`
`PATENT
`
`In re Application of:
`
`Victor Larson
`
`Serial No.: 11/679,416
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`Filed: February 27, 2007
`
`For:
`
`METHOD FOR
`ESTABLISHING SECURE
`
`COMMUNICATION LINK
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`BETWEEN COMPUTERS
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`OF VIRTUAL PRIVATE
`NETWORK
`
`Sir:
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`:
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`:
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`:
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`:
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`:
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`Customer Number:
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`Confirmation Number: 3528
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`Group Art Unit: 2453
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`Examiner: Krisna Lim
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`Attorney Reference No:
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`077580-0015 (VRNK-lCPZDVCN)
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`FILED VIA EFS-WEB
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`RESPONSE/AMENDMENT “B”
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`In response to the final Office Action dated April 8, 2010, it is respectfully requested that
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`the time for response to the Office Action be extended for three (3) months to October 8, 2010,
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`and reconsideration and further examination of the above-identified application are respectfully
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`requested based on the following:
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`Amendments to the Claims are reflected in the listing of claims, which begins on page 2 of this
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`paper.
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`Remarks/Arguments begin on page 7 of this paper.
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`AMENDMENTS TO THE CLAIMS
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`Page 1 of 12
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`Petitioner Apple - EX. 1073, p. 1
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`Petitioner Apple - Ex. 1073, p. 1
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`Serial No. 11/679,416
`Amendment B
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`This listing of claims will replace all prior versions, and listings, of claims in the
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`application:
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`LISTING OF CLAIMS:
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`1. (Cancelled)
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`2. (Currently Amended) A method of eommunieating—using a first device to communicate with
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`a second device having a secure name, the method comprising:
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`from the first device sending a message to a secure name service, the message requesting
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`[[an]] a network address associated with the secure name of the second device;
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`at the first device, receiving a message containing the network address associated with
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`the secure name of the second device; and
`
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`from the first device sending a message to the network address associated with the
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`secure name of the second device using a secure communication link.
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`3. (Currently Amended) The method according to claim 2, wherein the secure name of the
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`second device is a secure domain namefiufiher—ifleludingflippofiing—a—pharahtyofisewiees
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`4. (Previously Presented) The method according to claim 2, wherein the secure name indicates
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`security.
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`5. (Currently Amended) The method according to claim 2, wherein receiving the message
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`containing the network address associated with the secure name of the second device includes
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`receiving the message in encrypted form.
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`6. (Previously Presented) The method according to claim 5, further including decrypting the
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`message.
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`7. (Currently Amended) The method according to claim 2, wherein the second device is capable
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`of supporting a secure communication link as well as a non-secure communication link, the
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`method further including establishing a non-secure communication link with the second device
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`when needed...
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`Page 2 of 12
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`Petitioner Apple - EX. 1073, p. 2
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`Petitioner Apple - Ex. 1073, p. 2
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`Serial No. 11/679,416
`Amendment B
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`8. (Currently Amended) The method according to claim 2, wherein receiving a message
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`containing the network address associated with the secure name of the device includes receiving
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`the network address as an IP address associated with the secure name of the device.
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`9. (Previously Presented) The method according to claim 2, flirther including automatically
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`initiating the secure communication link after it is enabled.
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`10.
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`(Currently Amended) The method according to claim 2, wherein receiving a message
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`containing the network address associated with the secure name of the device includes receiving
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`the message at the first device through tunneling within the secure communication link.
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`11.
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`(Currently Amended) The method according to claim 2, wherein receiving a message
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`containing the network address associated with the secure name of the device includes receiving
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`the message in the form of at least one tunneled packet.
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`12.
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`(Previously Presented) The method according to claim 2, wherein the receiving and
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`sending of messages includes receiving and sending the messages in accordance with any one of
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`a plurality of communication protocols.
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`13.
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`(Currently Amended) The method according to claim 2, wherein the receiving an and
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`sending of messages through the secure communication link includes multiple sessions.
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`14.
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`(Previously Presented) The method according to claim 2, further including supporting a
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`plurality of services over the secure communication link.
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`15.
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`(Previously Presented) The method according to claim 14, wherein the plurality of
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`services comprises a plurality of communication protocols, a plurality of application programs,
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`multiple sessions, or a combination thereof.
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`16.
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`(Previously Presented) The method according to claimlS, wherein the plurality of
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`application programs comprises video conferencing, e-mail, a word processing program,
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`telephony or a combination thereof.
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`17.
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`(Previously Presented) The method according to claim 15, wherein the plurality of
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`services comprises audio, video or a combination thereof.
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`Page 3 of 12
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`Petitioner Apple - EX. 1073, p. 3
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`Petitioner Apple - Ex. 1073, p. 3
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`Serial No. 11/679,416
`Amendment B
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`18.
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`(Previously Presented) The method according to claim 2, wherein the secure
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`communication link is an authenticated link.
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`19.
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`(Currently Amended) The method according to claim 2, wherein the first device is a
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`computer, and the steps are performed on the computer.
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`20.
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`(Currently Amended) The method according to claim 2, wherein the first device is a
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`client computer connected to a communication network, and the method is performed by the
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`client computer on the communication network.
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`21.
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`(Currently Amended) The method according to claim 2, further including providing an
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`unseeure unsecured name associated with the device.
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`22.
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`(Currently Amended) The method according to claim 2, wherein the secure name is
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`registered prior to the step of sending a message to a secure name service.
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`23.
`
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`(Currently Amended) The method according to claim 2, wherein the secure name of the
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`second device is a secure, non-standard domain name.
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`
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`24.
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`(Currently Amended) A method fer—of using a first device to securely__communicate
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`eemmufiieating—with a second device overin— a communication network, thedewee—havmg—a
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`seeure—namerthe method comprising:
`
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`at the first device requesting and obtaining registration of a secure name ef—afor the first
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`device, the secure name being associated with [[an]] a network address;
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`Page 4 of 12
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`Petitioner Apple - EX. 1073, p. 4
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`Petitioner Apple - Ex. 1073, p. 4
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`Serial No. 11/679,416
`Amendment B
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`receiving at the network address associated with the secure name of the first device a
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`message from a second device of the desire to securely communicate with the first device; and
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`sending a message securely from the first device to the second device.
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`25.
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`(Currently Amended) The method according to claim 24, wherein requesting gm
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`obtaining registration of a secure name ef—a—fiothgfirst device comprises requesfing—fiomw
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`the first device to obtain a registration of the secure name ofihefigrflgfirst device, and wherein
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`sending a message securely comprises sending the message from the first device to the second
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`device using a secure communication link.
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`26.
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`(Currently Amended) A method fer—eemmwfieati—ngof using a first device to
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`communicate with a second device in—over a communication network, theeeviee—asseeiated—Mfeh
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`a—seeure—Hameand—anunseeured—namfi the method comprising:
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`from the first device requesting and obtaining registration of an unsecured name
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`associated with ath_e first device;
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`from the first device requesting and obtaining registration of a secure name associated
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`with the first device, wherein [[an]] a unique network address corresponds to the secure name
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`associated with the first device;
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`receiving at the unique network address associated with the secure name a message from
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`a second device requesting the desire to securely communicate with the first device; and
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`from the first device sending a message securely from the first device to the second
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`device.
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`27.
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`(Currently Amended) The method according to claim 26,
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`wherein requesting and obtaining registration of an unsecured name associated with athe
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`first device comprises requesting—fiem—Lsingthe first device to obtain a registration of the
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`unsecured name associated with the first device, and
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`wherein requesting and obtaining registration of a secure name associated with the first
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`device comprises requesting—fiem—Lsingthe first device to obtain a registration of the secure
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`name associated with the first device.
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`28.
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`(Currently Amended) A non-transitory machine—readable medium comprising
`
`instructions for:
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`Page 5 of 12
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`Petitioner Apple - EX. 1073, p. 5
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`Petitioner Apple - Ex. 1073, p. 5
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`
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`Serial No. 11/679,416
`Amendment B
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`sending a message to awname service, the message requesting [[an]] a network
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`address associated with a secure name of a device;
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`receiving a message containing the network address associated with the secure name of
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`the device; and
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`sending a message to the network address associated with the secure name of the device
`
`using a secure communication link.
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`29.
`
`(Currently Amended) A non-transitory machine-readable medium comprising
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`instructions for a method £er—oicommunicating with a device having a secure name, the method
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`comprising:
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`receiving at [[an]] a network address associated with a secure name of a first device a
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`message from a second device reguesting the desired to securelj_communicate with the first
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`device, wherein the secure name of the first device is registered; and
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`sending a message securely from the first device to the second device.
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`30.
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`(Currently Amended) A non-transitory machine-readable medium comprising
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`instructions for a method fer—9icommunicating with a first device associated with a secure name
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`and an unsecured name, the method comprising:
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`receiving, at [[an]] a network address corresponding to athesecure name associated with
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`athe first device, a message from a second device of the desired to securely communicate with
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`the first deviceweifififimfiedfimesseeiwdwfih—the—fimaéwrandfim
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`flame—and—the—unseeured—name—are—registered; and
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`sending a message seeufelyover a secure communication link from the first device to the
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`second device.
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`Page 6 of 12
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`Petitioner Apple - EX. 1073, p. 6
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`Petitioner Apple - Ex. 1073, p. 6
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`
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`Serial No. 11/679,416
`Amendment B
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`REMARKS/ARGUMENTS
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`Claims 2-30 remain in the application, of which claims 2, 24, 26, 28, 29, and 30 are the
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`independent claims. Claims 2, 3, 5, 7, 8, 10, 11, 13, 19-30 have been amended to more clearly
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`define the invention. The changes to the claims are fully supported by the original disclosure.
`
`No new matter has been introduced into the claims. Reconsideration and further examination are
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`respectfully requested.
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`The changes to the application are fully supported by the original disclosure, including,
`
`for example, original paragraphs [0313] to [0331].
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`Objection to the Specification
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`The Specification has been objected to for failing to provide support for “machine
`
`readable medium,” as recited in claims 28—30, because “machine readable medium” may be
`
`defined to broadly include non-statutory subject matter. The Office Action notes that adding
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`“non—transitory? to claims 28—30 does not raise the issue of new subject matter. Because claims
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`28-30 have been amended to recite “non-transitory,” the Applicant respectfully submits that this
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`objection is moot.
`
`Rejection under 35 US. C. § 112, second paragraph
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`Claims 2-30 have been rejected under 35 U.S.C. § 112, second paragraph, as being
`
`indefinite for failing to particularly point out and distinctly claim the subject matter which the
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`Applicant regards as the invention. The rejection is respectfully traversed, and reconsideration
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`and withdrawal of the § 112 rejection is respectfully requested.
`
`Regarding claim 2, the Office Action states that it is unclear from where a message is
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`sent.
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`It states that is also unclear what kind of “name service” is being claimed (ie, a secure
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`Page 7 of 12
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`Petitioner Apple - EX. 1073, p. 7
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`Petitioner Apple - Ex. 1073, p. 7
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`Serial No. 11/679,416
`Amendment B
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`domain name service? A domain name service?) It further states that it is also unclear what kind
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`of address is being claimed (i. e. , an address for a secure computer network?) It further states
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`that it is also unclear where a message is being received.
`
`As amended, claim 2 recites as follows:
`
`A method of using a first device to communicate with a second device
`having a secure name, the method comprising:
`fromthe first device, sending a message to a secure name service,
`the message requesting a network address associated with the secure name of the
`second device;
`
`at the first device, receiving a message containing the network
`address associated with the secure name of the second device; and
`from the first device, sending a message to the network address
`associated with the secure name of the second device using a secure
`communication link.
`
`The Applicant responds to the rejections of claim 2 as follows. First, the Applicant has
`
`amended claim 2 to clarify that it is the first device that is “sending a message” and “receiving a
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`message” to so that it can send a message over “a secure communication link.”
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`Second, the Applicant has amended “name service” to read “secure name service." This
`
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`secure name service is a service for resolving secure names into network addresses. This secure
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`name service offers functionality that cannot be accomplished by a standard domain name
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`service.
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`Third, the Applicant has amended “address” to read “network address.” This network
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`address is one that is associated with a device connected to a communications network.
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`It is not
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`limited to an address of a secure computer network, as suggested in the Office Action. A
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`network address can be associated with any device registered on a network, including, but not
`
`limited to, web servers, mobile handsets, and/or computers.
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`The Applicant respectfully submits that, as amended, these limitations in claim 2 are not
`
`unclear. The Applicant further submits that claims 3-23, which depend on claim 2, are not
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`Page 8 of 12
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`Petitioner Apple - EX. 1073, p. 8
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`Petitioner Apple - Ex. 1073, p. 8
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`Serial No. 11/679,416
`Amendment B
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`unclear for similar reasons. Accordingly the Applicant respectfully requests withdrawal of these
`
`rejections and reconsideration of claims 2—23.
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`Regarding claim 24, the Office Action states that “secure name” is unclear, and questions
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`whether this is a secure domain name.
`
`It further states that it is unclear what kind of address is
`
`being claimed.
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`It further states that it is unclear what kind of the first device and second device
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`are being claimed, and whether they are the same or different.
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`As amended, claim 24 recites as follows:
`
`A method of using a first device to securely communicate with a second
`device over a communication network, the method comprising:
`at the first device requesting and obtaining registration of a secure
`name for the first device, the secure name being associated with a network
`address;
`
`receiving at the network address associated with the secure name
`of the first device a message from a second device of the desire to securely
`communicate with the first device; and
`sending a message securely from the first device to the second
`
`device.
`
`The Applicant responds to the rejection of claim 24 as follows. First, the Applicant
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`submits that a “secure name” is a name associated with a network address of a first device. The
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`name can be registered such that a second device can obtain the network address associated with
`
`the first device from a secure name registry and send a message to the first device. The first
`
`device can then send a secure message to the second device. The claimed “secure name”
`
`includes, but is not limited to, a secure domain name. For example, a “secure name” can be a
`
`secure non-standard domain name, such as a secure non—standard top-level domain name
`
`(eg, .scom) or a telephone number.
`
`Second, the Applicant has amended “address” to read “network address.” This network
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`address is one that is associated with a device on a communications network.
`
`It is not limited to
`
`an address of a secure computer network, as suggested in the Office Action. A network address
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`Page 9 of 12
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`Petitioner Apple - EX. 1073, p. 9
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`Petitioner Apple - Ex. 1073, p. 9
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`Serial No. 11/679,416
`Amendment B
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`can be associated with any device registered on a network, including, but not limited to, web
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`servers, mobile handsets, and computers.
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`Third, the Applicant submits that the first device and second device are different to the
`
`extent that they are associated with two different network addresses, These devices can include,
`
`but are not limited to, web servers, mobile handsets, and/or computers.
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`The Applicant respectfully submits that, as amended, these limitations in claim 24 are not
`
`unclear. The Applicant further submits that claim 25, which depends on claim 24, is not unclear
`
`for similar reasons.
`
`Regarding claims 26—30, the Office Action states that they are also unclear because they
`
`recite similar language to claim 24. For at least the reasons stated above, the Applicant
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`respectfully submits that claims 26-30, as amended, are similarly not unclear.
`
`In sum, the Applicant respectfully submits that, in view of the foregoing amendments and
`
`remarks, the rejections under 35 U.S.C. § 112, second paragraph have been traversed.
`
`Accordingly, the Applicant respectfully requests reconsideration and withdrawal of these
`
`rejections.
`
`Rejection under 35 U.S.C. § 101
`
`Claims 28-30 have been rejected under 35 U.S.C. § 101 for claiming non—statutory
`
`subject matter. The Office Action states that claims drawn to a “machine—readable medium”
`
`includes both non-transitory tangible media and transitory propagating signals.
`
`It states that
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`transitory embodiments are not directed to statutory subject matter.
`
`Although the Applicant respectfully disagrees with this interpretation of “machine—
`
`readable medium,” the Applicant has nevertheless amended claims 28-30 to make explicit that
`
`they are drawn to statutory subject matter, namely “non—transitory machine—readable medi[a].”
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`Page 10 of 12
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`Petitioner Apple - EX. 1073, p. 10
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`Petitioner Apple - Ex. 1073, p. 10
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`
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`Serial No. 11/679,416
`Amendment B
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`Accordingly, the Applicant respectfully requests reconsideration and withdrawal of these
`
`rejections.
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`Non-Statutory Obviousness- Type Double Parenting Rejections
`
`Claims 2, 24, 26, and 28-30 have been rejected on the ground of nonstatutory
`
`obviousness-type double patenting as being unpatentable over claim 1 of US Patent No.
`
`7,188,180. The Applicant submits herewith a terminal disclaimer to overcome this rejection.
`
`Accordingly, the Applicant respectfully submits that this rejection has been overcome, and
`
`requests withdrawal of the rejection accordingly.
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`Claims 2, 24, 26, and 28-30 have been provisionally rejected on the ground of
`
`nonstatutory obviousness—type double patenting as being unpatentable over claim 1 of copending
`
`US. Patent Application Serial No. 11/839,987. The Applicant submits herewith a terminal
`
`disclaimer to overcome this rejection. Accordingly, the Applicant respectfully submits that these
`
`rejections are traversed and requests withdrawal of the rejections accordingly.
`
`The absence of a reply to a specific rejection, issue, or comment does not signify
`
`agreement with or concession of that rejection, issue, or comment. In addition, because the
`
`arguments made above may not be exhaustive, there may be other reasons for patentability of
`
`any or all claims that have not been expressed. Finally, nothing in this paper should be construed
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`as an intent to concede, or an actual concession of, any issue with regard to any claim, or any
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`cited art, except as specifically stated in this paper, and the amendment or cancellation of any
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`claim does not necessarily signify concession of unpatentability of the claim prior to its
`
`amendment or cancellation.
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`Page 11 of 12
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`Petitioner Apple - Ex. 1073, p. 11
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`Petitioner Apple - Ex. 1073, p. 11
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`
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`Serial No. 11/679,416
`Amendment B
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`CONCLUSION
`
`In view of the foregoing amendments and remarks, the entire application is believed to be
`
`in condition for allowance, and such action is respectfully requested at the Examiner’s earliest
`
`convenience. Should the Examiner have any questions, please call the undersigned at the phone
`
`number listed below.
`
`Authorization is hereby given to charge our deposit account, No. 50-1133,
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`for an
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`Extension of Time (three-months) Under 37 CFR 1.136, and for any other fees that may be
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`required for the prosecution of the subject application.
`
`Respectfully submitted,
`
`McDERMOTT WILL & EMERY LLP
`
`/Toby H. Kusmer/
`Toby Kusmer, Reg. No.: 26,418
`McDERMOTT WILL & EMERY LLP
`
`28 State Street
`
`Boston, Massachusetts 02109
`
`Telephone: (617) 535—4065
`Facsimile:
`(617) 535—3800
`e-mail:
`tkusmer@mwe.com
`
`Date: October 8, 2010
`
`BST99 16595652077580.0015
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`Page 12 of 12
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`Petitioner Apple - EX. 1073, p. 12
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`Petitioner Apple - Ex. 1073, p. 12
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`HIGHEST
`NUMBER
`PREVIOUSLY
`PAID FOR
`
`(Column 3)
`
`PRESENT
`EXTRA
`
`RATE ($)
`
`ADDITIONAL
`FEE (3;)
`
`RATE ($)
`
`ADDITIONAL
`FEE (53)
`
`(Column 1)
`CLAIMS
`REMAINING
`
`AFTER- AMENDMENT
`
`1 16 I
`
`37 CFR 1.16 h
`
`Minus
`
`Minus
`
`D Application Size Fee (37 CFR 1.16(s))
`
`D FIRST PRESENTATION OF MULTIPLE DEPENDENT CLAIM (37 CFR1.16(j))
`
`XX 6969
`
`XX 6969
`
`OR
`
`OR
`
`TOTAL
`ADD‘L
`FEE
`
`Legal Instrument Examiner:
`/DIANE WILLIAMS/
`
`Petitioner Apple - EX. 1073, p. 13
`
`'—
`
`ZwEDZw E<
`
`AMENDMENT
`
`Petitioner Apple - Ex. 1073, p. 13
`
`