`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.0. Box 1450
`Alexandria. Virginia‘22313-1450
`www.usplo.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`95/001,270
`
`12/08/2009
`
`‘
`
`,
`
`FIRST NAMED INVENTOR
`
`‘
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`7188180
`
`077580-0090
`
`1'
`
`2128
`
`23““
`”9°
`“"6””
`Mcnemonwmmmm —
`600 13th Street, NW
`NALVEN, ANDREW L
`ART UNIT
`PAPER NUMBER
`Washington, DC 20005—3096
`
`3992
`
`MAIL DATE
`
`06/16/2010
`
`DELIVERY MODE
`
`. PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communicatiOn.
`
`PTOL-90A (Rev.o4/o7)
`
`'
`
`Petitioner Apple - EX. 1074, p. 1 '
`
`Petitioner Apple - Ex. 1074, p. 1
`
`

`

`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`Commissioner for Patents
`United States Patents and Trademark Office
`P.O.Box I450
`Alexandria, VA 223l3-l450
`www.uspio.gov
`
`DO NOT USE IN PALM PRINTER
`
`THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS
`
`Date:
`
`- ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`1425 K STREET N.W.
`'
`SUITE-800
`WASHINGTON, DC. 20005
`‘
`
`j
`
`,
`
`>
`
`MAILED
`'
`JUN l 5 2010
`
`‘
`
`WWW" um
`
`Transmittal of Communication to Third Party Requester
`"
`Inter Partes Reexamination
`
`REEXAMINATION CONTROL NO. : 95001270
`PATENT NO. & 7188180
`'
`
`TECHNOLOGY CENTER : 3999
`
`ART UNIT : 3992
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the above identified Reexamination proceeding. 37 CFR 1. 903.
`
`'
`
`Prior to the filing Of a Notice of Appeal, each time the patent owner responds to this
`communication, the third party requester of the inter partes reexamination may once file
`written comments within a period Of_ 30'days from the date of service of the patent owner's
`response. This 30—-day time period is statutory (35 U. S. C. 314(b)(2)), and, as such, it cannot
`be extended. See also 37 CFR 1. 947.
`
`If an ex parte reexamination has been merged with the inter partes reexamination, no
`responsive submission by any ex parte third party requester is permitted.
`
`All correspondence relating to this inter partes reexamination proceeding should." be directed
`to the Central Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end
`of the communication enclosed with this transmittal.
`
`PTOL-2070(Rev.07-04)
`
`Petitioner Apple - EX. 1074, p. 2
`
`Petitioner Apple - Ex. 1074, p. 2
`
`

`

`
`
`,
`Control No.
`
`ACTION CLOSING PROSECUTION 95/001,270
`(37 CFR 1.949)
`f
`Examiner
`ANDREW L. NALVEN
`
`
`
`Patent Under Reexamination
`
`7188180
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address. --
`
`Responsive to the communication(s) filed by:
`Patent Owner on 19 April 2010
`Third Party(ies) on 18 May 2010
`
`Patent owner may once file a submission under 37 CFR 1.951(a) within 1 month(s) from the mailing date of this
`Office action. Where a submission is filed, third party requester may file responsive comments under 37 CFR
`1.951(b) within 30-days (not extendable- 35 U.S.C. § 314(b)(2)) from the date of service of the initial
`
`submission on the requester. Appeal cannot be taken from this action. Appeal can only be taken from a
`Right of Appeal Notice under 37 CFR 1953.
`
`All correspondence relating to this inter partes reexamination proceeding should be directed to the Central
`Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end of this Office action.
`
`PART I. THE FOLLOWING ATTACHMENT(S) ARE PART OF THIS ACTION:
`
`1. [:j Notice of References Cited by Examiner, PTO-892
`2. E information Disclosure Citation, PTO/SB/08
`3D
`
`PART II. SUMMARY OF ACTION:
`
`_
`
`
`
`
`1a. E Claims 1 410 12—15 17 2O 26 28-31 33 and 35 are subject to reexamination.
`
`Claims 2 3 5-9 11 16 18 19 21-25 27 32 34 and 36-41 are not subject to reexamination.
`
`1b.
`
`2.
`
`[3 Claims
`
`have been canceled.
`
`3. X Claims 1 4 10 12-15 17 2O 26 28-31 33 and 35 are confirmed. [Unamended patent claims]
`
`4.
`
`5.
`
`6.
`7.
`8
`9
`
`[3 Claims _ are patentable.
`
`[Amended or new claims]
`
`[:1 Claims _ are rejected.
`
`
`.
`are objected to.
`[:1 Claims
`
`[:1 are not acceptable.
`E] are acceptable
`[:1 The drawings filed on
`
`[:1 The drawing correction request filed on
`is:
`E] approved.
`I:] disapproved.
`[:1 Acknowledgment is made of the claim for priority under 35 U.S.C. 119 (a)—(d). The certified copy has:
`[I been received.
`El not been received.
`I: been filed in Application/Control No
`
`10. 1:] Other—
`
`US. Patent and Trademark Office
`PTOL-2065 (08/06)
`
`I
`
`
`
`Paper No. 20100607
`
`Petitioner Apple - EX. 1074, p. 3
`
`Petitioner Apple - Ex. 1074, p. 3
`
`

`

`Application/Control Number: 95/001270
`Art Unit: 3992
`
`Page 2 3
`
`'
`
`ACTION CLOSING PROSECUTION
`
`This Action Closing Prosecution is responsive to the amendment and arguments filed by the
`
`patent owner on April 19, 2010 and the notice ofnon-participation filed by Third Party ‘
`
`Requestor on May 18, 2010.
`
`On April 19, 2010, Patent Owner filed a response to the 1/19/2010 office action.
`
`Receipt of Papers
`
`On May 18, 2010, Third Party Requestor (“Requestor”) filed a notice of non-participation
`
`1.
`
`2.
`
`in the present intel‘parles reexamination. The notice indicated that no response to the 1/19/2010
`
`office action would be submitted by the Requestor and that the Requestor will not be further
`
`participating in this proceeding.
`
`Rejections Proposed by Requestor — Previously Adopted, Now Not Adopted
`
`3.
`Requestor proposed that claims 1, 10, 12', 14, 17, 26, 28, 30, 31, and 33 be rejected under
`35 US C 102(a) as being anticipated by Aventail. This proposed rejection-was adopted in the first
`
`Office action mailed on 1/19/2010. However, upon consideration of the remarks submitted by .
`
`Patent Owner, this proposed rejection is hereby withdrawn and not adopted for the following
`
`reasons.
`
`4.
`
`Patent owner argues that the rejection of claims 1, 10, 12, 14, 17, 26, 28, 30, 31, and 33
`
`as anticipated by Aventail should be withdrawn because Aventail is not prior art to the patent
`
`under reexamination, US Patent No. 7,188,180 ("the '180 patent"). Specifically, Patent Owner
`
`argued that the request and the 1/19/2010 office action did not show that Aventail was published
`
`Petitioner Apple - EX. 1074, p. 4
`
`Petitioner Apple - Ex. 1074, p. 4
`
`

`

`Application/Control Number: 95/001,270
`Art _Unit: 3992
`'
`
`‘
`
`Page 3
`.
`
`prior to the priority date ofthe ‘180 patent. The request asserts that Aventail was published
`
`between 1996 and I999. This assertion was based on the document’s copyright date. The
`
`request did not set forth any further evidence ofthe date ofpublication.
`
`5;
`
`A search was conducted to determine the publication date ofthe Aventail reference.
`
`However, no evidence was found that established the publication date. Accordingly, Aventail
`
`cannot be relied upon as prior art to the '180 patent and all rejections based upon Aventail are
`
`' hereby withdrawn and not adopted.
`
`6.
`
`Further, Patent Owner argues that the ‘180 patent clearly distinguishes the Iclaimed.
`
`"secure domain name" from a domain name that happens to correspond to a secure computer.
`
`Patent Owner’s argument is persuasive. The Examiner agrees that the '180 patent distinguishes
`
`the claimed “secure domain name.” For example; the ‘180 patent explains that a secure domain
`
`name is a non-standard domain name and that querying a convention domain name server using
`
`a secure domain name will result in a return message indicating that the URL is unknown (‘180
`
`patent. column 5] lines 25-35). Similarly, Patent Owner argues that the ‘180 patent clearly
`
`distinguishes the claimed “secure domain name service” from a conventional domain name
`
`service that can resolve domain names of computers that are used to establish secure
`
`connections. Patent Owner’s argument is persuasive. The Examiner agrees that the '180 patent
`
`distinguishes the claimed “secure domain name service.” For example, the ‘180 patent explains
`
`that a secure domain name service can resolve addresses‘for a secure domain name whereas a
`
`conventional domain name service cannot resolve addresses for a secure domain name ( ‘180
`
`patent, column 51 lines 25-35).
`
`Petitioner Apple- EX. 1074, p. 5
`
`Petitioner Apple - Ex. 1074, p. 5
`
`

`

`
`
`Application/Control Number: 95/001,270
`
`Page 4
`
`Art Unit: 3992
`
`7.
`
`Aventail does not teach the claimed “secure domain name” or “secure domain name 5
`
`service" as defined by the '180 patent. Aventail teaches the use-ol'a DNS server and the creation
`
`ofa secure tunnel to a secure remote site. However, Aventail does not teach the claimed secure
`
`domain name or secure domain name service as defined by the '180 patent as being a part ofa
`
`non—conventional domain name system. For this additional reason the proposed rejection is not
`
`adopted.
`
`8.
`
`Requestor proposed that claims 1,4, 10. 12-15, 17. 20, 26. 28—312 33, and 35 be rejected
`
`under 35 USC 103(5) as being rendered obvious by the combination of VPN Overview in view
`
`of RFC 1035. This proposed rejection was adopted in the first Office action mailed on
`
`1/19/2010. However, upon consideration of the remarks submitted by Patent Owner, this
`
`proposed rejection is hereby withdrawn and not adopted for the following reasons.
`
`9.
`
`Patent Owner argues that the ‘180 patent clearly distinguishes the claimed "secure
`
`domain name" from a domain name that happens to correspond to a secure computer. Patent
`
`Owner’s argument is persuasive. The Examiner agrees that the '180 patent distinguishes the
`
`claimed “secure domain name.” For example, the ‘180 patent explains that a secure domain
`
`name is a non-standard domain name and that querying a convention domain name server using
`
`a secure domain name will result in a return message indicating that the URL is unknown ( ‘180
`
`patent, column 5] lines 25—35). Similarly, Patent Owner argues that the ‘ 180 patent clearly
`
`distinguishes the claimed “secure domain name service” from a conventional domain name
`
`service that can resolve domain names of computers that are used to establish secure
`
`connections. Patent Owner’s argument is persuasive. The Examiner agrees that the 'l 80 patent
`
`Petitioner Apple - Ex. 1074, p. 6
`
`Petitioner Apple - Ex. 1074, p. 6
`
`

`

`Application/Control Number: 95/001,270
`Art Unit: 3992
`
`_
`
`Page 5
`
`distinguishes the claimed “secure dOmain name service.” For example, the ‘180 patent explains
`
`that a secure domain name service can resolve addresses for a secure domain name whereas a
`
`conventional domain name service cannot resolve addresses for a secure domain name (‘180
`
`patent, column 5/ lines 25—35).
`
`10.
`
`VPN Overview and RFC 1035 do not teach the claimed “secure domain name” or “secure
`
`domain name'service” as defined by the '180 patent. RFC 1035 describes the framework for a
`
`conventional domain name system (RFC 1035, Page 3), but does not disclose an implementation
`
`including a secure domain name service and secure domain names as claimed by the ‘180 patent.
`
`Similarly, VPN Overview provides an overview of virtual private networks including their basic
`
`requirements. However. neither RFC 1035 or‘VPN Overview teach the claimed secure domain
`
`name or secure domain name service as defined by the '180 patent as being a part ofa non-
`
`conventional domain name system. Accordingly, the proposed rejection is not adopted.
`
`11.
`
`Requestor proposed that claims 1, 10, 12—15, 17, 26‘, 28—31, and 33 be rejected under 35
`
`USC 102(a) as being anticipated by Kaufman. This proposed rejection was adOpted in the first
`
`Office action mailed on 1/19/2010. However, upOn consideration ofthe remarks submitted by
`
`Patent Owner, this proposed rejection is hereby withdrawn and not adopted for the following
`
`reasons.
`
`12.
`
`Patent Owner argues that the ‘ 180 patent clearly distinguishes the claimed "secure
`
`domain name" from a domain name that happens to correspond to a secure computer. Patent
`
`Owner’s argument is persuasive. The Examiner agrees that the '180 patent distinguishes the
`
`claimed “secure domain name.” For example, the " 180 patent explains that a secure domain
`
`Petitioner Apple - EX. 1074, p. 7
`
`Petitioner Apple - Ex. 1074, p. 7
`
`

`

`Application/Control Number: 95/001,270
`Art Unit: 3992
`
`I
`
`Page 6
`
`name is a non—standard domain name and that querying a convention domain name server using
`
`a secure domain name will result in a return message indicating that the URL is unknown (‘180
`
`pa/ent, column 5/ lines 25-35). Similarly, Patent Owner argues that the ‘180 patent clearly
`
`distinguishes the claimed “secure domain name service” from a conventional domain name
`
`service that can resolve domain names of computers that are used to establish secure
`
`connections. Patent Owner’s argument is persuasive. The Examiner agrees that the '180 patent
`
`distinguishes the claimed “secure domain name service.” For example, the ‘180 patent explains
`
`that a securedomain name service can resolve addresses for a secure domain name whereas a
`
`conventional domain name service cannot resolve addresses for a secure domain name (‘180
`
`patent, column 5/ lines 25-35).
`
`13.
`
`Kaufman does not teach the claimed “secure domain name” or “secure domain name
`
`service" as defined by the '180 patent. Kaufman describes the implementation of virtual private
`
`networks and lPsec security, but does not disclose an implementation including a secure domain
`
`name service and secure domain names as claimed by the ‘180 patent. Kaufman does not teach
`
`the claimed secure domain name or secure domain name service as defined by the '180 patent as
`
`being a part ofa non-conventional domain name system. Accordingly, the proposed rejection is
`
`not adopted;
`
`14.
`
`Requestor proposed that claims 1, 4, 10, 12-15, 17, 20, 26, 28-31, 33, and 35 be rejected
`
`under 35 USC 103(a) as being rendered obvious by the combination of Kaufman in view of
`
`Galvin. This proposed rejection was adopted in the first Office action mailed on 1/19/2010.
`
`Petitioner Apple - EX. 1074, p. 8
`
`Petitioner Apple - Ex. 1074, p. 8
`
`

`

`Application/Control Number: 95/001,270
`
`.
`
`Art Unit: 3992
`
`'
`
`Page 7
`
`However, upon consideration oFthe remarks-submitted by Patent Owner, this proposed rejection
`
`is hereby withdrawn and not adopted for the following reasons.
`
`15.
`
`Patent Owner argues that the ‘ 180 patent clearly distinguishes the claimed "secure
`
`domain name" from a domain name that happens to correspond to a secure computer. Patent
`
`Owner’s argument is persuasive The Examiner agrees that the '180 patent distinguishes the
`
`claimed “secure domain name.” For example, the ‘180 patent explains that a secure domain
`
`name is a non-standard domain name and that querying a convention domain name server using
`
`a secure domain name will result in a return message indicating that the URL is unknown( ‘lrS’O
`
`patent. column 51 lines 25-35). Similarly, Patent Owner argues that the ‘ 180 patent clearly
`
`distinguishes the claimed “secure domain name service” from a conventional domain name
`
`service that can resolve domain names of computers that are used to establish secure
`
`. connections. Patent Owner’s argument is persuasive. The Examiner agrees that the 'l 80 patent
`
`distinguishes the claimed “secure domain name service.” For example, the ‘180 patent explains
`
`that a secure domain name service can resolve addresses» for a secure domain name whereas a
`
`conventional domain name service cannot resolve addresses for a secure domain name ( ‘180
`
`patent, column 5/ lines 25—35).
`
`16.
`
`Kaufman and Galvin do not teach the claimed “secure domain name” or “secure domain
`
`name service" as defined bythe '180 patent. Kaufman describes the implementation of virtual
`
`private networks and lPsec security, but does not disclose an implementation including a secure
`
`domain name service and secure domain names as claimed by the ‘ 180 patent. Galvin describes
`
`a domain name service that uses publickeys to prove the integrity ofa domain name service
`
`record (Galvin. Page 1). However= this type ofdomain name service is a conventional type of
`
`Petitioner Apple - EX. 1074? p. 9
`
`Petitioner Apple - Ex. 1074, p. 9
`
`

`

`Application/Control Number: 95/001,270
`
`.
`
`Page 8
`
`Art Unit: 3992
`
`domain name service that is different from the claimed secure domain name service because it
`
`still relies on conventional domain names and does not provide security for secure domains.
`
`Instead, it seeks to prove the authenticity of a domain name service record to prbve to a client
`
`that that the record was not forged. Kaufman and Galvin do not teach the claimed secure domain
`
`name or secure domain name service as defined by the '180 patent as being a part of a non-
`
`conventional domain name system. Accordingly, the proposed rejection is not adopted.
`
`17.
`
`Requestor proposed that claims 1, 4, 10, l2-15, 17, 20, 26, 28—3 1 , 33, and 35 be rejected
`
`under 35 USC 102(a) as being anticipated by Gauntlet. This proposed rejection was adopted in
`the first Office action mailed on 1/19/2010. However, upon consideration of the remarks
`
`submitted by Patent Owner, this proposed rejection is hereby withdrawn and not adopted for the
`
`following reasons._
`
`18.
`
`Patent Owner argues that the “180 patent clearly distinguishes the claimed "secure
`
`domain name" From a domain name that happens to correspond to a‘secure computer. Patent
`
`Owner’s argument is persuasive. The Examiner agrees that the '180 patent distinguishes the
`
`claimed “secure domain name.” For example, the ‘ 180 patent explains that a secure domain
`
`name is a non-standard domain name and that querying a convention domain name server using
`
`a secure domain name will result in a return message indicating that the URL is unknown (‘180
`
`patent, column 51 lines 25—35). Similarly, Patent Owner argues that the ‘180 patent clearly
`
`distinguishes the claimed “secure domain name service” from‘a conventional domainname
`
`service that can resolve domain-names of computers that are used to establish secure
`
`connections. Patent Owner’s argument is persuasive. The Examiner agrees that the '180 patent
`
`‘
`
`.
`
`Petitioner Apple - EX. 1074, p. 10
`
`Petitioner Apple - Ex. 1074, p. 10
`
`

`

`Application/Control Number: 95/001,270
`
`Page 9
`
`Art Unit: 3992
`
`distinguishes the claimed “secure domain name service.” For example, the ‘180 patent explains
`
`that a secure domain name service can resolve addresses for a secure domain name whereas a
`
`conventional domain name service cannot resolve addresses for a secure domain name (‘180
`
`ipalenl. column 5/ lines 25-35).
`
`19.
`
`Gauntlet doesnot teach the claimed “secure domain name” or ‘.‘secure domain name
`
`service" as defined by the '180 patent. Gauntlet describes the implementation ofa software
`
`based firewall system that provides for tunneling where the addresses ofthe secure tunneling
`
`servers must be advertised, but does not disclose an implementation including a secure domain
`
`name service and secure domain names as claimed by the ‘180 patent. Gauntlet does not teach
`
`the claimed secure domain name or secure domain name service as defined by the '180 patent as
`
`being a part ofa non-conventional domain name system. Accordingly, the proposed rejection is
`
`not adopted.
`
`20.‘
`
`Requestor proposed that claims 1, 4, 10, 12-15, 17, 26, 28-31, 33, and 35 be rejected
`
`under 35 USC 103(a) as being rendered obvious by the combination of Hands-On in view of
`Installing NT. This proposed rejection was adopted in the first Office action mailed on
`
`1/19/2010. However, upon consideration ofthe remarks submitted by Patent Owner, this
`
`proposed rejection is hereby withdrawn and not adopted for the following reasons.
`
`21.
`
`Patent Owner argues that the ‘ 180 patent clearly distinguishes the claimed "secure
`
`domain name" from a domain name that happens to correspond to a secure computer. Patent
`
`Owner’s argument is persuasive. The Examiner agrees that the '180 patent distinguishes the
`
`claimed “secure domain name.” For example, the ‘ 180 patent explains that a secure domain
`
`Petitioner Apple - EX. 1074, p. 11.
`
`Petitioner Apple - Ex. 1074, p. 11
`
`

`

`Application/Control Number: 95/001,270
`
`Art Unit: 3992 i
`
`Page 10
`
`'
`
`name is a non-standard domain name and that querying a convention domain name server using
`
`a secure domain name will result in a return message indicating that the URL is unknown (‘./80
`
`parent, column 5/ lines 25-35). Similarly: Patent Owner argues that the ‘
`
`I 80 patentclearly _
`
`distinguishes the claimed “secure domain name service" from a conventional domain name
`
`service that can resolve domain names of computers that are'used to establishsecure
`
`connections. Patent Owner’s argument is persuasive. The Examiner agrees that the ‘180 patent
`
`distinguishes the claimed “secure domain nameservice.” For example: the ‘180 patent’explains'
`
`that a secure domain name service can resolve addresses for a secure domain name whereas a
`
`conventional domain name service'cannot resolve addresses for a secure domain name (780
`
`patent, column 5/ lines 25—35).
`
`22.
`
`Hands—On and Installing‘NT do not teach the claimed “secure domain name” or “secure
`
`domain name service" as defined by the '180 patent. Hands-On describes the implementation of
`
`secure communications using PPTP tunneling protocbls and describes the use ofa conventional
`
`DNS system: but does not disclose an implementation including a secure domain name service
`
`i and secure domain names as claimed by the ‘ 180 patent. Installing NT- describes the use ofa
`
`PPTP server to set up a secure connection, but does not describe the use of a Secure domain ,
`
`name service using a secure domain name. Hands-On and Installing NT do not teach the
`
`claimed secure domain name or secure domain name service as defined by the '180 patent as
`
`being a part ofa non-conventional domain name system. Accordingly, the'proposed rejection is
`
`not adopted.
`
`Petitioner Apple 5 EX. 1074, p. 12
`
`Petitioner Apple - Ex. 1074, p. 12
`
`

`

`Application/Control Number: 95/001,270
`Art Unit 3992
`
`I
`
`.
`
`Page 11
`
`23.
`
`Requestor proposed that claims I. 10, 12—15: 17, 26, 28-31, and 33 be rejected under 35
`
`USC 102(a) as being anticipated by Microsoft VPN. This proposed rejection was adopted in the
`
`first Office action mailed on 1/19/2010. However: upon consideration ofthe remarks submitted
`
`by Patent Owner. this proposed rejection is hereby withdrawn and not adopted for the following
`reasons.
`i
`
`24.
`
`Patent Owner argues that the ‘180 patent clearly distinguishes the claimed "secure
`
`domain name" from a domain name that happens to correspond to a secure computer. Patent
`
`Owner’s argument is persuasive. The Examiner agrees that the '180 patent distinguishes the
`
`claimed “secure domain name.” For example: the ‘180 patent explains that a secure domain
`
`name is a non-standard domain name and that querying a convention domain name server using
`
`a secure domain name will result in a return message indicating that the URL is unknown (‘180
`
`patent, coll/mm 51 lines 25-35). Similarly, Patent Owner argues that the ‘180 patent clearly
`
`distinguishes the claimed “secure domain name service” from a conventional domain name
`
`service that can resolve domain names ofcomputers that are used to establish secure
`
`connections. Patent Owner’s'argument is persuasive. The Examiner'agrees that the '180 patent
`
`distinguishes the claimed “secure domain name service.” For example, the ‘180 patent explains
`
`that a secure domain name service can resolve addresses for a secure domain name whereas a
`
`conventional domain name service cannot resolve addresses for a secure domain name (‘180
`
`patent, column 5] lines 25-35).
`
`25.
`
`Microsoft VPN does not teach the claimed “secure domain name” or “secure domain
`
`name service" as defined by the '180 patent. Microsoft VPN describes the implementation ofa
`
`virtual private network to allow a remote client to gain access to a corporate network using a
`
`Petitioner Apple - EX. 1074, p. 13
`
`Petitioner Apple - Ex. 1074, p. 13
`
`

`

`Application/Control Number:'95/001,270
`Art Unit: 3992
`
`-
`
`‘
`
`Page 12
`
`PPTP tunnel through a VPN server, but does not disclose an implementation including a secure
`
`domain name service and secure domain names as claimed by the ‘ 180 patent. Microsoft VPN
`
`does not teach the claimed secure domain name or secure domain name service as defined by the
`
`'180 patent as being a part ofa non-conventional domain name system. Accordingly, the
`
`proposed rejection is not adopted.
`
`Rejections Proposed by Requestor — Previously Not Adopted That Remain Not Adopted
`
`26.
`
`27.
`
`The non-final action mailed on January 19, 2010 is hereby incorporated by reference.
`
`Requestor proposed that claims 4, 13, 15, 20, 29, 31, and 35 be rejected under 35 USC
`
`‘ 102(a) as being anticipated by Aventail. This proposed rejection was not adopted for the reasons
`
`set forth on Pages 12-15 ofthe January 19, 2010 non-final office action.
`
`28.
`Requestor proposed that claims 4, 20, and 35 be rejected under 35 USC 103(a) as being
`rendered obvious. by the combination of VPN Overview in view of RFC 1035. This proposed
`
`rejection was not adopted for the reasons set forth on Pages 16—17 ofthe January 19, 2010 non-
`
`final office action.
`
`29.
`
`Requestor proposed that claims 4, 20, and 35 be rejected under 35 USC 102(a) as being
`
`anticipated by Kaufman. This proposed rejection was not adopted for the reasons set forth on
`
`Pages 20-21 of the January 19, 2010 non—final office action.
`
`30.
`
`Requestor proposed that claims 4, 20, and 35 be rejected under 35 USC 103(a) as being ‘
`
`rendered obvious by the combination of Kaufman in view of Galvin. This proposed rejection
`
`Petitioner Apple - EX. 1074, p. 14
`
`Petitioner Apple - Ex. 1074, p. 14
`
`

`

`Application/Control Number: 95/001,270
`Art Unit: 3992
`
`Page 13
`
`was not adopted for the reasons set Forth on Pages 22-23 ofthe January l9, 2010 non-final office
`
`action.
`
`31.
`
`Requestor proposed that claims 4. 20: and 35 be rejected under 35 USC 102(a) as being
`
`anticipated by Gauntlet. This proposed rejection was not adopted for the reasons set forth on
`
`Page 24 ofthe January 19: 2010 non-final office action.
`
`32.
`
`I Requestor proposed that claims 4. 20. and 35 be rejected under 35 USC 103(a) as being
`
`rendered obvious by the combination of Hands—On in view of Installing NT. This proposed
`
`rejection Was not adopted for the reasons set Forth on Pages 25—26 ofthe January 19, 2010 non—
`
`final office action.
`
`STATEMENT OF REASONS FOR PATENTABILITY AND/OR CONFIRMATION.
`
`The following is an examiner’s statement of reasons for patentability and/or confirmation
`
`of the claims found patentable in this reexamination proceeding:
`
`Claims 1, 4, 10, 12-15, 17.20, 26. 28—31'= 33, and 35 are confirmed as patentable for the
`
`following reasons. The cited prior art fails to teach or suggest the claimed features Ofa "secure
`
`domain name" and a "secure domain name service.” Instead, the cited prior art teaches the useof
`
`a conventional domain name system and conventional domain names where some of the domain
`
`names correspond to a host that requires. authentication. The ‘180 patent distinguishes the
`
`claimed secure domain names and secure domain name service from a conventional domain
`
`name service by explaining that a secure domain name is a non-standard domain name and that
`
`querying a convention domain name server using a secure domain name will result in a return
`
`Petitioner Apple - EX. 1074, p. 15
`
`Petitioner Apple - Ex. 1074, p. 15
`
`

`

`Application/Control Number: 95/001,270
`
`‘
`
`Page 14
`
`Art Unit: 3992
`
`'
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`message indicating that the URL is unknown (‘180paiem, column 5/ lines 25-35) and that a
`
`secure domain name service can resolve addresses for a secure domain name whereas a
`
`conventional domain name service cannot resolve addresses for a secure domain name (‘180
`
`patent, column 51 lines 25-35). Accordingly, the cited prior art fails to anticipate or render
`
`obvious claims 1.4, 10. 12-15, l7,20,26.28-31=33,Iand 35.
`
`Any comments considered necessary by the PATENT OWNER regarding the above
`
`statement must be submitted promptly to avoid processing delays. Such submission by the
`
`patent owner should be labeled: “Comments on Statement of Reasons for Patentability and/or
`
`Confirmation” and will be placed in the reexaminatiOn file.
`
`ACTION CLOSING PROSECUTION
`
`This is an ACTION CLOSING PROSECUTION (ACP); see MPEP § 2671.02.
`(1) Pursuant to 37 CFR 1.951(a), the patent owner may once file written comments
`limited to the issues raised in the reexamination proceeding and/or present a'proposed
`amendment to the claims which amendment will be subject to the criteria of 37 CFR 1.1 16 as to'
`whether it shall be entered and considered. Such comments; and/or proposed amendments must
`
`be filed within a time period of 30 days or one month iwhicheVer is longer) from the mailing
`date of this action. Where the patent owner files such comments and/or a proposed amendment,
`the third party requester may once file comments under 37 CFR 1.95 1 (b) responding to the
`patent owner’s submission within 30 days from the date of service of the patent owner’s
`submission on the third party requester.
`(2) Ifthe patent owner does not timely file comments and/or a proposed amendment
`pursuant to 37 CFR 1.951(a), then the third party requester is precluded from filing comments
`under 37 CFR 1.951(b).
`'
`(3) Appeal cannot be taken from this action, since it is not a final Office action.
`
`All correspondence relating to this inter partes
`
`reexamination proceeding should be directed:
`
`’
`
`By Mail to: Mail Stop Inter Partes Reexam
`Attn: Central Reexamination Unit
`
`Petitioner Apple - EX. 1074, p. 16
`
`Petitioner Apple - Ex. 1074, p. 16
`
`

`

`Application/Control Number: 95/001,270 -
`
`Page 15
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`Art Unit: 3992
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`'
`
`Commissioner of Patents
`
`United States Patent & Trademark Office
`PO. Box1450
`.
`'
`Alexandria, VA 22313-1450
`
`By FAX to:
`
`(571) 273—9900
`Central Reexamination Unit
`
`.
`
`By hand:
`
`Customer Service Window
`Randolph Building
`401 Dulany St.
`Alexandria, VA 22314
`
`Any inquiry' concerning this communication or earlier communications from the
`examiner, or as to the status of this proceeding,‘should be directed to the Central
`Reexamination Unit at telephone number*(571) 272—7705.
`
`'
`
`Signed:
`
`/AndrewNalven/,
`Andrew Nalven
`
`CRU Examiner
`
`GAU 3992
`
`(571) 272-3839
`
`-
`
`Conferee: EEK 1
`Conferee:
`3% I
`
`'
`
`Petitioner Apple - EX. 1074, p. 17
`
`Petitioner Apple - Ex. 1074, p. 17
`
`