system on an inspector to perform the steps of:
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`receiving a Downloadable;
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`generating a first Downloadable security profile that identifies suspicious code in
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`the received Downloadable; and
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`linking the first Downloadable security profile to the Downloadable before a web
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`server makes the Downloadable available to web clients.
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`(Twice amended) A computer-readable storage medium storing
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`causing a data processing system on a network gateway to perfo
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`e steps of:
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`receiving a Downloadable with a linked first Dow
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`adable security profile that
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`identifies suspicious code in the Downloadable;
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`the first Downloadable sec
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`· y profile is trustworthy.
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`able security profile against the security policy if
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`131/202631.01
`050200/1223/40492.00005
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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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`43.
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`(Twice amended) An inspector system comprising:
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`means for receiving a Downloadable;
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`means for generating a first Downloadable security profile that identifies
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`suspicious code in the received Downloadable; and
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`means for linking the first Downloadable security profile to the Downloadable
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`before a web server makes the Downloadable available to web clients.
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`4.
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`(Twice amended) A network gateway system c
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`means for receiving a Downloadable with mked first Downloadable security
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`profile that identifies suspicious code in the
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`trust the first Downloadable security profile;
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`and
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`e first Downloadable security profile against the security
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`adable security profile is trustworthy.
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`131 /202631.0 I
`050200/1223/40492.00005
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`Case 3:17-cv-05659-WHA Document 182-12 Filed 08/20/18 Page 6 of 8
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`REMARKS
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`Claims 1-44 were examined and rejected in this case. Claims 1, 11, 15, 22, 23, 32
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`and 41-44 are being amended. Claims 1-44 are still pending. Reconsideration of the
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`application as amended is respectfully requested.
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`Applicant requests the Examiner to enter the above amendments to the
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`Specification. No new matter is being added.
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`Before discussing the rejections ofthe claims, a briefrev.iew of an embodiment of
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`Applicant's invention is helpful. A system includes an inspector for generating and
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`link~ng a Downloadable security profile to a Downloadable before a web server makes
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`the Downloadable available to web clients. The system also includes a network gateway
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`which examines the Downloadable security profile for security policy violations if the
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`Downloadable security profile is deemed trustworthy.
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`In paragraphs 3 and 4, the Examiner rejected claims 1-3, 11, 15-17,22,23, 32 and
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`41-44 under 35 USC§ 102(e) as anticipated by Ji. Ji teaches a method performed on a
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`network gateway of examining application programs for lines of code that the client
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`computer should monitor for security policy violations. Independent claims 1, 15, 41 and
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`43 as amended similarly recite generating and linking a Downloadable security profile to
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`a Downloadable before a web server makes the Downloadable available to web clients.
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`Independent claims 22, 23, 32, 42 and 44 as amended similarly recite comparing a
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`Downloadable security profile linked to the Downloadable against a security policy, if
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`the Downloadable security profile is deemed trustworthy.
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`,li does not teach generating
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`the Downloadable security profile or linking the Downloadable security profile to a
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`Downloadable before the web server makes the Downloadable security profile available
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`to web clients. Further, ,li does not teach examining an already linked Downloadable
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`security profile by network gateways, if the profile is deemed trustworthy. In ,li's system,
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`the burden of examining a Downloadable for the suspicious code is always on the
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`network gateway, and must be done every time. In Applicant's system, some of the
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`burden may be transferred to the inspector, and generation of the Downloadable security
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`profile may be performed only once. Applicant therefore requests the Examiner to
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`050200/1223/40492.00005
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`Case 3:17-cv-05659-WHA Document 182-12 Filed 08/20/18 Page 7 of 8
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`withdraw the rejection of independent claims 1, 15, 22, 23,32 and 41-44, and of claims 2,
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`3, 11, 16 and 17 dependent therefrom.
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`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
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`for at least the same reasons.
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`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
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`the Downloadable, or the attachment of a certificate and a Downloadable ID with the
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`Downloadable. The Examiner then asserts that Atkinson teaches sending an attached
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`certificate that is included in the digital signature with the downloadable. However,
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`Atkinson does not teach generating the Downlo<1;dable security profile or linking the
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`Downloadable security profile to a Downloadable before the web server makes the
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`Downloadable security profile available to web clients. Further, Atkinson does not teach
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`examining an already linked Downloadable security profile by network gateways, if the
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`profile is deemed trustworthy. Accordingly, Applicant submits that, for at least the
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`reasons described above with reference to the independent claims, claims 4, 9, 10, 13, 14,
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`18, 20, 21, 24-26, 28-31, 33-35 and 37-40 dependent therefrom are also patentable over
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`the art of record. Applicant therefore requests the rejection be withdrawn.
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`If the Examiner has any questions or needs any additional information, the
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`Examiner is invited to telephone the undersigned attorney at (650) 843-3392.
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`If for any reason an insufficient fee has been paid, the Assistant Commissioner is
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`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
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`131/202631.0 I
`050200/1224/40492.00005
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`Case 3:17-cv-05659-WHA Document 182-12 Filed 08/20/18 Page 8 of 8
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`• 61--l - u<J •
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`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'
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`J4. .
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`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
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`TOTAL CLAIMS
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`INDEP. CLAIMS
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`9
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`AFTER AMENDMENT
`-
`44
`-
`Multiple Dependent Claims {check if applicable)
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`PREV. PAID FOR
`=
`44
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`3
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`=
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`0
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`CLAIMS PRESENT
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`RATE
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`0 X·
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`$9.00
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`6 X
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`$39.00
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`TOTAL ADDITIONAL FEE FOR THIS AMENDMENT
`
`ADDITIONAL
`
`FEE
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`$0.00
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`$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.
`
`~.
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`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
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`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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`