`
`PATENT
`
`In re Application of:
`
`Customer Number:
`
`Victor Larson
`
`Confirmation Number: 3528
`
`Serial No.: 111679,416
`
`Group Art Unit: 2453
`
`Filed: February 27, 2007
`
`Examiner: Krisna Lim
`
`For:
`
`Attorney Reference No:
`
`METHOD FOR
`ESTABLISHING SECURE
`COMMUNICATION LINK
`BETWEEN COMPUTERS
`OF VIRTUAL PRIVATE
`NETWORK
`
`Sir:
`
`077580-0015 (VRNK-1CP2DVCN)
`
`FILED VIA EFS-WEB
`
`RESPONSE/AMENDMENT "B"
`
`In response to the final Office Action dated April 8, 2010, it is respectfully requested that
`
`the time for response to the Office Action be extended for three (3) months to October 8, 2010,
`
`and reconsideration and further examination of the above-identified application are respectfully
`
`requested based on the following:
`
`Amendments to the Claims are reflected in the listing of claims, which begins on page 2 of this
`
`paper.
`
`Remarks/Arguments begin on page 7 of this paper.
`
`AMENDMENTS TO THE CLAIMS
`
`Page 1 of 12
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`Petitioner Apple - Ex. 1073, p. 1
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`
`
`Serial No. 111679,416
`Amendment B
`
`This listing of claims will replace all prior versions, and listings, of claims in the
`
`application:
`
`LISTING OF CLAIMS:
`
`1. (Cancelled)
`
`2. (Currently Amended) A method of communicating using a first device to communicate with
`
`a second device having a secure name, the method comprising:
`
`from the first device, sending a message to a secure name service, the message requesting
`
`[[an]] 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.
`
`3. (Currently Amended) The method according to claim 2, wherein the secure name of the
`
`second device is a secure domain namefurther including supporting a plurality of services
`
`through the secure communication link.
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`4. (Previously Presented) The method according to claim 2, wherein the secure name indicates
`
`security.
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`5. (Currently Amended) The method according to claim 2, wherein receiving the message
`
`containing the network address associated with the secure name of the second device includes
`
`receiving the message in encrypted form.
`
`6. (Previously Presented) The method according to claim 5, further including decrypting the
`
`message.
`
`7. (Currently Amended) The method according to claim 2, wherein the second device is capable
`
`of supporting a secure communication link as well as a non-secure communication link, the
`
`method further including establishing a non-secure communication link with the second device
`
`when needed ...
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`Page 2 of 12
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`Petitioner Apple - Ex. 1073, p. 2
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`
`
`Serial No. 111679,416
`Amendment B
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`8. (Currently Amended) The method according to claim 2, wherein receiving a message
`
`containing the network address associated with the secure name of the device includes receiving
`
`the network address as an IP address associated with the secure name of the device.
`
`9. (Previously Presented) The method according to claim 2, further including automatically
`
`initiating the secure communication link after it is enabled.
`
`10.
`
`(Currently Amended) The method according to claim 2, wherein receiving a message
`
`containing the network address associated with the secure name of the device includes receiving
`
`the message at the first device through tunneling within the secure communication link.
`
`11.
`
`(Currently Amended) The method according to claim 2, wherein receiving a message
`
`containing the network address associated with the secure name of the device includes receiving
`
`the message in the form of at least one tunneled packet.
`
`12.
`
`(Previously Presented) The method according to claim 2, wherein the receiving and
`
`sending of messages includes receiving and sending the messages in accordance with any one of
`
`a plurality of communication protocols.
`
`13.
`
`(Currently Amended) The method according to claim 2, wherein the receiving an and
`
`sending of messages through the secure communication link includes multiple sessions.
`
`14.
`
`(Previously Presented) The method according to claim 2, further including supporting a
`
`plurality of services over the secure communication link.
`
`15.
`
`(Previously Presented) The method according to claim 14, wherein the plurality of
`
`services comprises a plurality of communication protocols, a plurality of application programs,
`
`multiple sessions, or a combination thereof.
`
`16.
`
`(Previously Presented) The method according to claim 15, wherein the plurality of
`
`application programs comprises video conferencing, e-mail, a word processing program,
`
`telephony or a combination thereof.
`
`17.
`
`(Previously Presented) The method according to claim 15, wherein the plurality of
`
`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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`
`
`Serial No. 111679,416
`Amendment B
`
`18.
`
`(Previously Presented) The method according to claim 2, wherein the secure
`
`communication link is an authenticated link.
`
`19.
`
`(Currently Amended) The method according to claim 2, wherein the first device is a
`
`computer, and the steps are performed on the computer.
`
`20.
`
`(Currently Amended) The method according to claim 2, wherein the first device is a
`
`client computer connected to a communication network, and the method is performed by the
`
`client computer on the communication network.
`
`21.
`
`(Currently Amended) The method according to claim 2, further including providing an
`
`unsecure unsecured name associated with the device.
`
`22.
`
`(Currently Amended) The method according to claim 2, wherein the secure name is
`
`registered prior to the step of sending a message to a secure name service.
`
`23.
`
`(Currently Amended) The method according to claim 2, wherein the secure name of the
`
`second device is a secure, non-standard domain name.
`
`\Vherein sending a message to a name service comprises sending a first message from a
`
`first device to the name service, the first message requesting from the name service the address
`
`associated with the secure name of the device,
`
`wherein receiving a message comprises receiving at the first device a second message
`
`from the name service, the second message containing the address associated with the secure
`
`name of the device, and
`
`v1herein sending a message to the address comprises sending a third message from the
`
`first device to the address associated \'o'ith the secure name of the device using the secure
`
`communication linl<.
`
`24.
`
`(Currently Amended) A method fer-of using a first device to securely communicate
`
`communicating with a second device overifr. a communication network, the device having a
`
`secure name, the method comprising:
`
`at the first device requesting and obtaining registration of a secure name of-afor the first
`
`device, the secure name being associated with [[an]] a network address;
`
`Page 4 of 12
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`Petitioner Apple - Ex. 1073, p. 4
`
`
`
`Serial No. 111679,416
`Amendment B
`
`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.
`
`25.
`
`(Currently Amended) The method according to claim 24, wherein requesting and
`
`obtaining registration of a secure name ef.a-for the first device comprises requesting from using
`
`the first device to obtain a registration of the secure name ef-the-for the first device, and wherein
`
`sending a message securely comprises sending the message from the first device to the second
`
`device using a secure communication link.
`
`26.
`
`(Currently Amended) A method for communicatingofusing a first device to
`
`communicate with a second device ffi-over a communication network, the device associated with
`
`a secure name and an unsecured name, the method comprising:
`
`from the first device requesting and obtaining registration of an unsecured name
`
`associated with athe first device;
`
`from the first device requesting and obtaining registration of a secure name associated
`
`with the first device, wherein [[an]] a unique network address corresponds to the secure name
`
`associated with the first device;
`
`receiving at the unique network address associated with the secure name a message from
`
`a second device requesting the desire to securely communicate with the first device; and
`
`from the first device sending a message securely from the first device to the second
`
`device.
`
`27.
`
`(Currently Amended) The method according to claim 26,
`
`wherein requesting and obtaining registration of an unsecured name associated with athe
`
`first device comprises requesting from using the first device to obtain a registration of the
`
`unsecured name associated with the first device, and
`
`wherein requesting and obtaining registration of a secure name associated with the first
`
`device comprises requesting from using the first device to obtain a registration of the secure
`
`name associated with the first device.
`
`28.
`
`(Currently Amended) A non-transitory machine-readable medium comprising
`
`instructions for:
`
`Page 5 of 12
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`Petitioner Apple - Ex. 1073, p. 5
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`
`
`Serial No. 11/679,416
`Amendment B
`
`sending a message to a secure name service, the message requesting [[an]] a network
`
`address associated with a secure name of a device;
`
`receiving a message containing the network address associated with the secure name of
`
`the device; and
`
`sending a message to the network address associated with the secure name of the device
`
`using a secure communication link.
`
`29.
`
`(Currently Amended) A non-transitory machine-readable medium comprising
`
`instructions for a method fur-of communicating with a device having a secure name, the method
`
`compnsmg:
`
`receiving at [[an]] a network address associated with a secure name of a first device a
`
`message from a second device requesting the desired to securely communicate with the first
`
`device, wherein the secure name of the first device is registered; and
`
`sending a message securely from the first device to the second device.
`
`30.
`
`(Currently Amended) A non-transitory machine-readable medium comprising
`
`instructions for a method fur-of communicating with a first device associated with a secure name
`
`and an unsecured name, the method comprising:
`
`receiving, at [[an]] a network address corresponding to a-the secure name associated with
`
`athe first device, a message from a second device of the desired to securely communicate with
`
`the first device, 'Wherein an unsecured name is associated with the first device, and the secure
`
`name and the unsecured name are registered; and
`
`sending a message securely over a secure communication link from the first device to the
`
`second device.
`
`Page 6 of 12
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`Petitioner Apple - Ex. 1073, p. 6
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`
`
`Serial No. 11/679,416
`Amendment B
`
`REMARKS/ARGUMENTS
`
`Claims 2-30 remain in the application, of which claims 2, 24, 26, 28, 29, and 30 are the
`
`independent claims. Claims 2, 3, 5, 7, 8, 10, 11, 13, 19-30 have been amended to more clearly
`
`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
`
`respectfully requested.
`
`The changes to the application are fully supported by the original disclosure, including,
`
`for example, original paragraphs [0313] to [0331].
`
`Objection to the Specification
`
`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
`
`"non-transitory" to claims 28-30 does not raise the issue of new subject matter. Because claims
`
`28-30 have been amended to recite "non-transitory," the Applicant respectfully submits that this
`
`objection is moot.
`
`Rejection under 3 5 U.S. C. § 112, second paragraph
`
`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
`
`Applicant regards as the invention .. The rejection is respectfully traversed, and reconsideration
`
`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
`
`sent. It states that is also unclear what kind of "name service" is being claimed (i.e., a secure
`
`Page 7 of 12
`
`Petitioner Apple - Ex. 1073, p. 7
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`
`
`Serial No. 11/679,416
`Amendment B
`
`domain name service? A domain name service?). It further states that it is also unclear what kind
`
`of address is being claimed (i.e., an address for a secure computer network?). It further states
`
`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:
`from the 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
`
`message" to so that it can send a message over "a secure communication link."
`
`Second, the Applicant has amended "name service" to read "secure name service." This
`
`secure name service is a service for resolving secure names into network addresses. This secure
`
`name service offers functionality that cannot be accomplished by a standard domain name
`
`service.
`
`Third, the Applicant has amended "address" to read "network address." This network
`
`address is one that is associated with a device connected to a communications network. It is not
`
`limited to an address of a secure computer network, as suggested in the Office Action. A
`
`network address can be associated with any device registered on a network, including, but not
`
`limited to, web servers, mobile handsets, and/or computers.
`
`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
`
`Page 8 of 12
`
`Petitioner Apple - Ex. 1073, p. 8
`
`
`
`Serial No. 111679,416
`Amendment B
`
`unclear for similar reasons. Accordingly the Applicant respectfully requests withdrawal of these
`
`rejections and reconsideration of claims 2-23.
`
`Regarding claim 24, the Office Action states that "secure name" is unclear, and questions
`
`whether this is a secure domain name. It further states that it is unclear what kind of address is
`
`being claimed. It further states that it is unclear what kind of the first device and second device
`
`are being claimed, and whether they are the same or different.
`
`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 ofthe 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
`
`submits that a "secure name" is a name associated with a network address of a first device. The
`
`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
`
`(e.g., .scorn) or a telephone number.
`
`Second, the Applicant has amended "address" to read "network address." This network
`
`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
`
`Page 9 of 12
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`Petitioner Apple - Ex. 1073, p. 9
`
`
`
`Serial No. 111679,416
`Amendment B
`
`can be associated with any device registered on a network, including, but not limited to, web
`
`servers, mobile handsets, and computers.
`
`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.
`
`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
`
`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 3 5 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
`
`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]."
`
`Page 10 of 12
`
`Petitioner Apple - Ex. 1073, p. 10
`
`
`
`Serial No. 111679,416
`Amendment B
`
`Accordingly, the Applicant respectfully requests reconsideration and withdrawal of these
`
`rejections.
`
`Non-Statutory Obviousness-Type Double Patenting 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 U.S. 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.
`
`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
`
`U.S. Patent Application Serial No. 111839,987. 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
`
`as an intent to concede, or an actual concession of, any issue with regard to any claim, or any
`
`cited art, except as specifically stated in this paper, and the amendment or cancellation of any
`
`claim does not necessarily signify concession of unpatentability of the claim prior to its
`
`amendment or cancellation.
`
`Page 11 of 12
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`Petitioner Apple - Ex. 1073, p. 11
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`
`
`Serial No. 111679,416
`Amendment B
`
`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, for an
`
`Extension of Time (three-months) Under 37 CFR 1.136, and for any other fees that may be
`
`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 1659565-2.077580.0015
`
`Page 12 of 12
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`Petitioner Apple - Ex. 1073, p. 12
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`
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`PTO/SB/06 (07-06)
`Approved for use through 1/31/2007. OMB 0651-0032
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number.
`PATENT APPLICATION FEE DETERMINATION RECORD
`Application or Docket Number
`Filing Date
`11/679,416
`Substitute for Form PT0-875
`
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`
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`N/A
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`N/A
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`N/A
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`N/A
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`N/A
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`N/A
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`X$
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`N/A
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`CLAIMS
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`
`=
`
`OR X$
`
`OR X$
`
`=
`
`=
`
`OR
`
`<(
`
`TOTAL
`TOTAL
`ADD'L
`ADD'L
`FEE
`FEE
`Legal Instrument Examiner:
`/DIANE WILLIAMS/
`
`OR
`
`* If the entry in column 1 is less than the entry in column 2, write "0" in column 3.
`•• If the "Highest Number Previously Paid For" IN THIS SPACE is less than 20, enter "20".
`••• If the "Highest Number Previously Paid For" IN THIS SPACE is less than 3, enter "3".
`The "Highest Number Previously Paid For" (Total or Independent) is the highest number found in the appropriate box in column 1.
`Th1s collect1on of mformat1on IS requ1red by 37 CFR 1.16. The mformat1on IS requ1red to obtam or retam a benefit by the public wh1ch IS to f1le (and by the USPTO to
`process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.14. This collection is estimated to take 12 minutes to complete, including gathering,
`preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Any comments on the amount of time you
`require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer, U.S. Patent and Trademark Office, U.S.
`Department of Commerce, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS TO THIS
`ADDRESS. SEND TO: Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
`If you need assistance in completing the form, call 1-800-PT0-9199 and select option 2.
`
`Petitioner Apple - Ex. 1073, p. 13