UNITED STATES PATENT AND TRADEMARK OFFICE
`
`THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS
`SIDLEY AUSTIN LLP
`717 NORTH HARWOOD
`SUITE 3400
`DALLAS, TX 75201
`
`for Patents
`Commissioner
`United States Patents
`and Trademark
`Office
`POBox
`1450
`VA 22313-1450
`www.uspto.gov
`
`Alexandria.
`
`Date:
`
`MAILED
`MAR 11 2013
`CENTRAL REEXAMINATION UNrr
`
`Transmittal
`
`to Third Party Requester
`of Communication
`Inter Partes Reexamination
`
`REEXAMINATION CONTROL NO.: 95001682 T cr5/~\J1 b"19'
`PATENT NO. : 6502135
`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 CFR1.903.
`
`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 3~-day time period is statutory (35 U.s.c. 314(b)(2)), and, as such, it cannot
`be extended. See also 37 CFR1.947.
`
`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.
`
`Petitioner RPX Corporation - Ex. 1056, p. 1
`
`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS
`HA YNES AND BOONE, LLP
`IP SECTION
`2323 VICTORY AVENUE, SUITE 700
`DALLAS, TX 75219
`
`for Patents
`Commissioner
`United States Patents
`and Trademark Office
`POBox
`1450
`VA 22313-1450
`www uspto gOY
`
`Alexandria.
`
`Date:
`
`MAILED
`MAR 11 2013
`CENTRAL REEXAMINATION UNIT
`
`Transmittal
`
`to Third Party Requester
`of Communication
`Inter Partes Reexamination
`
`REEXAMINATION CONTROL NO. : 95001679 'tCfs{~O(b~2..
`PATENT NO. : 6502135
`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 CFR1.903.
`
`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 CFR1.947.
`
`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.
`
`Petitioner RPX Corporation - Ex. 1056, p. 2
`
`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United
`States
`Patent
`and Trademark
`Office
`Address:COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria,Virginia22313-1450
`www.uspto.gov
`
`APPLICATION NO.
`
`95/00I,682-r,
`
`FILING DATE
`-~i"l(f 07111/2011
`
`FIRST NAMED INVENTOR
`
`AITORNEY DOCKET NO.
`
`CONFIRMA TION NO
`
`6,502,135
`
`077580-0132
`
`1074
`
`22852
`7590
`03111/2013
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
`LLP
`901 NEW YORK AVENUE, NW
`WASHINGTON, DC 20001-4413
`
`EXAMINER
`
`PEl KARl, BEHZAD
`
`ART VNIT
`
`3992
`
`MAIL DATE
`
`03/11/2013
`
`PAPER NUMBER
`
`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. 04/07)
`
`Petitioner RPX Corporation - Ex. 1056, p. 3
`
`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`OF COMMERCE
`UNITED STATES DEPARTMENT
`Office
`United
`States
`Patent
`and Trademark
`Address COMMISSIONER
`FOR PATENTS
`PO Box 1450
`Alexandria.
`Virginia
`www.uspto.gov
`
`22313·1450
`
`APPLlCA nON NO.
`
`95/00 1,679'r,
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`A TTORNEY DOCKET NO.
`
`CONFIRMATION
`
`NO.
`
`6502135
`
`43614.92
`
`9786
`
`22852
`7590
`0311 112013
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
`LLP
`901 NEW YORK AVENUE, NW
`WASHINGTON, DC 20001-4413
`
`EXAMINER
`
`PEIKARI, BEHZAD
`
`ART UNIT
`
`3992
`
`MAIL DATE
`
`03/11/2013
`
`PAPER NUMBER
`
`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. 04/07)
`
`Petitioner RPX Corporation - Ex. 1056, p. 4
`
`

`
`Transmittal of Communication to
`Third Party Requester
`Inter Partes Reexamination
`
`Control No.
`
`Patent Under Reexamination
`
`I~~
`
`95/001,679..;<fS(Cl!,
`Examiner
`
`BEHZAD PEl KARl
`
`6502135
`Art Unit
`
`3992
`
`-- The MAILING DA TE of this communication
`
`appears on the cover sheet with the correspondence
`
`address.
`
`--
`
`'-1--
`
`(THIRD PARTY REQUESTER'S CORRESPONDENCE
`
`ADDRESS) --'1
`
`David L. McCombs
`Haynes and Boone, LLP
`2323 Victory Avenue, Suite 700
`Dallas, Texas 75219
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark Office
`in the above-identified reexamination prceeding. 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 infer 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 3D-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.
`
`relating to this inter partes reexamination proceeding should be directed to the
`All correspondence
`Central Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end of the
`communication
`enclosed with this transmittal.
`
`U.S. Patent and Trademark Office
`PTOL-2070
`(Rev 07-04)
`
`PaperNo. 20130307
`
`Petitioner RPX Corporation - Ex. 1056, p. 5
`
`

`
`OFFICE ACTION IN INTER PARTES
`REEXAMINA TION
`
`Control No.
`95/001 ,679+1s/ t:~IE,1S'L
`Examiner
`
`BEHZAD PEIKARI
`
`Patent Under Reexamination
`6502135
`Art Unit
`3992
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address. --
`
`Responsive to the communication(s)
`Patent Owner on 15 February, 2012
`Third Party(ies) on 04 October, 2012
`
`filed by:
`
`RESPONSE TIMES ARE SET TO EXPIRE AS FOLLOWS:
`For Patent Owner's Response:
`~ MONTH(S)
`from the mailing date of this action. 37 CFR 1.945. EXTENSIONS OF TIME ARE
`GOVERNED BY 37 CFR 1.956.
`For Third Party Requester's Comments on the Patent Owner Response:
`30 DAYS from the date of service of any patent owner's response. 37 CFR 1.947. NO EXTENSIONS
`OF TIME ARE PERMITTED. 35 U.S.C. 314(b)(2).
`
`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.
`
`This action is not an Action Closing Prosecution under 37 CFR 1.949, nor is it a Right of Appeal Notice under
`37 CFR 1.953.
`
`PART I. THE FOLLOWING ATTACHMENT(S) ARE PART OF THIS ACTION:
`1.0 Notice of References Cited by Examiner, PTO-892
`2.[8]
`Information Disclosure Citation, PTO/SB/08
`3.0
`__
`PART II. SUMMARY OF ACTION:
`1a. [8] Claims 1-18 are subject to reexamination.
`1b. 0 Claims __
`are not subject
`to reexamination.
`2. 0 Claims __
`have been canceled.
`3. 0 Claims __
`are confirmed.
`[Unamended patent claims]
`4. 0 Claims __
`are patentable.
`[Amended or new claims]
`5.
`[8] Claims 1-18 are rejected.
`6. 0 Claims __
`are objected to.
`0 are not acceptable.
`0 are acceptable
`7. 0 The drawings filed on __
`is: 0 approved. 0 disapproved.
`8. 0 The drawing correction request
`filed on __
`o been received. 0 not been received.
`I 9. 0 Acknowledgment
`is made of the claim for priority under 35 U.S.C. 119 (a)-(d). The certified copy has:
`0 been filed in Application/Control No 95001679.
`10. 0 Other __
`
`us. Patent and Trademark Office
`PTOL-2064
`(08/06)
`
`Paper No. 20130307
`
`Petitioner RPX Corporation - Ex. 1056, p. 6
`
`

`
`Application/Control Number: 95/001,679 & 95/001,682
`Art Unit: 3992
`
`Page 2
`
`DETAILED ACTION
`
`Inter Partes Reexamination
`
`1.
`
`This is an inter partes reexamination of U.S. Patent Number 6,502,135 (the '135 patent),
`
`issued December 31, 2002.
`
`Two reexamination proceedings directed to the '386 patent, 95/001,679 (inter partes) and
`
`95/001,682
`
`(inter partes), were merged into a single reexamination proceeding (see Decision
`
`Merging Proceedings, mailed December 13,2012).
`
`Claims 1-18 are subject to reexamination.
`
`2.
`
`The following is a brief summary of the prosecution to date in this merged reexamination
`
`Prosecution Summary
`
`proceeding:
`
`•
`
`•
`
`On July 8, 2011, a first request for inter partes reexamination of claims 1-18 of
`
`the' 135 patent, assigned control no. 95/001,679 ("the '679 proceeding"), was filed
`
`by a third party requestor ("the '679 requestor").
`
`On July 11, 2011, a second request for inter partes reexamination of claims 1-18
`
`of the '135 patent, assigned control no. 95/001,682 ("the '682 proceeding"), was
`
`filed by a third party requestor
`
`("the '682 requestor").
`
`Petitioner RPX Corporation - Ex. 1056, p. 7
`
`

`
`Application/Control Number: 95/001,679 & 95/001,682
`Art Unit: 3992
`
`Page 3
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`On October 3, 2011, the USPTO mailed a decision granting inter partes
`
`reexamination and ordering the reexamination of claims 1-18 in the '679
`
`proceeding.
`
`On October 3,2011,
`
`the USPTO mailed a decision granting inter partes
`
`reexamination and ordering the reexamination of claims 1-18 in the '682
`
`proceeding.
`
`On February 15,2012,
`
`the USPTO mailed a non-final Office action in the '679
`
`proceeding. Claims 1-18 were rejected.
`
`On February 15, 2012, the USPTO mailed a non-final Office action in the '682
`
`proceeding. Claims 1-18 were rejected.
`
`On May 15, 2012, in the '679 proceeding, patent owner filed a response to the
`
`February 15,2012 Office action. No claims were amended or cancele~.
`
`On May 15, 2012, in the '682 proceeding, patent owner filed a response to the
`
`February 15, 2012 Office action. No claims were amended or canceled.
`
`On June 14,2012,
`
`in the '679 proceeding,
`
`the '679 requester filed comments.
`
`On October 4, 2012, in the '682 proceeding,
`
`the '682 requester filed comments.
`
`On December 13, 2012, the USPTO mailed a Decision Merging Proceedings
`
`95/001,679 and 95/001,682.
`
`Petitioner RPX Corporation - Ex. 1056, p. 8
`
`

`
`Application/Control Number: 95/001,679 & 95/001,682
`Art Unit: 3992
`
`Page 4
`
`3.
`
`The references discussed herein are as follows:
`
`References
`
`(l)
`
`Takahiro Kiuchi and Shigekoto Kaihara, "C-HTTP - The Development of a
`
`Secure, Closed HTTP-based Network on the Internet," published in the Proceedings of
`
`SNDSS 1996 ("Kiuchi").
`
`(2)
`
`(3)
`
`U.S. Patent No. 5,898,830 to Wesinger ("Wesinger").
`
`Eduardo Solana and Jergen Harms, "Flexible Internet Secure Transactions Based
`
`on Collaborative Domains", Security Protocols Workshop 1997, pp. 37-51 ("Solana").
`
`(4)
`
`(5)
`
`U.S. Patent No. 6,119,234 to Aziz ("Aziz").
`
`David M. Martin, "A Framework for Local Anonymity in the Internet," Technical
`
`Report. Boston University, Boston, MA, USA (Feb 21, 1998) ("Martin").
`
`(6)
`
`(7)
`
`U.S. Pat. No. 7,764,231 to Karr et al. ("Karr").
`
`D.E. Denning and G.M. Sacco, "Time-stamps
`
`in Key Distribution Protocols,"
`
`Communications of the ACM, Vo1.24, n.8, pp. 533-536 (1981) ("Denning").
`
`(8)
`
`C.1. Dalton and J.F. Griffin, "Applying Military Grade Security to the Internet,"
`
`Proceedings of the Joint European Networking Conference (May 12-15, 1997)
`
`("Dalton").
`
`(9)
`
`Steven M. Bellovin and Michael Merritt, "Encrypted Key Exchange: Password-
`
`Based Protocols Secure Against Dictionary Attacks," 1992 IEEE Symposium on Security
`
`and Privacy (1992) ("Bellovin").
`
`Petitioner RPX Corporation - Ex. 1056, p. 9
`
`

`
`Application/Control Number: 95/001,679 & 95/001,682
`Art Unit: 3992
`
`Page 5
`
`(10)
`
`"Aventail Connect v.3.1/2.6 Administrator's Guide", Aventail Corporation,
`
`Seattle, WA, 1999 ("Aventail Connect v3.1 ").
`
`(11)
`
`"Aventail Connect v3.01/2.51 Administrator's Guide", Aventail Corporation,
`
`Seattle, WA, 1999 ("Aventail Connect v3.01 ").
`
`(12)
`
`"Aventail AutoSOCKS v2.1 Administrator's Guide", Aventail Corporation,
`
`Seattle, WA, 1997 ("Aventail AutoSOCKS").
`
`(13)
`
`Reed et al., "Proxies for Anonymous Routing," 12th Annual Computer Security
`
`Applications Conference, San Diego, CA, December 9-13, 1996 ("Reed").
`
`(14) Wang, Broadband Forum TR-025: Core Network Architecture Recommendations
`
`For Access to Legacy Data Networks over ADSL, Issue 1.0, September 1999 ("Wang").
`
`(15)
`
`(16)
`
`U.S. Patent No. 6,496,867 to Beser et al. ("Beser").
`
`Kent et aI., "Security Architecture for IP", Standards Track: RFC 2401, The
`
`Internet Society, November, 1998. ("Kent").
`
`(17)
`
`(18)
`
`U.S. Patent No.6, 182,141 to Blum et al. ("Blum").
`
`"BinGO! User's Guide: Installation and Configuration", Version 1.6, Document
`
`#71000B, BinTec Communications AG, March 1999 ("BinGO").
`
`(19)
`
`(20)
`
`U.S. Patent No. 4,885,778 to Weiss ("Weiss").
`
`U.S. Patent No. 6,615,357 to Boden et al. ("Boden").
`
`Petitioner RPX Corporation - Ex. 1056, p. 10
`
`

`
`Application/Control Number: 95/001,679 & 95/001,682
`Art Unit: 3992
`
`Page 6
`
`Claim Rejections - Relevant Statutes
`
`4.
`
`The following is a quotation of the appropriate paragraphs of35 U.S.c. 102 that form the
`
`basis for the rejections under this section made in this Office action:
`
`A person shall be entitled to a patent unless -
`
`in this country, or patented or described
`(a) the invention was known or used by others
`this or a foreign country, before the invention thereof by the applicant
`for a patent.
`
`in a printed publication
`
`in
`
`in this or a foreign country or in public use or on
`(b) the invention was patented or described in a printed publication
`sale in this country, more than one year prior to the date of application for patent
`in the United States.
`
`under section 122(b), by another
`for patent, published
`in (I) an application
`(e) the invention was described
`in the United States before the invention by the applicant
`for patent or (2) a patent granted on an application
`patent by another
`filed in the United States before the invention
`by the applicant
`for patent, except
`that an
`international
`application
`filed under
`the treaty defined in section 351 (a) shall have the effects
`for purposes of this
`subsection
`of an application
`filed in the United States only if the international
`application
`designated
`the United
`States and was published
`under Article 21 (2) of such treaty in the English language.
`
`filed
`for
`
`5.
`
`The following
`
`is a quotation
`
`of 35 U.S.c. 103(a) which forms
`
`the basis
`
`for all
`
`obviousness rejections set forth in this Office action:
`
`as set forth in
`or described
`disclosed
`identically
`is not
`though the invention
`(a) A patent may not be obtained
`section 102 of this title,
`if the differences
`between the subject matter
`sought
`to be patented and the prior art are
`such that
`the subject matter as a whole would have been obvious
`at the time the invention was made to a person
`having ordinary
`skill
`in the art to which said subject matter pertains.
`Patentability
`shall not be negatived
`by the
`manner
`in which the invention was made.
`
`Summary of Proposed Rejections and Status
`
`6.
`
`The following rejections were proposed by the request filed July 8, 2011 in the '679
`
`proceeding:
`
`•
`
`Issue 1: Claims 1-4,7, 10, 12-14 and 17 are alleged to be anticipated by Kiuchi
`
`under 35 U.S.C. § 102(b).
`
`Petitioner RPX Corporation - Ex. 1056, p. 11
`
`

`
`Application/Control Number: 95/001,679 & 95/001,682
`Art Unit: 3992
`
`Page 7
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`The proposed rejection of claims 1-4, 7, 10, 12-14 and 17 is adopted.
`
`Issue 2: Claims 5, 8 and 18 are alleged to be obvious over Kiuchi
`
`in view of
`
`Dalton under 35 U.S.c. § 103.
`
`The proposed rejection of claims 5, 8 and 18 is adopted.
`
`Issue 3: Claim 9 is alleged to be obvious over Kiuchi in view of Bellovin under
`
`35 U.S.c. § 103.
`
`The proposed rejection of claim 9 is adopted.
`
`Issue 4: Claims 6 and 11 are alleged to be obvious over Kiuchi in view of Martin
`
`under 35 U.S.c. § 103.
`
`The proposed rejection of claims 6 and II is adopted.
`
`Issue 5: Claims 1-5, 7- I0, I2-l3 and 18 are alleged to be anticipated by Wesinger
`
`under 35 U.S.C. § 102(e).
`
`The proposed rejection of claims 1-5, 7-10, 12-13 and 18 is adopted.
`
`Issue 6: Claims 6 and 11 are alleged to be obvious over We singer in view of
`
`Martin under 35 U.S.C. § 103.
`
`The proposed rejection of claims 6 and 11 is adopted.
`
`Issue 7: Claims 13-15 are alleged to be anticipated by Solana under 35 U.S.C. §
`
`102(b).
`
`The proposed rejection of claims 13-15 is adopted.
`
`Issue 8: Claims 1-5, 7-8, 10, 12 and 18 are alleged to be obvious over Solana in
`
`view of Kiuchi under 35 U.S.C. § 103.
`
`The proposed rejection of claims 1-5, 7-8, 10, 12 and 18 is adopted.
`
`Petitioner RPX Corporation - Ex. 1056, p. 12
`
`

`
`Application/Control Number: 95/001,679 & 95/001,682
`Art Unit: 3992
`
`Page 8
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`Issue 9: Claims 5, 8 and 18 are alleged to be obvious over Solana in view of
`
`Kiuchi, and further in view of Dalton under 35 U.S.c. § 103.
`
`The proposed rejection of claims 5, 8 and 18 is adopted.
`
`Issue 10: Claim 9 is alleged to be obvious over Solana in view of Kiuchi, further
`
`in view of Dalton, further in view of Bellovin under 35 U.S.c. § 103.
`
`The proposed rejection of claim 9 is adopted.
`
`Issue 11: Claims 6 and 11 are alleged to be obvious over Solana, in view of
`
`Kiuchi, and further in view of Martin under 35 U.S.C. § 103.
`
`The proposed rejection of claims 6 and 11 is adopted.
`
`Issue 12: Claim 16 is alleged to be obvious over Solana in view ofKarr under 35
`
`U.S.C. § 103.
`
`The proposed rejection of claim 16 is adopted.
`
`Issue 13: Claim 17 is alleged to be obvious over Solana in view of Denning under
`
`35 U.S.C. § 103.
`
`The proposed rejection of claim 17 is adopted.
`
`Issue 14: Claims 1-5,7,10,12
`
`and 18 are alleged to be anticipated by Aziz under
`
`35 U.S.c. § 102(e).
`
`The proposed rejection of claims 1-5,7,10,12
`
`and 18 is adopted.
`
`Issue 15: Claim 13 is alleged to be obvious over Aziz in view of Kiuchi under 35
`
`U.S.c. § 103.
`
`The proposed rejection of claim 13 is adopted.
`
`Petitioner RPX Corporation - Ex. 1056, p. 13
`
`

`
`Application/Control Number: 95/001,679 & 95/001,682
`Art Unit: 3992
`
`Page 9
`
`•
`
`•
`
`•
`
`Issue 16: Claims 6 and 11 are alleged to be obvious over Aziz in view of Martin
`
`under 35 U.S.c. § 103.
`
`The proposed rejection of claims 6 and 11 is adopted.
`
`Issue 17: Claim 9 is alleged to be obvious over Aziz in view of Bellovin under 35
`
`U.S.c. § 103.
`
`The proposed rejection of claim 9 is adopted.
`
`Issue 18: Claims 5 and 8 are alleged to be obvious over Aziz in view of Dalton
`
`under 35 U.S.c.
`
`§ 103.
`
`The proposed rejection of claims 5 and 8 is adopted.
`
`7.
`
`The following rejections were proposed by the request filed July 11, 2011 in the '682
`
`proceeding:
`
`•
`
`Issue 19: Claims 1-10, 12-14 and 18 are alleged to be anticipated under 35 U.S.C.
`
`§ 102(a) by Aventail Connect v3.1.
`
`The proposed rejection of claims 1, 3, 4, 6-10 and 12-14 is adopted.
`
`The proposed rejection of claims 2, 5 and 18 is not adopted.
`
`•
`
`Issue 20: Claims 1-10, 12-14 and 18 are alleged to be anticipated by Aventail
`
`Connect v3.01 under 35 U.S.c.
`
`§ 102(b).
`
`The proposed rejection of claims 1,3,4,6-10
`
`and 12-14 is adopted.
`
`The proposed rejection of claims 2, 5 and 18 is not adopted.
`
`Petitioner RPX Corporation - Ex. 1056, p. 14
`
`

`
`Application/Control Number: 95/001,679 & 95/001,682
`Art Unit: 3992
`
`Page 10
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`•
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`Issue 21: Claims 1-10, 12, 13 and 18 are alleged to be anticipated by Aventail
`
`AutoSOCKS under 35 U.S.C. § 102(b).
`
`The proposed rejection of claims 1,3,4,6-10,12
`
`and 13 is adopted.
`
`The proposed rejection of claims 2, 5 and 18 is not adopted.
`
`Issue 22: Claim 11 is alleged to be rendered obvious by Aventail Connect v3.1 in
`
`view of Reed under 35 U.S.C § 103.
`
`The proposed rejection of claim 11 is adopted.
`
`Issue 23: Claim 11 is alleged to be rendered obvious by Aventail Connect v3.01
`
`in view of Reed under 35 U.S.C §103.
`
`The proposed rejection of claim 11 is adopted.
`
`Issue 24: Claims 11, 14 and 15 is alleged to be rendered obvious by Aventail
`
`AutoSOCKS in view of Reed under 35 U.S.C § 103.
`
`The proposed rejection of claims 11, 14 and 15 is adopted.
`
`Issue 25: Claim 16 is alleged to be rendered obvious under 35 U.S.c. § 103 by
`
`Aventail Connect v3.1 in view of Boden.
`
`The proposed rejection of claim 16 is adopted.
`
`Issue 26: Claim 16 is alleged to be rendered obvious by Aventail Connect v3.01
`
`in view of Boden under 35 U.S.c. § 103.
`
`The proposed rejection of claim 16 is adopted.
`
`Issue 27: Claim 16 is alleged to be rendered obvious by Aventail AutoSOCKS in
`
`view Reed, and further in view or Boden under 35 U.s.c.
`
`§ 103.
`
`The proposed rejection of claim 16 is adopted.
`
`Petitioner RPX Corporation - Ex. 1056, p. 15
`
`

`
`Application/Control Number: 95/001,679 & 95/001,682
`Art Unit: 3992
`
`Page 11
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`•
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`Issue 28: Claim 17 is alleged to be rendered obvious by Aventail Connect v3.1 in
`
`view of Weiss under 35 U.S.C. § 103.
`
`The proposed rejection of claim 17 is adopted.
`
`Issue 29: Claim 17 is alleged to be rendered obvious under 35 U.S.c. § 103 by
`
`Aventail Connect v3.01 in view of Weiss.
`
`The proposed rejection of claim 17 is adopted.
`
`Issue 30: Claim 17 is alleged to be rendered obvious by Aventail AutoSOCKS in
`
`view of Weiss under 35 U.S.c. § 103.
`
`The proposed rejection of claim 17 is adopted.
`
`Issue 31: Claims 1-10, 12, 13 and 18 are alleged to be anticipated by Wang under
`
`35 U.S.C. § 102(a).
`
`The proposed rejection of claim 1, 2, 4-7, 9, 10, 12, 13 and 18 is adopted.
`
`The proposed rejection of claims 3 and 8 is not adopted.
`
`Issue 32: Claims 3 and 8 are alleged to be rendered obvious by Wang in view of
`
`Aventail Connect v3.01 under 35 U.S.c. § 103.
`
`The proposed rejection of claims 3 and 8 is adopted.
`
`Issue 33: Claims 3 and 8 are alleged to be rendered obvious by Wang in view of
`
`Aventail AutoSOCKS under 35 U.S.C. § 103.
`
`The proposed rejection of claims 3 and 8 is adopted.
`
`Issue 34: Claims 11, 14 and 15 are alleged to be rendered obvious by Wang in
`
`view of Reed under 35 U.S.c. § 103.
`
`The proposed rejection of claims 11, 14 and 15 is adopted.
`
`Petitioner RPX Corporation - Ex. 1056, p. 16
`
`

`
`Application/Control Number: 95/001,679 & 95/001,682
`Art Unit: 3992
`
`Page 12
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`•
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`Issue 35: Claim 16 is alleged to be rendered obvious by Wang in view of Reed,
`
`and further in view of Boden under 35 U.S.c. § 103.
`
`The proposed rejection of claim 16 is adopted.
`
`Issue 36: Claim 17 is alleged to be rendered obvious by Wang in view of Weiss
`
`under 35 U.S.C. § 103.
`
`The proposed rejection of claim 17 is adopted.
`
`Issue 37: Claims 1-4,6-8,10,
`
`12, 13 and 18 is alleged to be rendered obvious by
`
`Beser in view of Kent under 35 U.S.c. § 103.
`
`The proposed rejection of claims 1-4, 6-8, 10, 12, 13 and 18 is adopted.
`
`Issue 38: Claims 3, 5, 8,9 and 18 is alleged to be rendered obvious by Beser in
`
`view of Kent, and further in view of Blum under 35 U.S.C. § 103.
`
`The proposed rejection of claims 3, 5, 8, 9 and 18 is adopted.
`
`Issue 39: Claims 3, 5, 8, 9 and 18 is alleged to be rendered obvious by Beser in
`
`view of Kent, and further in view of Aventail AutoSOCKS under 35 U.S.C. §
`
`103.
`
`The proposed rejection of claims 3, 5, 8,9 and 18 is adopted.
`
`Issue 40: Claim II is alleged to be rendered obvious by Beser in view of Kent,
`
`and further in view of Reed under 35 U.S.c. § 103.
`
`The proposed rejection of claim 11 is adopted.
`
`Issue 41 Claims 1-10,12-15 and 18 are alleged to be anticipated by BinGO under
`
`35 U.S.C. § 102(a).
`
`Petitioner RPX Corporation - Ex. 1056, p. 17
`
`

`
`Application/Control Number: 951001,679 & 951001,682
`Art Unit: 3992
`
`Page 13
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`The proposed rejection of claims 1-10, 12-15 and 18 is adopted.
`
`Issue 42: Claim 11 is alleged to be rendered obvious by BinGO in view of Reed
`
`under 35 U.S.C. § 103.
`
`The proposed rejection of claim 11 is adopted.
`
`Issue 43: Claim 16 is alleged to be rendered obvious by BinGO in view of Boden
`
`under 35 U.S.c. § 103.
`
`The proposed rejection of claim 16 is adopted.
`
`Issue 44: Claim 17 is alleged to be obvious over BinGO in view of Weiss under
`
`35 U.S.c. § 103.
`
`The proposed rejection of claim 17 is adopted.
`
`Claim Rejections
`
`- Detailed Explanation
`
`Issue 1
`
`Claims 1-4,7,
`§102 (b).
`
`It), 12-14 and 17 are alleged to be anticipated by Kiuchi under 35 Us.c.
`
`8.
`
`Claims 1-4,7,10 and 12 are rejected under 35 U.S.c. § 102(b) as being anticipated by
`
`Kiuchi. The proposed rejection of this claim set forth in the request
`
`is adopted.
`
`See pages 9 and
`
`10 and Exhibit E-J of the request, which are hereby incorporated by reference.
`
`Although the C-HTTP name server of Kiuchi appears to teach away from the claimed
`
`DNS: "In a C-HTTP-based network,
`
`instead of DNS, a C-HTTP-based secure, encrypted name
`
`Petitioner RPX Corporation - Ex. 1056, p. 18
`
`

`
`Application/Control Number: 95/001,679 & 95/001,682
`Art Unit: 3992
`
`Page 14
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`and certification service is used" (Kiuchi. Abstract) and "The DNS name service is not used for
`
`hostname resolution as the original secure name service,
`
`including certification,
`
`is used for the
`
`C-HTTP-based network" (Kiuchi, pg. 64), the C-HTTP name server of Kiuchi does in fact teach
`
`the same functionality of a service that returns an IP address for a requested domain name: (a)
`
`The client-side proxy sends the C-HTTP name server "the host specified in a given URL"
`
`(Kiuchi, pg. 65) and (b) In response,
`
`the C-HTTP name server "sends the IP address." (Kiuchi,
`
`pg. 65).
`
`9.
`
`Claims 13, 14 and 17 are rejected under 35 U.S.C. § 102(b) as being anticipated by
`
`Kiuchi. The proposed rejection of claims 13, 14 and 17 is adopted.
`
`See pages 9 and 10 and
`
`Exhibit E-l of the request, which are hereby incorporated by reference.
`
`The Kiuchi reference must be read carefully. Although Kiuchi does not use the exact
`
`language of the claims (e.g., "C-HTTP" instead of "VPN"),
`
`the request maps the language used
`
`by Kiuchi to the language of the claims and describes how every feature of 13, 14 and 17 is
`
`taught by Kiuchi.
`
`Issue 2
`
`Claims 5, 8 and 18 are alleged to be obvious over Kiuchi in view of Dalton under 35
`u.s.c. § 103.
`
`Petitioner RPX Corporation - Ex. 1056, p. 19
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`

`
`Application/Control Number: 95/001,679 & 95/001,682
`Art Unit: 3992
`
`Page 15
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`10.
`
`Claims 5, 8 and 18 are rejected under 35 U.S.c. § 103 as being obvious over Kiuchi in
`
`view of Dalton. The proposed rejection of this claim set forth in the request
`
`is adopted.
`
`See
`
`pages 9, 10 and 18 and Exhibit E-l of the request, which are hereby incorporated by reference.
`
`Although the C-HTTP name server of Kiuchi appears to teach away from the claimed
`
`DNS: "In a C-HTTP-based network,
`
`instead of DNS, a C-HTTP-based secure, encrypted name
`
`and certification service is used" (Kiuchi, Abstract)
`
`and "The DNS name service is not used for
`
`hostname resolution as the original secure name service,
`
`including certification,
`
`is used for the
`
`C-HTTP-based network" (Kiuchi. pg. 64), the C-HTTP name server of Kiuchi does in fact teach
`
`the same functionality of a service that returns an IP address for a requested domain name: (a)
`
`The client-side proxy sends the C-HTTP name server "the host specified in a given URL"
`
`(Kiuchi, pg. 65) and (b) In response,
`
`the C-HTTP name server "sends the IP address." (Kiuchi,
`
`pg. 65).
`
`Issue 3
`
`Claim 9 is alleged to be obvious over Kiuchi
`
`in view of Bellovin under 35 Us. C § 103.
`
`11.
`
`The proposed rejection of claim 9 set forth in the request is not adopted.
`
`Claim 9 depends upon claim 1 and the proposed rejection of claim 9 is not adopted for
`
`reasons described for parent claim 1 in Issue 1, above. The combination of Kiuchi with Bellovin
`
`does not overcome the explicit teachings of Kiuchi that a different type of service is used to
`
`resolve a host name in the secure C-HTTP environment.
`
`Petitioner RPX Corporation - Ex. 1056, p. 20
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`

`
`Application/Control Number: 95/001,679 & 95/001,682
`Art Unit: 3992
`
`Page 16
`
`12.
`
`Claim 9 is rejected under 35 U.S.c. § 103 as being obvious over Kiuchi in view of
`
`Bellovin. The proposed rejection of this claim set forth in the request
`
`is adopted.
`
`See pages 9,
`
`10 and 18 and Exhibit E-l of the request, which are hereby incorporated by reference.
`
`Although the C-HTTP name server of Kiuchi appears to teach away from the claimed
`
`ONS: "In a C-HTTP-based network,
`
`instead ofONS, a C-HTTP-based secure, encrypted name
`
`and certification service is used" (Kiuchi, Abstract) and "The ONS name service is not used for
`
`hostname resolution as the original secure name service,
`
`including certification,
`
`is used for the
`
`C-HTTP-based network" (Kiuchi, pg. 64), the C-HTTP name server of Kiuchi does in fact teach
`
`the same functionality of a service that returns an IP address for a requested domain name: (a)
`
`The client-side proxy sends the C-HTTP name server "the host specified in a given URL"
`
`tKiuchi, pg. 65) and (b) In response,
`
`the C-HTTP name server "sends the IP address." (Kiuchi,
`
`pg. 65).
`
`§ 103.
`
`Issue 4
`
`Claims 6 and 11 are alleged to be obvious over Kiuchi in view of Martin under 35 u.s. C.
`
`Petitioner RPX Corporation - Ex. 1056, p. 21
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`

`
`Application/Control Number: 95/001,679 & 95/001,682
`Art Unit: 3992
`
`Page 17
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`13.
`
`Claims 6 and II are rejected under 35 U.S.C. § 103 as being obvious over Kiuchi in view
`
`of Martin. The proposed rejection of this claim set forth in the request
`
`is adopted.
`
`See pages 9,
`
`10 and 17 and Exhibit E~1 of the request, which are hereby incorporated by reference.
`
`Although the C-HTTP name server of Kiuchi appears to teach away from the claimed
`
`DNS: "In a C~HTTP-based network,
`
`instead ofDNS, a C-HTTP-based secure, encrypted name
`
`and certification service is used" tKiuchi, Abstract)
`
`and "The DNS name service is not used for
`
`hostname resolution as the original secure name service,
`
`including certification,
`
`is used for the
`
`C-HTTP-based network" (Kiuchi. pg. 64), the C-HTTP name server of Kiuchi does in fact teach
`
`the same functionality of a service that returns an IP address for a requested domain name: (a)
`
`The client-side proxy sends the C-HTTP name server "the host specified in a given URL"
`
`(Kiuchi, pg. 65) and (b) In response,
`
`the C-HTTP name server "sends the IP address." (Kiuchi,
`
`pg. 65).
`
`Issue 5
`
`Claims 1-5, 7-10,12-13
`u.s.c. § 102 (e).
`
`and 18 are alleged to be anticipated
`
`by Wesinger under 35
`
`14.
`
`Claims 1-5,7-10,12-13
`
`and 18 are rejected under 35 U.S.c. § 102(e) as being anticipated
`
`by Wesinger. The proposed rejection of this claim set forth in the request is adopted.
`
`See pages
`
`10-12 and Exhibit E-2 of the request, which are hereby incorporated by reference.
`
`Petitioner RPX Corporation - Ex. 1056, p. 22
`
`

`
`Application/Control Number: 95/001,679 & 95/001,682
`Art Unit: 3992
`
`Issue 6
`
`Page 18
`
`Claims 6 and 11 are alleged to be obvious over Wesinger in view of Martin under 35
`u.s.c. § 103.
`
`15.
`
`Claims 6 and 11 are rejected under 35 U.S.c. § 103 as being unpatentable over We singer
`
`in view of Martin. The proposed rejection of this claim set forth in the request
`
`is adopted. See
`
`pages 10-12 and 17 and Exhibit E-2 of the request, which are hereby incorporated by reference.
`
`Issue 7
`
`Claims 13-15 are alleged to be anticipated by Solana under 35 u.s.C. § 102(b).
`
`16.
`
`Claims 13-15 are rejected under 35 U.S.C. § 102(e) as being anticipated by Solana. The
`
`proposed rejection of this claim set forth in the request is adopted. See pages 12-15 and Exhibit
`
`E-3 of the request, which are hereby incorporated by reference.
`
`Issue 8
`
`Claims 1-5, 7-8, 10, 12 and 18 are alleged to be obvious over Solana in view of Kiuchi
`under 35 o.s.c. § 103.
`
`Petitioner RPX Corporation - Ex. 1056, p. 23
`
`

`
`Application/Control Number: 95/001,679 & 95/001,682
`Art Unit: 3992
`
`Page 19
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`17.
`
`Claims 1-5,7-8,10,12
`
`and 18 are rejected under 35 U.S.c. § 103 as being obvious over
`
`Solana in view of Kiuchi. The proposed rejection of this claim set forth in the request is
`
`adopted. See pages 9,10 and 12-15 and Exhibit E-3 of the request, which are hereby
`
`incorporated by reference.
`
`Although the C-HTTP name server of Kiuchi appears to teach away from the claimed
`
`DNS: "In a C-HTTP-based network,
`
`instead ofDNS, a C-HTTP-based secure, encrypted name
`
`and certification service is used" tKiuchi, Abstract) and "The DNS name service is not used for
`
`hostname resolution as the ori