Case 3:17-cv-05659-WHA Document 182-9 Filed 08/20/18 Page 1 of 6
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`Attorney's Docket No.: 43426.69
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`Express Mail Label No. EV661 243 784 US
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`PATENT
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In Re Patent Application of:
`Yigal Mordechai Edery
`Nimrod Itzhak Vered
`David Kroll
`Application No: Not yet assigned
`Filed: Concurrently with the Application
`
`For: MALICIOUS MOBILE CODE
`RUNITME MONITORING
`SYSTEM AND METHODS
`
`)
`) Examiner: NIA
`) ) Art Unit: N/A
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`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`PRELIMINARY RESPONSE
`
`Applicant has carefully studied the Office Action issued for the
`parent application, US Ser. No. 09/861,229, dated December 7, 2004,
`In Paragraphs 7 and 8 of that Office Action, claims I - 7, 16 -
`20, 28 - 34, 43 - 51 and 60- 76 of that application were ri:jected unde.r 35 U.S.C.
`§ I 02(e) as bi:ing anticipated by Golan, U.S Patent No. 5974549 ("Golan'').
`
`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 ca!Is of the application and the
`software components to corresponding monitored API f unctions (Golan / FIGS.
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`Atty. Docket No. 43426.69
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`Case 3:17-cv-05659-WHA Document 182-9 Filed 08/20/18 Page 2 of 6
`Case 3:17-cv-05659-WHA Document 182-9 Filed 08/20/18 Page 2 of 6
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`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 presentinvention, Golan does not describe
`the packaging of protection code.
`Instead, Golan discusses a situation whereby a
`security monitoris already resident on a client computer, as illustrated in FIGS. 2,
`5 and 9 of Golan, without concemingitself as to how the security monitor was
`installed.
`In fact, prima facie the methodology of the present 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.
`
`In Paragraph 8 of that Office Action, the Examiner,citing cal. 2,
`lines 12 — 28, col. 3, lines 45 ~ 58 and col. 4, line 50 — col. 5, line 14 of Golan,
`indicated that Golan discloses “... causing mobile protection code to be
`communicated to one information-destination ofthe downloadable information, if
`the downloadable-information is determined to include executable code.”
`Applicant respectfully submits that Golan does not describe causing mobile
`protection code, which corresponds
`to Golan’s
`security monitor,
`to be
`communicated.
`
`As to independent method claim 1, applicant
`submits that the limitation in claim 1 of
`
`respectfully
`
`“causing mobile protection cade to be communicated to at least
`information-destination af
`the
`downloadable-information,
`if
`the
`one
`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, applicant respectfully submits that claims 2 — 7 are not anticipated or
`rendered obvious by Golan.
`Accordingly claims | —7 are deemedto be allowable.
`As to independent system claim 16, applicant respectfully
`submits that the limitation in claim 16 of
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`Case 3:17-cv-05659-WHA Document 182-9 Filed 08/20/18 Page 3 of 6
`Case 3:17-cv-05659-WHA Document 182-9 Filed 08/20/18 Page 3 of 6
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`“a protection agent engine communicatively coupled to the
`content inspection engine for causing mobile protection code (“MPC") ta be
`communicated to at least one information-destination of the 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, applicant respectfully submits that claims 17 - 20 are not
`anticipated or rendered obvious by Golan.
`Accordingly claims 16 - 20 are deemed to be allowable,
`As to independent system claim 28, applicant respectfully
`submits that the limitation in claim 28 of
`
`“means Jor 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 beallowable.
`As
`to claim 29 for a computer-readable storage medium,
`applicant respectfully submits that the limitation in claim 29 of
`“causing mobile protection code to be communicated to at least
`information-destination of
`the
`downloadable-information,
`if
`the
`one
`downloadable-information is determined to include executable code”
`is neither shown nor suggested in Golan,
`Accordingly claim 29 is deemed to be allowable.
`As to independent method claim 30, applicant respectfully
`submits that the limitation in claim 30 of
`
`“causing 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 31 — 34 and 43 - 46 depend from claim 30 and
`include additional features, applicant respectfully submits 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 independent system claim 47, applicant
`submits that the limitation in claim 47 of
`
`respectfully
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`Case 3:17-cv-05659-WHA Document 182-9 Filed 08/20/18 Page 4 of 6
`Case 3:17-cv-05659-WHA Document 182-9 Filed 08/20/18 Page 4 of 6
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`“mobile code means communicatively coupled to the receiving
`means for causing mobile protection code ta 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 pratection code"
`is neither shown nor suggested in Golan.
`Because claims 48 — 51, 58 and 59 depend from claim 47 and
`include additional features, applicant respectfully submits 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 claim 60 for a computer-readable storage medium,
`applicant respectfully submits that the limitation in claim 60 of
`“causing 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 mobileprotection code”
`is neither shown nor suggested in Golan.
`Accordingly claim 60 is deemedto be allowable.
`As to independent method claim 61, applicant respectfully
`submits 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
`Downloadable-destination”
`
`In rejecting claim 62 of the parent
`is neither shown nor suggested in Golan.
`application, the Examiner cited Golan,col. 1, lines 34 — 43; col. 2, lines 12 - 28;
`and col. 5, lines 60 — 67. Applicant respectfully submits 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 appearatthe locations cited,
`Because claims 63 - 67 depend from claim 61 and include
`additional features, applicant respectfully submits that claims 63 - 67 are not
`anticipated or rendered obvious by Golan.
`Accordingly claims 61 and 63 — 67 are deemed to be allowable.
`As
`to amended independent
`system claim 68,
`applicant
`respectfully submits that the limitation in claim 68 of
`“a sandboxed package capable of being received and initiated
`by the mobile code executor, the sandboxed package including a Downloadable
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`Case 3:17-cv-05659-WHA Document 182-9 Filed 08/20/18 Page 5 of 6
`Case 3:17-cv-05659-WHA Document 182-9 Filed 08/20/18 Page 5 of 6
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`and mobile protection code (“MPC”) for causing one or more Downloadable
`operations to be intercepted andfor processing the intercepted operations, ifthe
`Downloadable attempts to initiate the operations”
`is neither shown nor suggested in Golan.
`In rejecting claim 68 of the parent
`application, 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 cal. 5, lines 60 -—
`67. Applicant respectfully submits that, although Golan does describe a sandbox,
`the limitation of a sandboxed package including a Downloadable and mobile
`protection code doesnot appear at the locations cited.
`Because claims 69 - 74 depend from claim 68 and include
`additional features, applicant respectfully submits that claims 69 - 74 are not
`anticipated or rendered obvious by Golan.
`Accordingly claims 68 — 74 are deemed to be allowable.
`As
`to independent
`system claim 75, applicant
`respectfully
`submits that the limitation in claim 75 of
`
`“receiving meansfor receiving a sandboxedpackagethat include
`a
`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.
`As to independent claim 76 for a computer-readable storage
`medium, applicant respectfully submits that the limitation in claim 76 of
`“receiving a sandboxed package that includes 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 76 is deemed to be allowable.
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`Case 3:17-cv-05659-WHA Document 182-9 Filed 08/20/18 Page 6 of 6
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`For the foregoing reasons, applicant respectfully submits that the
`applicable objections and rejections have been overcome andthatthe claims are
`in condition for allowance.
`
`Respectfully submitted,
`
`
`
`rz205_h sfloODated: J ~— / 2-90 By
`
`Squire, Sanders & Dempsey L.L.P.
`600 Hansen Way
`Palo Alto, CA 94304-1043
`Telephone (650) 856-6500
`Facsimile (650) 843-8777
`
`Marc A. Sockol
`Attorney for Applicants
`Reg. No. 40,823
`.
`
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