Case 3:17-cv-05659-WHA Document 96-6 Filed 06/07/18 Page 1 of 9
`Case 3:17-cv-05659-WHA Document 96-6 Filed 06/07/18 Page 1 of 9
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`EXHIBIT 2
`EXHIBIT 2
`
`

`

`Case 3:17-cv-05659-WHA Document 96-6 Filed 06/07/18 Page 2 of 9
`
`WHAT IS CLAIMED IS:
`
`l.
`
`A computer-based method for generating a Downlo dable ID to identify a
`
`2 Downloadable, comprising the steps of:
`
`obtaining a Downloadable;
`
`fetching, if the Downloadable includes one o more references to a component, at
`
`least one component identified by the one or mor eferences; and
`
`performing a fimction on the Download
`
`le and all components fetched to
`
`generate a Downloadable ID.
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`2.
`
`The method of claim I, wherein e Downloadable includes an applet.
`
`{11
`
`10
`
`11
`
`3 .
`
`The method of claim l, whe ein the Downloadable includes an ActiveXTM
`
`'4
`•
`
`12
`
`control.
`
`0
`
`14
`
`4.
`
`15
`
`wherein the Downloadable includes a plugin.
`
`16
`
`5.
`
`The method of cla\' 1, wherein the Downloadable includes HTML code.
`
`!aim I, wherein the Downloadable includes an application
`
`17
`
`18
`
`6.
`
`19
`
`program.
`
`20
`
`21
`
`7.
`
`131/201271.02
`033000/1635/40492.00011
`
`21
`
`

`

`Case 3:17-cv-05659-WHA Document 96-6 Filed 06/07/18 Page 3 of 9
`
`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
`'
`
`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
`
`applet.
`
`ended) The method of claim l, wherein the Downloadable
`3. (Currently
`includes an [Act! eX™] active software control.
`
`4. (Original)
`plugin.
`
`5. (Original)
`HTMLcode.
`
`Th method of claim l, wherein the Downloadable includes a
`
`The me od of claim I, wherein the Downloadable includes
`
`6. (Original)
`application program.
`
`claim l, wherein the Downloadable includes an
`
`7. (Original)
`function.
`
`The method of clai
`
`l, wherein the function includes a hashing
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`2
`
`2
`
`2
`
`2
`
`2
`
`In re Touboul
`U.S. Patent ApplicatiOn No.· 09/539,667
`
`Page 3 of9
`PaloAlto Doc #57049 1
`
`A
`
`

`

`Case 3:17-cv-05659-WHA Document 96-6 Filed 06/07/18 Page 4 of 9
`
`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
`
`In re Tou.hov.l
`U.S. Patent Application No. 09/539,667
`
`Page 7 of9
`PaloAlto Doc #57049 I
`
`

`

`Case 3:17-cv-05659-WHA Document 96-6 Filed 06/07/18 Page 5 of 9
`
`Support for Amended Claims in Original Specification
`Regarding amended claims l, 8, 10, II, 18 and 20-22, fetching
`software components is described in the original specification on page 9, lines 13
`- 18 and FIG. 8.
`
`For the foregoing reasons, applicant respectfully submits that the
`applicable objections and rejections have been overcome and 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. Tf for any reason an insufficient fee has been paid, please charge
`the insufficiency to Deposit Account No. 05-0150.
`
`Date: July 31. 2003
`
`Respectfully submitted,
`
`Squire, Sanders & Dempsey L.L.P.
`600 Hansen Way
`Palo Alto, CA 94304-1043
`Telephone:
`(650) 856-6500
`Facsimile:
`(650) 843-8777
`
`By:~~UJ
`
`Marc A. Sockol
`Attorney for Applicant
`Registration No. 40,823
`
`in 1'e Touboul
`US Patent Application No : 091539,667
`
`Page 9 of9
`PaloA\to Doc #57049.1
`
`

`

`Case 3:17-cv-05659-WHA Document 96-6 Filed 06/07/18 Page 6 of 9
`
`Attorney's Docket No.: 43426.0001 I
`
`Please substitute the following claims for the pending claims
`
`\~~IN THE CLAIMS:
`\ ' with the same number:
`\.
`
`"
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`2
`
`2
`
`2
`
`2
`
`2
`
`2
`
`2
`
`for generating a
`
`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
`
`3. (Previously amended) The method of claim I, wherein the Downl9adable
`includes an active software control.
`
`4. (Original)
`plugin.
`
`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
`
`·.,
`
`',,
`
`

`

`Case 3:17-cv-05659-WHA Document 96-6 Filed 06/07/18 Page 7 of 9
`
`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
`
`current claim set. During the interview, Applicant and the Examiner discussed
`
`how the system described in the Apperson reference associates privileges to a
`
`Downloadable and
`
`then allows
`
`the Downloadable to execute only those
`
`operations allowed by the associated privileges. Applicant and the Examiner
`
`discussed how the privileges in Apperson are monitored by the browser, not
`
`executed by the Downloadable, and further how the Apperson reference does not
`
`generate Downloadable IDs based on the fetched executable components.
`
`Further, Applicant and the Examiner discussed adding the language "to be
`
`executed" into the claim language to further show that the additional components
`
`are "to be executed," thereby highlighting that difference between the Apperson
`
`reference and claimed invention.
`
`Specifically, in paragraphs 1 and 2 of the office action, the
`
`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,
`
`network privileges and registry privileges (Apperson I col. 2, lines 41
`
`53; col. 4,
`
`lines 33 43; FIG. 2).
`
`Apperson, however, does not teach fetching at least one software
`
`component referenced by a Downloadable, where the software component is
`
`"required to be executed by the Downloadable" and "performing a function on the
`
`Downloadable and the fetched software components to generate a Downloadable
`
`ID" as recited in independent claims I, II, 21 and 22, as amended. As will be
`
`recognized by those skilled in the art, in some embodiments, the Downloadable
`
`ID may be used to recognize the "same" Downloadable regardless of how the
`
`Downloadable is subdivided and/or downloaded before and/or during execution.
`
`Since all other claims depend from
`
`these independent claims, Applicant
`
`In re Toubou/
`US Patent Application No 09/539,667
`
`Page 5 of6
`PaloAlto Doc #63123 I
`
`

`

`Case 3:17-cv-05659-WHA Document 96-6 Filed 06/07/18 Page 8 of 9
`
`Attorney's Docket No.: 43426.0001 I
`
`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
`
`software component is "required to be executed by the Downloadable" and
`
`"performing a function on
`
`the Downloadable and
`
`the
`
`fetched software
`
`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
`
`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
`
`

`

`Case 3:17-cv-05659-WHA Document 96-6 Filed 06/07/18 Page 9 of 9
`
`DETAILED ACTION
`
`EXAMINER'S AMENDMENT
`
`1.
`
`An examiner's amendment to the record appears below. Should the changes
`
`and/or additions be unacceptable to applicant, an amendment may be filed as provided
`
`by 37 CFR 1.312. To ensure consideration of such an amendment, it MUST be
`
`submitted no later than the payment of the issue fee.
`
`Authorization for this examiner's amendment was given in a telephone interview
`
`with Marc Sockol on May 13, 2004.
`
`The application has been amended as follows:
`
`/
`
`On page 1 of the specification, line 7, after -November 6, 1997,--, please its"ert
`
`Q.. \
`
`"which is now U.S. Patent 6,092, 194,";
`
`On page 1 of the specification, line 15, after-January 29, 1997,--, please insert"
`
`which is now U.S. Patent 6, 167,520,";
`
`In claim 1, on line 8, please i~rt "hashing" before -function--;
`Please can~ claim 7;
`/
`/ .
`In claim 8, line 2, after -fetching--, ~se delf{te -the-- and in
`
`rt "a";
`
`In claim 11, lin~-7, please de~ -for fetching-- and /"that fetches" and
`
`on line 8, please i+ "hashing" before -function--;
`
`(
`
`• L
`
`Please c;y{cel claim 17;
`
`In claim 18, line 2, .after -fetches--, please d ete -the-- and insert "a";
`In claim 21, on line 7, please in~"hashing" before -function--;
`In claim 22, on line 7, please in~ "hashing" before -function--;
`
`