Case 3:17-cv-05659-WHA Document 371-6 Filed 02/14/19 Page 1 of 13
`Case 3:17-cv-05659-WHA Document 371-6 Filed 02/14/19 Page 1 of 13
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`EXHIBIT 2
`EXHIBIT 2
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`Case 3:17-cv-05659-WHA Document 371-6 Filed 02/14/19 Page 2 of 13
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`LOSURE:
`Kindly rep! ce the Abstract of the Disclosure with the following
`
`text:
`
`-- A computer-based method for generating a Downloadable ID to identity a
`Downloadable, including obtaining a Downloadable that includes one or more
`references to software components required by the Downloadable, fetching at
`least one software component identified by the one or more references, and
`performing a function on the Downloadable and the fetched software components
`to generate a Downloadable ID. A system and a computer-readable storage
`medium are also described and claimed. --
`
`\
`
`In re Touboul
`Us. Patent ApplicatiOn No· 09/539,667
`
`Page 2 of9
`PaloA!to Doc #57049 I
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`

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`Case 3:17-cv-05659-WHA Document 371-6 Filed 02/14/19 Page 3 of 13
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`IN THE CLAIMS: ~
`Kindly cancel claims 9 and 19 without prejudice.
`
`Please substitute the following claims for the pending claims
`with the same number:
`
`A computer-based method for generating a
`(Currently amended)
`1.
`Downloadable ID to identify a Downloadable, comprising [the steps of]:
`obtaining a Downloadable that includes one or more references
`software com onents re uired b the Downloadable;
`fetching[, if the Downloadable includes one or more references
`to A component,] at least one software component identified by the one or more
`refe~nces; and
`'
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`performing a function on the Downloadable and [all] the fetched
`""'""-"'-\components [fetched] to generate a Downloadable ID.
`
`The method of claim 1, wherein the Downloadable includes an
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`applet.
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`ended) The method of claim l, wherein the Downloadable
`3. (Currently
`includes an [Act! eX™] active software control.
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`4. (Original)
`plugin.
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`5. (Original)
`HTMLcode.
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`Th method of claim l, wherein the Downloadable includes a
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`The me od of claim I, wherein the Downloadable includes
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`6. (Original)
`application program.
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`claim l, wherein the Downloadable includes an
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`7. (Original)
`function.
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`The method of clai
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`l, wherein the function includes a hashing
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`In re Touboul
`U.S. Patent ApplicatiOn No.· 09/539,667
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`Page 3 of9
`PaloAlto Doc #57049 1
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`A
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`Case 3:17-cv-05659-WHA Document 371-6 Filed 02/14/19 Page 4 of 13
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`8. (Current!~ amended) The method of claim I, wherein [the step of] said
`fetching inct\des [the step of] fetching the tirst software component referenced by
`the Downloa<\able.
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`9. (Cancelled)
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`10. (Currentlr amended) The method of claim I, wherein [the step of] said
`fetching
`incltJdes
`fetching all
`software components
`referenced by
`the
`Downloadable.
`
`11. (Currently am nded) A system for generating a Downloadable ID to identify
`a Downloadable, c mprising:
`a ommunications engine for obtaining a Downloadable that
`includes one or
`references to software com
`the
`Downloadable; and
`generator coupled to the communications engine for
`an I
`fetching[, if the Down adable includes one or more references to a component,]
`at least one software co ponent identitied by the one or more references, and for
`performing a function n the Downloadable and [all] the fetched software
`components [fetched] to enerate a Downloadable !D.
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`12. (Original)
`apple!.
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`of claim II, wherein the Downloadable includes an
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`II, wherein
`system of claim
`13. (Currently amended)
`Downloadable includes an [Act eX™] active software control.
`
`the
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`14. (Original) The system of cl im II, wherein the Downloadable includes a
`plugin.
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`15. (Original) The system of clai
`HTML code.
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`II, wherein the Downloadable includes
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`lfl r~ TtJuboul
`U.S. Patent Appllcation No.: 09/539,667
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`Page 4 of9
`PaloAHn Doc #57049. 1
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`Case 3:17-cv-05659-WHA Document 371-6 Filed 02/14/19 Page 5 of 13
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`16. (Original) The system of claim II, wherein the Downloadable includes an
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`17. (Original) The system of claim II, wherein the function includes a hashing
`function.
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`18. (Currently a
`fetches the first so
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`nded) The system of claim II, wherein the ID generator
`are component referenced by the Downloadable.
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`19. (Cancelled)
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`20. (Currently amende ) The method of claim 11, wherein the ID generator
`fetches all software com onents referenced by the Downloadable.
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`21. (Currently amended)
`a Downloadable, comprisin
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`system for generating a Downloadable 1D to identify
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`btaining a Downloadable that includes one or more
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`references to a component,] at ast one software component identified by the one
`or more references; and
`ing a function on the Downloadable and [all]
`means for perfo
`the fetched software components etched) to generate a Downloadable ID.
`
`22. (Currently amended) A comput -readable storage medium storing program
`code for causing a computer to perfo
`the steps of:
`obtaining a Download ble that includes one or more references
`to software components requiregby the ... ownloadable;
`fetching[, if the Downlo able includes one or more references
`to a component,] at least one software con anent identified by the one or more
`references; and
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`performing a function on the ownloadable and (all] the fetclte!l
`software components [fetched] to generate a Do nloadable ID.
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`In re Touboul
`US Patent Application No · 091539,667
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`Page,5 of9
`PaloA!to Doc #57049.l
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`A
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`Case 3:17-cv-05659-WHA Document 371-6 Filed 02/14/19 Page 6 of 13
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`REMARKS
`
`Applicant has 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.
`Applicant has canceled claims 9 and 19, and amended claims I,
`3, 8, 10, 11, 13, 18 and 20-22 to more properly claim the present invention. No
`8, I 0
`18 and 20 - 22 are presented for
`new matter has been added. Claims I
`examination.
`
`Applicant notes that the page headers of the Office Action
`indicate an incorrect Application/Control Number.
`In paragraphs 2 and 3 of the Office Action, the Examiner has
`objected to the abstract of the disclosure. Accordingly, applicant has amended the
`abstract so as to conform to the proper language and format.
`In paragraphs 4 and 5 of the Office Action, the Examiner has
`rejected claims I, II, 21 and 22 under the judicially created doctrine of double
`patenting. Accordingly, applicant is submitting a terminal disclaimer with the
`present amendment.
`In paragraphs 6 and 7 of the Office Action, the Examiner has
`rejected claims 3 and 13 under 35 U.S.C. §112, second paragraph as being
`indefinite. Applicant has amended these claims accordingly.
`In paragraphs 8 and 9 of the Office Action, the Examiner has
`rejected claims I, 7, 8, 10, II, 17, 18, and 20
`22 under 35 U.S.C. §102(e) as
`being anticipated by Apperson et al., U.S. Patent No. 5,978,484 ("Apperson").
`In paragraphs I 0 and II of the Office Action, the Examiner has
`rejected claims 2- 4 and 12- 14 under 35 U.S.C. § 103(a) as being unpatentable
`over Apperson in view of Khare, "Microsoft Authenticode Analyzed'', July 22,
`1996, xent.com/FoRK-archive/summer96/0338.html, pg. I and 2 ("Khare").
`Jn paragraph 12 of the Office Action, the Examiner has rejected
`claims 5, 6, 9, 15, 16 and 19 under 35 U.S.C. §103(a) as being unpatentable over
`Apperson. Applicant has canceled claims 9 and 19 without acquiescence to the
`Examiner's reasons for rejection and respectfully submits that rejection of those
`claims is thus rendered moot.
`
`In re Toubvul
`U.S. Pa«:nt Application No 09/539,667
`
`Page 6 of9
`P~loAito Doc # 57049 l
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`

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`Case 3:17-cv-05659-WHA Document 371-6 Filed 02/14/19 Page 7 of 13
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`Distinctions between Claimed Invention and U.S. Patent No. 5,978,484 to
`Apperson et al in view of Khare, "Microsoft Authenticode Analyzed", July
`22, 1996, xent.com/FoRK-archivelsummer9610338.html, pg. 1 and 2
`The present invention concerns generation of an ID for mobile
`code downloaded to a client computer, referred
`to as a Downloadable.
`Specifically, the present invention fetches software components required by the
`Downloadable, and performs a hashing function on the Downloadable together
`with its fetched components (original specification I page 3, lines II
`14; page
`15, lines 21- 24; page 19, line 21- page 20, line 6; FIG. 8). Thus, for a Java
`applet, the present invention fetches Java classes identified by the applet
`bytecode, and generates the Downloadable ID from the applet and the fetched
`Java classes; and for an ActiveX™ control, the present invention fetches
`components listed in its .INF file, and generates a Downloadable ID from the
`ActiveX™ control and the fetched components (original specification I page 9,
`lines 15 -18).
`
`An advantage of the present invention is that it produces the
`same ID for a Downloadable, regardless of which software components are
`included with the Downloadable and which software components are only
`referenced (original specification I page 9, lines 18- 20; page 20, lines 5 and 6).
`The same Downloadable may be delivered with some required software
`components included and others missing, and
`in each case the generated
`Downloadable ID will be the same. Thus the same Downloadable is·recognized
`through many equivalent guises.
`Apperson describes use of digital certificates to authorize
`privileges for executable code, such as file IIO privileges, network privileges and
`registry privileges (Apperson I col. 2, lines 41- 53; col. 4, lines 33- 43; FIG. 2).
`Khare describes Microsoft Corporation's implementation of
`digital signatures, referred to as Authenticode, as applied to ActiveX controls and
`Java applets.
`
`In distinction to the present invention, Apperson and Khare do
`not teach fetching software components of executable code. In order to further
`clarify this distinction, applicant has amended the claims so as to refer to software
`components required by the Downloadable.
`In paragraph 9 of the Office Action, the Examiner has indicated
`that Apperson discloses fetching components of a Downloadable. Applicant
`respectfully submits that Apperson's privilege request code does not include
`components of a Downloadable, but instead includes a list of "privileges or
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`In re Tou.hov.l
`U.S. Patent Application No. 09/539,667
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`Page 7 of9
`PaloAlto Doc #57049 I
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`Case 3:17-cv-05659-WHA Document 371-6 Filed 02/14/19 Page 8 of 13
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`privilege categories that the executable code might perform on the client
`machine" (Apperson I col. 2, lines 45- 47).
`The rejections of claims I -8 and 10 in paragraphs 8- 12 of the
`Office Action will now be dealt with specifically.
`As
`to amended
`independent method claim
`respectfully submits that the limitation in claim I of:
`"fetching at least one software component identified by the one
`or more references"
`is neither shown nor suggested in Apperson or Khare.
`Because claims 2 - 8 and I 0 depend from claim I and include
`additional features, applicant respectfully submits that claims 2 - 8 and I 0 are not
`anticipated or rendered obvious by Apperson and Khare, taken alone or m
`combination.
`
`I, applicant
`
`Accordingly claims 1 8 and 10 are deemed to be allowable.
`As
`to amended
`independent system claim
`II, applicant
`respectfully submits that the limitation in claim II of:
`"an ID generator coupled to the communications engine for
`fetching at least one software component identified by the one or more
`references"
`is neither shown nor suggested in Apperson or Khare.
`Because claims 12 - 18 and 20 depend from claim II and
`include additional features, applicant respectfully submits that claims 12
`18 and
`20 are not anticipated or rendered obvious by Apperson and Khare, taken alone
`or in combination.
`Accordingly claims 12- 18 and 20 are deemed to be allowable.
`As
`to amended
`independent system claim 21, applicant
`respectfully submits that the limitation in claim 21 of:
`"means for fetching at least one software component identified
`by the one or more references"
`is neither shown nor suggested in Apperson or Khare.
`Accordingly claim 21 is deemed to be allowable.
`As
`to amended
`independent system claim 22, applicant
`respectfully submits that the limitation in claim 22 of:
`"fetching at least one software component identified by the one
`or more references"
`is neither shown nor suggested in Apperson or Khare.
`Accordingly claim 22 is deemed to be allowable.
`
`In re Touboul
`US, Patent Application No · 09/539,667
`
`Page 8 of9
`PaloAlto Doc #57049 1
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`

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`Case 3:17-cv-05659-WHA Document 371-6 Filed 02/14/19 Page 9 of 13
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`Attorney's Docket No.: 43426.0001 I
`
`Please substitute the following claims for the pending claims
`
`\~~IN THE CLAIMS:
`\ ' with the same number:
`\.
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`"
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`for generating a
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`A computer-based method
`(Currently amended)
`1.
`Downloadable ID to identify a Downloadable, comprising:
`obtaining a Downloadable that includes one or more references
`to software components required to be executed by the Downloadable;
`fetching at least one software component identified by the one or
`lr.«.s ~; ""!
`more references; and
`performing al\function on the Downloadable and the fetched
`software components to generate a Downloadable ID.
`
`2. (Original)
`applet.
`
`The method of claim I, wherein the Downloadable includes an
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`3. (Previously amended) The method of claim I, wherein the Downl9adable
`includes an active software control.
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`4. (Original)
`plugin.
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`5. (Original)
`HTML code.
`
`The method of claim I, wherein the Downloadable includes a
`
`The method of claim I, wherein the Downloadable includes
`
`The method of claim I, wherein the Downloadable includes an
`6. (Original)
`~pplication program.
`
`he metho~laim I, wherein the function includes a hashing
`
`I
`.lY. (Previously amended) The method of claim I, wherein said fetching includes
`fetching ~first software component referenced by the Downloadable.
`"
`
`:: 9. (Cancelled)
`
`In te Touboul
`US Patent Appltcatton No.: 09/539,667
`
`Page 2 of6
`PaloAito Doc #63 123 1
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`·.,
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`Case 3:17-cv-05659-WHA Document 371-6 Filed 02/14/19 Page 10 of 13
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`Attorney's Docket No.: 43426.000 II
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`l
`r!5. (Previously amended) The method of claim I, wherein said fetching includes
`fetching all software components referenced by the Downloadable.
`
`~
`K. (Currently amended) A system for generating a Downloadable ID to identifY
`a Downloadable, comprising:
`a communications engine for obtaining a Downloadable that
`includes one or more references to software components required to be executed
`by the Downloadable; and
`(
`~.\- ~e..~~e, an ID generator coupled to the communications engine jJp..
`Ji:t I i"# at least one softw~re component identified by the one or more references,
`k(l.Sho..,
`A
`and for performing a .. tlmctlon on the Downloadable and the fetched software
`components to generate a Downloadable ID.
`ro
`~
`~(Original) The system of claim_.H", wherein the Downloadable includes an
`apple!.
`
`q
`II
`system of claim K wherein
`)%. (Previously amended)
`The
`Downloadable includes an active software control.
`q
`~~
`)<f. (Original) The system of claim .H; wherein the Downloadable includes a
`plugin.
`
`the
`
`13
`~
`~(Original) The system of claim 1{, wherein the Downloadable includes
`HTMLcode.
`
`ti
`
`~
`18: (Original) The system of claim ]A', wherein the Downloadable includes an
`application program.
`
`I funcf
`
`e system of claim&in the function includes a hashing
`
`r- ~-·' I 17. (Original
`,1 •• .---../ ,s
`~
`$. (Previously amended) The system of claim ;..(, wherein the ID generator
`fetches ~first software component referenced by the Downloadable.
`A
`
`In re Touboul
`U.S. Patent ApplicatiOn No 09/539,667
`
`Page 3 of6
`PaloAlto Doc #63123 I
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`,_
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`Case 3:17-cv-05659-WHA Document 371-6 Filed 02/14/19 Page 11 of 13
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`Attorney's Docket No.: 43426.00011
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`I
`I 19. (Cancelled)
`I .
`'· .If?
`q
`2(( (Previously amended) The method of claim A:'( wherein the ID generator
`fetches all software components referenced by the Downloadable.
`\'7
`z( (Currently amended) A system for generating a Downloadable ID to identif'y
`a Downloadable, comprising:
`means for obtaining a Downloadable that includes one or more
`references to software components required to be executed by the Downloadable;
`means for fetching at least one software component identified by
`!-1-GI.~ ~; '4
`the one or more references; and
`means for performing aAfunction on the Downloadable and the
`fetched software components to generate a Downloadable ID.
`
`il?
`)1{. (Currently amended) A computer-readable storage medium storing program
`code for causing a computer to perform the steps of:
`obtaining a Downloadable that includes one or more references
`to software components required to be executed by the Downloadable;
`fetching at least one software component identified by the one or
`~ ct.5 VI; Mj
`more references; and
`performing a,Junction on the Downloadable and the fetched
`software components to generate a Downloadable ID.
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`in re Touhoul
`U.S Patent Application No 09/539,667
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`Page 4 of6
`PaloAlto Doc #63!23 1
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`.: , I
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`Case 3:17-cv-05659-WHA Document 371-6 Filed 02/14/19 Page 12 of 13
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`Attorney's Docket No.: 43426.00011
`
`REMARKS
`
`Claims I -8, 10- 18 and 20-22 are presented tor examination.
`
`Claims I, II, 21 and 22 are being amended. Applicant respectfully requests
`
`reconsideration of the application in view of the amendments above and remarks
`
`below.
`
`Applicant would like to thank the Examiner for the interview on
`
`January 27, 2004 to discuss the office action, the Apperson reference and the
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`current claim set. During the interview, Applicant and the Examiner discussed
`
`how the system described in the Apperson reference associates privileges to a
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`Downloadable and
`
`then allows
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`the Downloadable to execute only those
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`operations allowed by the associated privileges. Applicant and the Examiner
`
`discussed how the privileges in Apperson are monitored by the browser, not
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`executed by the Downloadable, and further how the Apperson reference does not
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`generate Downloadable IDs based on the fetched executable components.
`
`Further, Applicant and the Examiner discussed adding the language "to be
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`executed" into the claim language to further show that the additional components
`
`are "to be executed," thereby highlighting that difference between the Apperson
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`reference and claimed invention.
`
`Specifically, in paragraphs 1 and 2 of the office action, the
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`Examiner rejected claims I, 5-8, 10, II, 15-18 and 20-22under 35 USC§ 103(a)
`
`over Apperson. Apperson describes the use of digital certificates to authorize
`
`privileges for executable code. Such privileges include file I/0 privileges,
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`network privileges and registry privileges (Apperson I col. 2, lines 41
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`53; col. 4,
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`lines 33 43; FIG. 2).
`
`Apperson, however, does not teach fetching at least one software
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`component referenced by a Downloadable, where the software component is
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`"required to be executed by the Downloadable" and "performing a function on the
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`Downloadable and the fetched software components to generate a Downloadable
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`ID" as recited in independent claims I, II, 21 and 22, as amended. As will be
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`recognized by those skilled in the art, in some embodiments, the Downloadable
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`ID may be used to recognize the "same" Downloadable regardless of how the
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`Downloadable is subdivided and/or downloaded before and/or during execution.
`
`Since all other claims depend from
`
`these independent claims, Applicant
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`In re Toubou/
`US Patent Application No 09/539,667
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`Page 5 of6
`PaloAlto Doc #63123 I
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`Case 3:17-cv-05659-WHA Document 371-6 Filed 02/14/19 Page 13 of 13
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`Attorney's Docket No.: 43426.0001 I
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`respectfully submits that they are distinguishable over Apperson for at least the
`
`same reasons.
`
`In paragraph 3, the Examiner rejected claims 2-4 and I 2- I 4 over
`
`Apperson
`
`in view of Khare.
`
`Khare describes Microsoft Corporation's
`
`implementation of digital signatures, referred to as Authenticode, as applied to
`
`ActiveX controls and Java applets. Like Apperson, Khare does not teach fetching
`
`at least one software component referenced by a Downloadable, where the
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`software component is "required to be executed by the Downloadable" and
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`"performing a function on
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`the Downloadable and
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`the
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`fetched software
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`components to generate a Downloadable ID" as recited in independent claims I,
`
`11,21 and 22, as amended. Since claims 2-4 and 12-14 depend from claims I and
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`II, respectively, Applicant respectfully submits that they are patentable for at
`
`least the same reasons.
`
`For the foregoing reasons, applicant respectfully submits that the
`claims are in condition for allowance.
`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, please charge
`the insufficiency to Deposit Account No. 05-0150.
`
`Squire, Sanders & Dempsey L.L.P.
`600 Hansen Way
`Palo Alto, CA 94304-1043
`Telephone:
`(650) 856-6500
`Facsimile:
`(650) 843-8777
`
`Respectfully submitted,
`
`By:L~U-Q
`
`Marc A. Sockol
`Attorney for Applicant
`Registration No. 40,823
`
`In re Touboul
`US Patent Application No 09/539,667
`
`Page 6 of6
`PaloAito Doc #63123 I
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