Docket No. 0775 80—01 16 (VRNK— 1CP3CON3)
`
`PATENT
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES
`
`In re Application of:
`
`: Customer No.: 23630
`
`Victor Larson, et al.
`
`Group Art Unit: 2453
`
`Application No.: 13/049,552
`
`Examiner: Krisna Lim
`
`Filed: March 16, 2011
`
`Confirmation No.: 1902
`
`For:
`
`AGILE NETWORK PROTOCOL
`
`FOR SECURE COMMUNICATIONS
`
`USING SECURE DOMAIN NAMES
`
`Mail Stop Appeal Brief — Patents
`Commissioner for Patents
`
`PO. Box 1450
`
`Alexandria, VA 22313—1450
`
`TRANSMITTAL OF APPEAL BRIEF
`
`Commissioner:
`
`Submitted herewith is Appellants’ Appeal Brief in support of the Notice of Appeal filed
`
`February 25, 2013.
`
`To the extent necessary, a petition for an extension of time under 37 C.F.R. 1.136 is
`
`hereby made. Please charge any shortage in fees due under 37 C.F.R. 1.17 §§ and 41.20, and in
`
`connection with the filing of this paper, including extension of time fees, to Deposit Account
`
`501133 and please credit any excess fees to such deposit account.
`
`Date: April 25, 2013
`
`DMiUS 42395829—1 077580.0116
`
`Respectfully submitted,
`
`McDERMOTT WILL & EMERY LLP
`
`/Toby H. Kusmer/
`Toby H. Kusmer, P.C., Reg. No. 26,418
`Customer No. 23630
`
`28 State Street
`
`Boston, MA 02109—1775
`
`Telephone: (617) 535—4000
`Facsimile : (617) 535—3800
`E—mail:
`tkusmer@mwe.com
`
`Petitioner Apple Inc. - Exhibit 1054, p. 1
`
`Petitioner Apple Inc. - Exhibit 1054, p. 1
`
`

`

`Application No.: 13/049,552
`
`PATENT
`
`Docket No. 0775 80—01 16 (VRNK— 1CP3CON3)
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES
`
`In re Application of:
`
`: Customer No.: 23630
`
`Victor Larson, et al.
`
`Group Art Unit: 2453
`
`Application No.: 13/049,552
`
`Examiner: Krisna Lim
`
`Filed: March 16, 2011
`
`Confirmation No.: 1902
`
`For:
`
`AGILE NETWORK PROTOCOL
`
`FOR SECURE COMMUNICATIONS
`
`USING SECURE DOMAIN NAMES
`
`Mail Stop Appeal Brief — Patents
`Commissioner for Patents
`
`PO. Box 1450
`
`Alexandria, VA 22313—1450
`
`APPEAL BRIEF UNDER 37 C.F.R.
`
`41.37
`
`Commissioner:
`
`In support of the Notice of Appeal filed February 25, 2013, and further to 37 C.F.R.
`
`§ 41.37, Appellant presents this brief.
`
`This Appeal responds to the November 23, 2012, final rejection of claims 4—25.
`
`If any additional fees are required or if the enclosed payment is insufficient, Appellant
`
`requests that the required fees be charged to deposit account 501133.
`
`DMiUS 42395829—1 0775800116
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`2
`
`Petitioner Apple Inc. - Exhibit 1054, p. 2
`
`Petitioner Apple Inc. - Exhibit 1054, p. 2
`
`

`

`Application No.: 13/049,552
`
`TABLE OF CONTENTS
`
`I.
`
`REAL PARTY IN INTEREST ............................................................................................... 1
`
`II. RELATED APPEALS AND INTERFERENCES ................................................................. 2
`
`III. STATUS OF CLAIMS ........................................................................................................... 4
`
`IV. STATUS OF AMENDMENTS .............................................................................................. 5
`
`V.
`
`SUMMARY OF CLAIMED SUBJECT MATTER ............................................................... 6
`
`A.
`
`B.
`
`Independent Claim 4 ......................................................................................... 6
`
`Independent Claim 16 ....................................................................................... 7
`
`VI. GROUNDS OF REJECTION ................................................................................................. 9
`
`VII. ARGUMENT ........................................................................................................................ 10
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`Overview of Wesinger .................................................................................... 10
`
`Independent Claim 4 Is Allowable over Wesinger ......................................... 12
`l. Wesinger Does Not Disclose or Suggest Determining that the DNS
`Request Corresponds to One or More Computers Configured to
`Communicate Securely .................................................................................... l2
`2. Wesinger Does Not Disclose or Suggest Sending, Based on the
`Determination that the DNS Request Corresponds to One or More
`Computers Configured to Communicate Securely, a Request to
`Establish a VPN Communication Link ............................................................ l4
`
`3. Wesinger Does Not Disclose or Suggest Receiving, in Response to the
`Request to Establish a VPN Communication Link, a Resource for
`Establishing the VPN Communication Link and Automatically
`Establishing the VPN Communication Link Using the Received
`Resource ........................................................................................................... 15
`
`4. The Final Office Action’s Obviousness Analysis Is Deficient ........................ l5
`5. Conclusion: Claim 4 Is Allowable over Wesinger .......................................... 16
`
`Dependent Claims 5—15 Are Allowable over Wesinger .................................. 16
`
`Independent Claim 16 Is Allowable over Wesinger ....................................... l7
`1. The Rejection of Claim 16 Should Be Reversed for at Least the Same
`Reasons Set Forth Above for Claims 4—15 ...................................................... l7
`
`2. The Rejection of Claim 16 Should Be Reversed Because the Examiner
`Failed to Address Each and Every Limitation of the Claim ............................ 18
`3. Conclusion: Claim 16 Is Allowable over Wesinger ........................................ 18
`
`Dependent Claims l7—25 Are Allowable over Wesinger ................................ 18
`
`Dependent Claims 6 and 17 Are Allowable over Wesinger ........................... l9
`
`DMiUS 42395829—10775800116
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`1
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`Petitioner Apple Inc. - Exhibit 1054, p. 3
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`Petitioner Apple Inc. - Exhibit 1054, p. 3
`
`

`

`Application N0.: 13/049,552
`
`G.
`
`Dependent Claims 7 and 19 Are Allowable over Wesinger ........................... 19
`
`VIII.CONCLUSION ..................................................................................................................... 21
`
`APPENDICES
`
`IX. CLAIMS APPENDIX TO APPEAL BRIEF ........................................................................ 22
`
`X. EVIDENCE APPENDIX TO APPEAL BRIEF ................................................................... 26
`
`XI. RELATED PROCEEDINGS APPENDIX TO APPEAL BRIEF ........................................ 27
`
`DMiUS 42395829—1.077580.0116
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`ii
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`Petitioner Apple Inc. - Exhibit 1054, p. 4
`
`Petitioner Apple Inc. - Exhibit 1054, p. 4
`
`

`

`Application No.: 13/049,552
`
`1.
`
`Real Party in Interest
`
`The real party in interest is VIRNETX, INC. by way of the assignment recorded on
`
`January 28, 2012, at Reel 027613, Frame 0168.
`
`DMiUS 42395829—1 0775800116
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`1
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`Petitioner Apple Inc. - Exhibit 1054, p. 5
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`Petitioner Apple Inc. - Exhibit 1054, p. 5
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`

`

`Application No.: 13/049,552
`
`11.
`
`Related Appeals and Interferences
`
`In accordance with 37 CPR. §41.37(c)(1)(ii), Appellant advises the Patent Trial and
`
`Appeal Board of the following pending appeals, interferences, or judicial proceedings which may
`
`be related to, directly affect or be directly affected by or have a bearing on the Board’s decision
`
`in the instant appeal
`
`PTO Appeals Involving the Munger Family1
`
`
`Control No.
`
`Patent No.
`
` 95/001,746
`
`6,839,759
`
`Prior ,Iudicial Proceedings Involving Other Patents in the Munger Family
`
`Title
`
`Case No. & Forum
`
`No 6:07—cv—00080 (E.D. Tex.)
`VirnetX Inc. and Science Applications Int’l Corp.
`
`v. Microsoft Corp.
`
` No 6:07—cv—00094 (E.D. Tex.)
`
` No. 6:11—cv—00018 (E.D. Tex.)
`
`
`
`VirnetX Inc. v. Microsoft Corp.
`
`In the Matter of Certain Devices with Secure
`Communication Capabilities, Components
`
`Thereof, and Products Containing the Same
`
`337—TA—818 (Int’l Trade Comm’n)
`
`Pending ,ludicial Proceedings Involving Other Patents in the Munger Family
`
`Case No. & Forum
`Title
`
`
`VirnetX Inc. and Science Applications Int’l Corp.
`
`No. 6:10—cv—00417 (E.D. Tex.)
`
`v. Cisco Systems, Inc., Apple Inc., Aastra USA,
`Inc., Aastra Technologies Ltd., NEC Corp., and
`
`NEC Corp. ofAmerica.
`
`VirnetX Inc. and Science Applications Int’l Corp.
`
`v. Mitel Networks Corp., Mitel Networks, Inc.,
`Siemens AG, Siemens Corp., Siemens Enterprise
`Communications Gth & Co. KG, Siemens
`
`Enterprise Communications, Inc., and Avaya Inc.
` VirnetX Inc. and Science Applications Int’l Corp.
`No. 6:12—cv-00855 (E.D. Tex.)
`
`1 “Munger family” refers to the family of patents related to the present application.
`
`DMpUS 42395829—1 0775800116
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`2
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`Petitioner Apple Inc. - Exhibit 1054, p. 6
`
`Petitioner Apple Inc. - Exhibit 1054, p. 6
`
`

`

`
`
`Application N0.: 13/049,552
`
`Case No. & Forum
`Title
`
`
`v. Apple Inc.
`
`VirnetX Inc. and Science Applications Int’l Corp.
`v. Apple Inc.
`
`VirnetX Inc. and Science Applications Int’l Corp.
`v. Microsoft Corp.
`
`N0. 6:13—CV—00211 (E.D. TeX.)
`
`N0. 6:13—CV—00351 (E.D. TeX.)
`
`
`
`In the Matter of Certain Devices with Secure
`
`337—TA—858 (Int’l Trade Comm’n)
`
`Communication Capabilities, Components
`Thereof, and Products Containing the Same
`
`DMiUS 42395829—1 0775800116
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`3
`
`Petitioner Apple Inc. - Exhibit 1054, p. 7
`
`Petitioner Apple Inc. - Exhibit 1054, p. 7
`
`

`

`Application No.: 13/049,552
`
`111.
`
`Status of Claims
`
`Claims 4—25 stand rejected in the final Office Action mailed November 23, 2012.
`
`Specifically, the final Office Action rejects claims 4—25 under 35 U.S.C. § 103(a) as allegedly
`
`being unpatentable over U.S. Patent No. 5,898,830 to Wesinger, Jr. et al.
`
`No claims stand allowed. Appellant appeals the rejections of claims 4—25.
`
`The claims are copied in the Claims Appendix to this Appeal Brief.
`
`DMiUS 42395829—1 0775800116
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`4
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`Petitioner Apple Inc. - Exhibit 1054, p. 8
`
`Petitioner Apple Inc. - Exhibit 1054, p. 8
`
`

`

`Application No.: 13/049,552
`
`IV.
`
`Status of Amendments
`
`Appellant did not file any amendment subsequent to the November 23, 2012, final Office
`
`Action. The currently pending claims are those presented in the Amendment filed September 11,
`
`2012, in response to the April 11, 2012 non—final Office Action.
`
`DMiUS 42395829—1 0775800116
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`5
`
`Petitioner Apple Inc. - Exhibit 1054, p. 9
`
`Petitioner Apple Inc. - Exhibit 1054, p. 9
`
`

`

`Application No.: 13/049,552
`
`V.
`
`Summary of Claimed Subject Matter
`
`Claims 4 and 16 are the only independent claims among the appealed claims 4—25. None
`
`of the appealed claims includes any means plus function or step plus function language.
`
`Appellant sets forth below a concise explanation of the subject matter of the independent claims
`
`on appeal, referring to the original specification by page and line number, and to the drawings by
`
`figure number and reference characters.
`
`The following summary of the presently claimed subject matter indicates portions of the
`
`specification (including the drawings) that provide examples of embodiments of elements of the
`
`claimed subject matter.
`
`It is to be understood that other portions of the specification not cited
`
`herein may also provide examples of embodiments of elements of the claimed subject matter.
`
`It
`
`is also to be understood that the indicated examples are merely examples, and the scope of the
`
`claimed subject matter includes alternative embodiments and equivalents thereof within the
`
`scope of the claim language. References herein to the specification are thus intended to be
`
`exemplary and not limiting.
`
`A. Independent Claim 4
`
`Independent claim 4 is directed to a system for establishing a virtual private network
`
`(VPN) communication link.
`
`(See, e.g., specification at Fig. 26, 58:20—25.) The system includes
`
`a storage device having instructions stored thereon and one or more processors configured to
`
`execute the instructions (see, e.g., id. at Fig. 26, 2601, 2602, 2603; see also id. at 58:20-25) to:
`
`(l) generate a Domain Name Service (DNS) request (see, e.g.,
`
`id. at 58:9—10, 58:20—22,
`
`58:27—28, 59:10—13, 59:26—27; see also id. at 57:18—19, Fig. 27 step 2701);
`
`(2) determine that the DNS request corresponds to one or more computers configured to
`
`communicate securely (see, e.g., id. at 58:9—11, 58:27—28, 59:28—29, Fig. 27 step 2702);
`
`DMiUS 42395829—1 0775800116
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`6
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`Petitioner Apple Inc. - Exhibit 1054, p. 10
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`Petitioner Apple Inc. - Exhibit 1054, p. 10
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`

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`Application No.: 13/049,552
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`(3) send, based on the determination, a request to establish a VPN communication link with a
`
`first computer of the one or more computers configured to communicate securely, the
`
`request including an identifier of a client device used for determining Whether the client
`
`device is authorized to communicate with the first computer (see, e.g., id. at 58:10—13,
`
`58:28—59:3, 60:3—ll, 60:20—61:2);
`
`(4) receive, in response to the request to establish a VPN communication link, a resource for
`
`establishing the VPN communication link (see,
`
`e.g.,
`
`id.
`
`at 59:3—9, 59:17—20,
`
`60:13—17, 60:28—61:2); and
`
`(5) automatically establish the VPN communication link with the first computer using the
`
`received resource (see, e.g.,
`
`id. at 58:10—15, 59:3—9, 17-20, 60:13—19, 60:28—61:2,
`
`Fig. 27, step 2706).
`
`B. Independent Claim 16
`
`Independent claim 16 is directed to a system for establishing a virtual private network
`
`(VPN) communication link.
`
`(See, e.g., id. at Fig. 26, 58:20—25.) The system includes storage
`
`configured to store client device identifiers and one or more processors (see, e.g., id. at Fig. 26,
`
`2601, 2602, 2603, 60:5—8; see also id. at 58:20—25) configured to:
`
`(1) receive a request to communicate securely, the request including an identifier of a client
`
`device, the request having been sent in response to a determination that a DNS request
`
`from the client device corresponds to a first computer configured to communicate
`
`securely (see, e.g., id. at 58:27—59:3; see also 60:25—6lz2);
`
`(2) compare the received client device identifier to one or more of the stored client device
`
`identifiers (see, e.g., id. at Fig. 27 step 2704, 60:3-7);
`
`(3) determine, based on the comparison, Whether
`
`the client device is authorized to
`
`communicate with the first computer (see, e.g., id. at Fig. 27 step 2704, 60:3—7); and
`
`DMiUS 42395829—1 0775800116
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`7
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`Petitioner Apple Inc. - Exhibit 1054, p. 11
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`Petitioner Apple Inc. - Exhibit 1054, p. 11
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`

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`Application No.: 13/049,552
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`(4) in response to determining that the client device is authorized to communicate with the
`
`first computer, make a resource available to the client deVice for automatically
`
`establishing the VPN communication link between the client deVice and the first
`
`computer
`
`(see,
`
`e.g.,
`
`id.
`
`at
`
`Fig.
`
`27
`
`step
`
`2706,
`
`60:13—19,
`
`60:25—6lz2).
`
`DMiUS 42395829—1 0775800116
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`8
`
`Petitioner Apple Inc. - Exhibit 1054, p. 12
`
`Petitioner Apple Inc. - Exhibit 1054, p. 12
`
`

`

`Application No.: 13/049,552
`
`VI.
`
`Grounds of Rejection to be Reviewed on Appeal
`
`Whether claims 4—25 are unpatentable under 35 U.S.C. § 103(a) over US. Patent No.
`
`5,898,830 to Wesinger, Jr. et al. (“Wesinger”).
`
`DMiUS 42395829—1 0775800116
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`9
`
`Petitioner Apple Inc. - Exhibit 1054, p. 13
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`Petitioner Apple Inc. - Exhibit 1054, p. 13
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`

`

`Application No.: 13/049,552
`
`VII. Argument
`
`The final Office Action rejects claims 4—25 under 35 U.S.C. § 103(a) as allegedly being
`
`unpatentable over Wesinger. As discussed in greater detail below, Wesinger’s firewall—based
`
`system is different than the invention claimed in claims 4—25 and Wesinger does not disclose
`
`many of the features recited in the claims.
`
`The Examiner’s analysis in the final Office Action does not establish a prima facie case
`
`of obviousness for any claim for several reasons. First, the final Office Action includes pincites
`
`to irrelevant portions of Wesinger that have nothing to do with the recited claim language.
`
`Second, the final Office Action offers no explanation as to why the cited portions purportedly
`
`disclose the claimed features. Moreover, as discussed below, the obviousness rationale provided
`
`in the Final Office Action is defective because it is merely conclusory and lacks any rationale
`
`underpinning.
`
`Because the Examiner failed to establish a prima facie case of obviousness for any of
`
`claims 4—25, and because Wesinger does not disclose or suggest each and every feature of those
`
`claims, Appellant respectfully requests that the Board reverse the Examiner’s rejection and
`
`determine that the claims are allowable.
`
`A. Overview of Wesinger
`
`Wesinger
`
`relates
`
`to a “firewall providing enhanced network security and user
`
`transparency.” (Wesinger Title.) Wesinger’s firewall is configured as two or more sets of virtual
`
`hosts, with DNS mappings between the virtual hosts and respective remote hosts to be accessed
`
`through network interfaces of the firewall.
`
`(Wesinger Abstract.) The firewall “selectively
`
`allows ‘acceptable’ computer transmissions to pass through it and disallows other non—acceptable
`
`computer transmissions.” (Id. at 1:8—12.)
`
`DMiUS 42395829—1.077580.0116
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`lO
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`Petitioner Apple Inc. - Exhibit 1054, p. 14
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`Petitioner Apple Inc. - Exhibit 1054, p. 14
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`Application No.: 13/049,552
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`Wesinger explains that “[w]hen a connection request is received, the firewall spawns a
`
`process, or execution thread, to create a virtual host VHn to handle that connection request.” (Id.
`
`at 15 :9—12.) “Each virtual host has a separate configuration sub—file (sub—database) Cl, C2, etc.,
`
`that may be derived from a master configuration file, or database, 510. The configuration sub—
`
`files are text files that may be used to enable or disable different functions for each virtual host,
`
`specify which connections and types of traffic will be allowed and which will be denied, etc.”
`
`(Id. at 14:46—52.) “Also as part of the configuration file of each virtual host, an access rules
`
`database is provided governing access to and through the virtual host, i.e., which connections
`
`will be allowed and which connections will be denied.” (Id. at 15 :24—28.) The firewall process
`
`in Wesinger uses the access rules database to “allow only a connection from a specified secure
`
`client.” (Id. at 10:14—16.)
`
`In addition to explaining how connection requests are processed, Wesinger separately
`
`discusses how DNS requests are processed:
`
`When client C tries to initiate a connection to host D using the
`name of D, DNS operates in the usual manner to propagate a name
`request to successive levels of the network until D is found. The
`DNS server for D returns the network address of D to a virtual host
`
`on the firewall 155. The virtual host returns its network address to
`
`the virtual host on the firewall 157 from which it received the
`
`lookup request, and so on, until a virtual host on the firewall 105
`returns its network address (instead of the network address of D) to
`the client C.
`
`(Id. at 9:16—24.) Accordingly, when client C uses a name of D in a DNS request, C gets back an
`
`address for a virtual host of firewall 105, which faces C.
`
`(See id. at Fig. 1.)
`
`Thus, Wesinger discusses DNS requests
`
`(or “name requests”)
`
`separately from
`
`“connection requests,” clearly distinguishing between the two, and treating the two as different
`
`from one another.
`
`(See also id. at 9:16—19, 10:48—51, discussing name requests and separately
`
`discussing connection requests.) Wesinger does not disclose checking the access rules database
`
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`1 1
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`Petitioner Apple Inc. - Exhibit 1054, p. 15
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`Petitioner Apple Inc. - Exhibit 1054, p. 15
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`Application No.: 13/049,552
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`discussed above in response to a DNS request, but only in response to a connection request.
`
`(Id. at 16:22—28.)
`
`B. Independent Claim 4 Is Allowable over Wesinger
`
`Independent claim 4 recites, among other things, that the one or more processors are
`
`configured to “determine that the DNS request corresponds to one or more computers configured
`
`to communicate securely” and “send, based on the determination [that
`
`the DNS request
`
`corresponds to one or more computers configured to communicate securely] a request
`
`to
`
`establish a VPN communication link.” Independent claim 4 also recites that the one or more
`
`processors are configured to “receive,
`
`in response to the request
`
`to establish a VPN
`
`communication link, a resource for establishing the VPN communication link.” Wesinger does
`
`not disclose or suggest at least these features for at least the reasons discussed below.
`
`the DNS
`1. Wesinger Does Not Disclose 0r Suggest Determining that
`Request Corresponds to One or More Computers Configured to
`Communicate Securely
`
`Wesinger does not disclose or suggest, for example, “determin[ing] that the DNS request
`
`corresponds to one or more computers configured to communicate securely,” as recited in
`
`independent claim 4.
`
`In the Final Office Action, the Examiner points to Wesinger’s discussion
`
`of DNS processing as allegedly disclosing this feature.
`
`(Final OA at 3, citing Wesinger Fig. 1
`
`and columns 8—9.)
`
`It is respectfully submitted that the Examiner is incorrect. As explained
`
`above in Section VII.A, during this process, “DNS operates in the usual manner to propagate a
`
`name request to successive levels of the network until D is found.”
`
`(Wesinger 9:16—24.)
`
`Wesinger does not disclose, either in the passage cited by the Examiner or elsewhere, making
`
`any determination regarding a DNS request, much less a determination that a DNS request
`
`corresponds to one or more computers configured to communicate securely. Nor has the
`
`Examiner provided any explanation beyond merely citing to columns 8 and 9 of Wesinger for
`
`DMiUS 42395829—1.077580.0116
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`12
`
`Petitioner Apple Inc. - Exhibit 1054, p. 16
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`Petitioner Apple Inc. - Exhibit 1054, p. 16
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`

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`Application No.: 13/049,552
`
`why Wesinger allegedly discloses this feature.
`
`(See Final CA at 3.) For this reason alone, the
`
`Examiner’s rejection is deficient and should be reversed.
`
`The Examiner also points to Wesinger’s disclosure of checking the Allow and Deny
`
`databases as allegedly disclosing certain features of the claims.
`
`(CA at 3, citing Wesinger at
`
`l6:57—l7:5.)
`
`These portions also do not disclose “determin[ing]
`
`that
`
`the DNS request
`
`corresponds to one or more computers configured to communicate securely” (emphasis added).
`
`Instead, Wesinger’s firewall checks the Allow and Deny databases with respect to a connection
`
`w, and therefore does not “determine that a DNS request corresponds to one or more
`
`computers configured to communicate securely” (emphasis added):
`
`the daemon spawns a
`is received,
`When a connection request
`process to handle the connection request. This process then .
`.
`.
`check| s| on the local side of the connection and the remote side of
`
`the connection to determine, in accordance with the appropriate
`Allow and Deny databases, whether the connection is
`to be
`allowed.”
`
`(Wesinger 16:22—28, emphases added; see also id. at 15:5—19.)
`
`As discussed above, Wesinger makes a distinction between connection requests and DNS
`
`requests as separate requests, and only discloses locating and applying the access rules database
`
`513 when a connection request is received. Thus, “checking” the Allow and Deny databases also
`
`does not disclose or suggest “determin[ing] that the DNS request corresponds to one or more
`
`computers configured to communicate securely” (emphasis added), as recited in independent
`
`claim 4. Nor would one be motivated from the teachings of Wesigner to provide such a
`
`determination that
`
`the DNS request corresponds to one or more computers configured to
`
`communicate securely in the disclosed Wesinger arrangement.
`
`Additionally, when the firewall in Wesinger checks the Allow and Deny databases, it
`
`does not “determine that a DNS request corresponds to one or more computers configured to
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`DMiUS 42395829—10775800116
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`l3
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`Petitioner Apple Inc. - Exhibit 1054, p. 17
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`Petitioner Apple Inc. - Exhibit 1054, p. 17
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`

`

`Application No.: 13/049,552
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`communicate secure y” (emphasis added). Wesinger mentions in passing that the firewall may
`
`implement “channel processing” (that includes encryption) after the connection is allowed.
`
`(See
`
`id. at 4:39—42, 12:22—28.) But mechanically implementing encryption after a connection is
`
`allowed does not disclose determining that any request (much less a DNS request) corresponds to
`
`one or more computers configured to communicate securely.
`
`Indeed, when Wesinger’s firewall
`
`checks a requested connection to a deVice,
`
`it makes no determination about
`
`the security
`
`capabilities of that deVice—it just allows or denies the connection based on the access rules
`
`database 5 13. Accordingly, the Examiner’s rejection is deficient and should be reversed.
`
`2. Wesinger Does Not Disclose 0r Suggest Sending, Based on the
`Determination that
`the DNS Request Corresponds to One or More
`Computers Configured to Communicate Securely, a Request to Establish
`a VPN Communication Link
`
`Wesinger also does not disclose or suggest, for example, “send[ing] based on the
`
`determination [that
`
`the DNS request corresponds to one or more computers configured to
`
`communicate securely] a request to establish a VPN communication link.” First, as discussed
`
`above, Wesinger does not disclose the recited “determination” and thus cannot disclose sending
`
`anything “based on the determination,” let alone sending a request
`
`to establish a VPN
`
`communication link based on the determination.
`
`Secondly,
`
`to the extent that the Examiner asserts that Wesinger’s connection request
`
`discloses the recited “request to establish a VPN communication link” and that checking the
`
`Allow and Deny databases discloses the recited “determination,” this reasoning is also incorrect.
`
`Specifically, claim 4 recites “sending, based on the determination, a request to establish a VPN
`
`
`communication link.” But in Wesinger, the connection request causes the firewall to spawn the
`
`daemon and “check” the Allow and Deny databases in the first place. Thus, in Wesinger, the
`
`connection request logically cannot be sent based on that “check” because it does not occur until
`
`DMiUS 42395829—1.077580.0116
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`l4
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`Petitioner Apple Inc. - Exhibit 1054, p. 18
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`Petitioner Apple Inc. - Exhibit 1054, p. 18
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`

`

`Application No.: 13/049,552
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`after the connection request is received. Accordingly, the Examiner’s rejection is deficient for
`
`these additional reasons and should be reversed.
`
`3. Wesinger Does Not Disclose 0r Suggest Receiving, in Response to the
`Request
`to Establish a VPN Communication Link, a Resource for
`Establishing
`the VPN Communication Link
`and Automatically
`Establishing the VPN Communication Link Using the Received Resource
`
`Wesinger also does not disclose or suggest, for example, “receiv|ing|, in response to the
`
`request
`
`to establish a VPN communication link, a resource for establishing the VPN
`
`communication link” and “automatically establish[ing] the VPN communication link .
`
`.
`
`. using
`
`the received resource” (emphasis added).
`
`In its analysis of these features, the Final Office
`4‘
`
`Action relies on Wesinger’s disclosure of “encryption capabilities” with
`7
`
`programmable
`
`transparency.’
`
`(See OA at 3—4, citing Wesinger at 12:23—27.) However, Wesinger does not
`
`disclose the details of the encryption or how it is implemented, and certainly does not disclose
`
`that
`
`it
`
`involves receiving a resource used to establish the VPN communication link and
`
`establishing the VPN communication link using the received resource, and as recited in claim 4.
`
`Accordingly, the Examiner’s rejection is additionally deficient for the foregoing reasons and
`
`should be reversed.
`
`4. The Final Office Action’s Obviousness Analysis Is Deficient
`
`The Examiner admits
`
`that Wesinger does not explicitly disclose automatically
`
`establishing the VPN communication link with the first computer using the received resource,
`
`but
`
`instead asserts that
`
`this feature would have been obvious.
`
`(Final OA at 4—5.) The
`
`Examiner’s rationale for why this feature would have been obvious falls short of what is required
`
`by established case law and M.P.E.P guidelines. The entirety of the Examiner’s rationale is:
`
`It would have been obvious to one of ordinary skill in the art to
`obviously recognize that Wesinger’s passage above and the
`claimed language are obviously the same and the difference is how
`they are written which is obvious to one of ordinary skill in the art.
`
`DMiUS 42395829—1.077580.0116
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`15
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`Petitioner Apple Inc. - Exhibit 1054, p. 19
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`Petitioner Apple Inc. - Exhibit 1054, p. 19
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`

`

`Application No.: 13/049,552
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`(Final OA at 5.)
`
`“The key to supporting any rejection under 35 U.S.C. [§] 103 is the clear articulation of
`
`the reason(s) why the claimed invention would have been obvious.” M.P.E.P. §2l41.III.
`
`Obviousness rejections should be “made explicit” and “cannot be sustained by mere conclusory
`
`statements; instead, there must be some articulated reasoning with some rational underpinning to
`
`support the legal conclusion of obviousness.” KSR Int’l C0. v. Teleflex Inc, 550 US. 398, 418
`
`(2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
`
`The Examiner’s rationale for obviousness is entirely conclusory and lacks any articulated
`
`reasoning whatsoever.
`
`Indeed, the Examiner’s obviousness determination fails to identify any
`
`reason for modifying Wesinger, explain why one of ordinary skill in the art at the time of the
`
`invention would have found it obvious to make the modification, or provide the basis and
`
`support for the modification. Using the word “obvious” multiple times in a conclusory
`
`statement—as the Examiner has done here—is the type of approach that the M.P.E.P. and the
`
`Federal Circuit warns against making, and certainly does not make the Examiner’s analysis any
`
`less deficient.
`
`For this additional reason, the Examiner’s rejection should be reversed.
`
`5. Conclusion: Claim 4 Is Allowable over Wesinger
`
`For at least each of the above reasons, the Examiner’s rejection of independent claim 4 is
`
`deficient.
`
`Thus, Appellant respectfully requests that
`
`the Board reverse the rejection of
`
`independent claim 4 and determine that the claim is allowable.
`
`C. Dependent Claims 5-15 Are Allowable over Wesinger
`
`Dependent claims 5—15 each ultimately depends from independent claim 4. As described
`
`above, the rejection of claim 4 over Wesinger is deficient and should be reversed. Thus, the
`
`rejection of dependent claims 5—15 is also deficient and should be reversed at least because those
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`DMiUS 42395829—10775800116
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`16
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`Petitioner Apple Inc. - Exhibit 1054, p. 20
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`Petitioner Apple Inc. - Exhibit 1054, p. 20
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`

`

`Application No.: 13/049,552
`
`claims depend from allowable base claim 4, as well as for the additional features that they recite.
`
`(See, e.g., Sections VII.F and VII.G., infra). Accordingly, Appellant respectfully requests that
`
`the Board reverse the Examiner’s rejection of claims 5—15 and determine that the claims are
`
`allowable.
`
`D. Independent Claim 16 Is Allowable over Wesinger
`
`1. The Rejection of Claim 16 Should Be Reversed for at Least the Same
`Reasons Set Forth Above for Claims 4-15
`
`The Final Office Action provides no substantive analysis of independent claim 16, but
`
`instead asserts that it and its dependent claims 17—25 are “rejected for the same rationale as
`
`claims 4—15 .
`
`.
`
`.
`
`.”
`
`(Final OA at 5.) As indicated below, for at least the same reasons set forth
`
`above in connection with claim 4, the rejection of claim 16 in view of Wesinger is deficient and
`
`should be reversed.
`
`For instance, independent claim 16 recites, among other things, one or more processors
`
`configured to “receive a request to communicate securely, .
`
`.
`
`. the request having been sent in
`
`response to a determination that a DNS request from the client device corresponds to a first
`
`computer configured to communicate securely. Wesinger does not disclose or suggest this
`
`feature for at least reasons similar to those discussed above in Sections VII.B.l and VII.B.2.
`
`Independent claim 16 also recites, for example, “mak[ing] a resource available to the
`
`client device for automatically establishing the VPN communication link .
`
`.
`
`.
`
`.” Wesinger does
`
`not disclose or suggest this feature for at least reasons similar to those discussed above in Section
`
`VII.B.3.
`
`Accordingly, for at least the above reasons, and the reasons set forth above in Section
`
`VII.B., the rejection of claim 16 should be reversed.
`
`DMiUS 42395829—1.077580.0116
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`17
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`Petitioner Apple Inc. - Exhibit 1054, p. 21
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`Petitioner Apple Inc. - Exhibit 1054, p. 21
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`

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`Application No.: 13/049,552
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`2. The Rejection of Claim 16 Should Be Reversed Because the Examiner
`Failed to Address Each and Every Limitation of the Claim
`
`As noted above, the Examiner solely relies on the basis of the rejection of claims 4—15 to
`
`support the conclusion that claim 16 is obvious in view of Wesinger.
`
`(Final OA at 5.) However,
`
`claim 16 includes limitations not found in claims 4—15.
`
`For inst