`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Oifice
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria. Virginia 22313-1450
`www.usplo.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`95/001,789
`
`10/18/2011
`
`7921211
`
`41484-80150
`
`6053
`
`”63°
`~75”
`””6”“
`Mcnemouwmumry —
`600 13th Street, NW
`FOSTER. ROLAND 6
`Washington, DC 20005-3096
`ART UNIT
`PAPER NUMBER
`
`3992
`
`MAIL DATE
`
`09/26/2012
`
`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)
`
`1
`
`MICROSOFT 1016
`
`1
`
`MICROSOFT 1016
`
`

`

`UNITED STATES PATENT AND TRADENIARK OFFICE
`
`
`
`Commissionerfor Patents
`United States Patent and Trademark Office
`P.0. Box1450
`Alexandria, VA 22313-1450
`WWUSDTOQOV
`
`DO NOT USE IN PALM PRINTER
`
`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
`
`SIDLEY AUSTIN LLP
`717 NORTH HARWOOD
`SUITE 3400
`DALLAS, TX 75201
`
`Transmittal of Communication to Third Party Requester
`Inter Partes Reexamination
`
`REEXAMINATION CONTROL NUMBER 95/001 789.
`
`PATENT NUMBER 7921211.
`
`TECHNOLOGY CENTER 3900.
`
`ART UNIT 3992.
`
`Enclosed is a copy of the latest communication from the United States Patent and
`Trademark Office in the above-identified reexamination proceeding. 37 CFR 1.903.
`
`Prior to the filing of a Notice of Appeal, each time the patent owner responds to this
`communication, the third party requester of the inter partes reexamination may once file
`written comments within a period of 30 days from the date of service of the patent owner's
`response. This 30—day time period is statutory (35 U.S.C. 314(b)(2)), and, as such, it cannot
`be extended. See also 37 CFR 1.947.
`
`If an ex parte reexamination has been merged with the interpartes reexamination, no
`responsive submission by any ex parte third party requester is permitted.
`
`All correspondence relating to this inter partes reexamination proceeding should be
`directed to the Central Reexamination Unit at the mail, FAX, or hand-carry addresses
`given at the end of the communication enclosed with this transmittal.
`
`PTOL-2070 (Rev.07—04)
`
`2
`
`

`

`
`
`ACTION CLOSING PROSECUTION
`
`(37 CFR 1.949)
`
`
`
`
`
`Control No.
`
`95/001 ,789
`Examiner
`
`Patent Under Reexamination
`
`7921211
`Art Unit
`
`ROLAND FOSTER
`
`3992
`
`
`
`
`
`
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address. --
`
`
`Responsive to the communication(s) filed by:
`Patent Owner on 18 April, 2012
`
`Third Party(ies) on 06 August, 2012
`
`
`Patent owner may once file a submission under 37 CFR 1.951(3) within _2_ month(s) from the mailing date of this
`Office action. Where a submission is filed, third party requester may file responsive comments under 37 CFR
`1.951 (b) within 30-days (not extendable- 35 U.S.C. § 314(b)(2)) from the date of service of the initial
`
`
`
`submission on the requester. Appeal cannot be taken from this action. Appeal can only be taken from a
`Right of Appeal Notice under 37 CFR 1.953.
`
`
`
`
`
`
`
`
`All correspondence relating to this inter partes reexamination proceeding should be directed to the Central
`Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end of this Office action.
`
`PART I. THE FOLLOWING ATTACHMENT(S) ARE PART OF THIS ACTION:
`
`1. El Notice of References Cited by Examiner, PTO-892
`2. IX} Information Disclosure Citation, PTO/SB/08
`3.[:I
`
`PART II. SUMMARY OF ACTION:
`
`
`
`1a. IX] Claims fig are subject to reexamination.
`
`
`
`
`
`
`
`
`
`
`1b. I] Claims
`
`2.
`
`[:1 Claims
`
`are not subject to reexamination.
`
`have been canceled.
`
`1:] Claims
`
`El Claims
`
`
`
`are confirmed. [Unamended patent claims]
`
`are patentable.
`
`[Amended or new claims]
`
`IX] Claims 1_-® are rejected.
`
`[:1 Claims
`are objected to.
`[:1 are not acceptable.
`D are acceptable
`[I The drawings filed on
`D The drawing correction request filed on
`is:
`[I approved. El disapproved.
`D Acknowledgment is made of the claim for priority under 35 U.S.C. 119 (a)-(d). The certified copy has:
`1:] been received.
`[:I not been received.
`I: been filed in Application/Control No
`10. C] Other
`
`
`
`
`
`
`
`
`coooflswsnew
`
`
`US. Patent and Trademark Office
`PTOL-2065 (08/06)
`
`Paper No. 20120917
`
`3
`
`

`

`Application/Control Number: 95/001,789
`
`Art Unit: 3992
`
`Page 2
`
`ACTION CLOSING PROSECUTION
`
`1.
`
`Introduction
`
`This Office action addresses claims 1-60 of United States Patent No. 7,921,211 B2 (the
`
`"Larson" patent), for reexamination was granted in the Order Granting Inter Partes
`
`I
`
`Reexamination (hereafter the "Order"), mailed January 18, 2012.
`
`A non-final Office action accompanying said Order was also mailed January 18, 20,12
`
`rejecting all original claims 1-60 of the Larson patent (the "non-final Office action").
`
`The patent owner responded by filing arguments and associated evidence on April 18,
`
`2012 (the "Response").
`
`The third party requester responded by filing Comments to the Patent Owner's Response
`
`on August 6, 2012 (the "Comments"). In the Comments, the third party requester responded to
`
`the patent owner's arguments.
`
`The examiner has carefully considered the argtunents and evidence provided in both the
`
`patent owner's Response and in the third party requester's Comments. Based on consideration of
`
`the entire record, the third party requester's arguments and evidence are deemed more persuasive.
`
`See the "Res onse to Ar uments" section for further ex lanation. All
`P
`g
`P
`
`P
`
`rior rejections are
`
`4
`
`

`

`Application/Control NLunber: 95/001 ,789
`
`Art Unit: 3992
`
`Page 3
`
`'
`
`maintained. Accordingly, this Office action is made an “Action Closing Prosecution.” See 37
`
`CPR 1.949, MPEP 2671.02. See also the “conclusion” section to this Office action.
`
`A
`
`Prior Art Rejections
`
`2.A.
`
`Issues Raised in the Request
`
`A total of ten references, in certain combinations, have been asserted in the Request as _
`
`providing teachings relevant to the claims of the Larson patent.
`
`.
`Solana, E. et al., “Flexible Internet Secure Transactions Based on Collaborative
`Domains,” Lecture Notes in Computer Science, Vol. 1361, at 37-51 (1997), attached to
`the Request as Exhibit X1 (“Solana”).
`
`US. Patent No. 6,557,037 to Provino, attached to the Request as Exhibit X2 (“Provino”).
`
`US. Patent No. 6,496,867 to Beser, attached to the Request as Exhibit X3 (“Beser”).
`
`Atkinson, R., IETF RFC 2230, “Key Exchange Delegation Record for the DNS,” -
`November 1997, attached to the Request as Exhibit X4 (“RFC 2230”).
`
`Eastlake, D. et al., IETF RFC 2538, “Storing Certificates in the Domain Name System
`(DNS),” March 1999, attached to the Request as Exhibit X5 (“RFC 2538”).
`
`Kent, S. et al., IETF RFC 2401, “Security Architecture for the Internet Protocol,”
`November 1998, attached to the Request as Exhibit X6 (“RFC 2401”).
`
`Eastlake, D. et al., IETF RFC 2064, “Domain Name System Security Extensions,”
`January 1997, attached to the Request as Exhibit X7 (“RFC 2065”).
`'
`
`Postel, J. et al., IETF RFC 920, “Domain Requirements,” October 1984, attached to the
`Request as Exhibit X8 (“RFC 920”).
`
`Guttman, E. et al., IETF RFC 2504, “Users’ Security Handbook,” February 1999,
`attached to the Request as Exhibit X9 (“RFC 2504”).
`
`'
`
`5
`
`

`

`Application/Control Number: 95/001,789
`
`Page 4
`
`Art Unit: 3992
`
`‘
`
`Reed, M. et al., “Proxies for Anonymous Routing,” 12‘h Annual Computer Security
`Applications Conference, Sand Diego, CA (December 9-13, 1996), attached to the '
`Request as Exhibit X10 (“Reed”).
`
`’
`
`The third party requester also cited six prior art patents and printed publications to
`
`demonstrate the knowledge in the field of the invention.
`
`Goldschlag et al., “Hiding Routing Information,” Workshop on Information Hiding,
`, Cambridge, UK, May 1996, attached to the Request as Exhibit Yl (“Goldschlag”).
`
`Mockapetris, P., RFC 1035, “Domain Names — Implementation and Specification,”
`November 1987, attached to the Request as Exhibit Y2 (“RFC 1035”).
`
`Braken, R., RFC 1123, “Requirements for Internet Hosts — Application and Support,”
`October 1989, attached to the Request as Exhibit Y3 (“RFC 1123”).
`
`Atkinson, R., RFC 1825, “Security Architecture for the Internet Protocol,” August 1995,
`attached to the Request as Exhibit Y4 (“RFC 1825”).
`
`Housley, R. et al., RFC 2459, “Internet X509 Public Key Infrastructure Certificate and
`CRL profile,” January 1999, attached to the Request as Exhibit Y5 (”RFC 2459”).
`.
`
`Mockapetris, P., RFC 1034, “Domain Names — Concepts and Facilities,” November
`1987, attached to the Request as Exhibit Y4 (“RFC 1034”).
`
`2.B.
`
`Summary Regarding Those Proposed Rejections Adopted by the Examiner
`
`The rejections identified in Issues 1-35 are adopted because the stated combinations
`
`establish a reasonable likelihood that the requester will prevail with respect to at least one of the
`
`claims 1—60 in the Larson patent, as explained in said Order.
`
`6
`
`

`

`Application/Control Number: 95/001,789
`
`.
`
`Page 5
`
`Art Unit: 3992
`
`2.C.
`
`Entitlement to the Benefit of an Earlier Filing Date
`
`Some ofthe references cited are intervening art. MPEP 2617. Requestor asserts that the
`
`instant claims are not entitled to the earliest filing date of June 7, 1998, the filing date of the
`
`oldest parent, provisional application. The examiner agrees. US. Patent No. 7,010,604, which
`
`issued from parent application 09/429,643, and which was filed Oct. 29, 1999, fails to explicitly
`recite nor imply the phrase “domain name service” present in all independent claims in the
`
`Larson patent for which reexamination is now sought. Indeed, the 7,010,604 patent does not
`
`appear to even be directed to services similar to domain name lookup. The patent thus fails to
`
`neither provide written description support nor enable the subject matter recited in claims 1—60 of
`the Larson patent. Accordingly, the Larson patent is not entitled to the benefit ofthe 7,010,604
`
`patent filing date. The effective filing date for claims 1-60 is no earlier than the Feb. 15, 2000
`
`filing date of the US. Patent No. 6,502,135, which issued from parent application 09/504,783.
`
`2.D. Rejections Based upon Solana (Issues 1-8)
`
`Claim Rejections - 35 USC § 102
`
`The following is a quotation of the appropriate paragraphs of 35 USC. 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 —
`
`(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or
`on sale in this country, more than one year prior to the date of application for patent in the United States,
`
`Claims 1, 2, 5, 6, 8, 9, and 14-60 are rejected under 35 USC. 102(b) as being
`
`anticipated by Solana.
`
`7
`
`

`

`Application/Control Number: 95/001,789
`
`Page 6
`
`Art Unit: 3992
`
`Claim Rejections - 35 USC § 103
`
`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:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in
`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.
`
`Claims 2-5, 24, 25, 37, 48, and 49 are rejected under 35 U.S.C. 103(a) as being
`
`unpatentable over Solana as applied to the respective, parent claims above (if applicable), and
`
`further in view of RFC 920.
`
`Claims 10-13 are rejected under 35 U.S.C. 103(a) as being unpatentable over Solana as
`
`applied to the respective, parent claims above (if applicable), and further in View of Reed.
`
`Claims 7, 32 and 56 are rejected under 35 U.S.C. 103(a) as being unpatentable over
`
`Solana as applied to the respective, parent claims above (if applicable), and further in view of
`
`Beser.
`
`Claims 1, 2, 5, 6, 8, 9 and 14-60 are rejected under 35 U.S.C. 103(a) as being
`
`unpatentable over Solana as applied to the respective, parent claims above (if applicable), and
`
`further in view of RFC 2504.
`
`8
`
`

`

`Application/Control Number: 95/001,789
`
`Art Unit: 3992
`
`Page 7
`
`Claims 2-5, 24, 25, 37, 48 and 49 are rejected under 35 U.S.C. 103(a) as being
`
`unpatentable over Solana as applied to the respective, parent claims above (if applicable), and
`
`further in View of RFC 2504, and further in view of RFC 920.
`
`Claims 10-13 are rejected under 35 U.S.C. 103(a) as being unpatentable over Solana as
`
`' applied to the respective, parent claims above (if applicable), and further in View of RFC 2504,
`
`and further in View of Reed.
`
`Claims 7, 32 and 56 are rejected under 35 U.S.C. 103(a) as being unpatentable over
`
`Solana as applied to the respective, parent claims above (if applicable), and further in viewiof
`
`RFC 2504, and further in view of Beser.
`
`Incorporation by Reference
`
`Thus, the third party requester proposed rejection of claims 1-60 on pages 14-117 of- the
`
`Request and Exhibits C1 and C2 (claim charts), are adopted and incorporated by reference.
`
`2.E. Rejections Based upon Provino (Issues 9-20)
`
`Claim Rejections - 35 USC § M2
`
`The following is a quotation of the appropriate paragraphs of 35 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 —
`
`(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed
`in the United States before the invention by the applicant for patent or (2) a patent granted on an application for
`patent by another filed in the United States before the invention by the applicant for patent, except that an
`
`9
`
`

`

`Application/Control Number: 95/001,789
`
`Art Unit: 3992
`
`-Page 8
`
`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.
`
`Claims 1, 2, 5, 6, 8, 9 and 14-60 are rejected under 35 USC. 102(e) as being anticipated
`
`by Provino.
`
`Claim Rejections - 35 USC § 103
`
`Claims 2-5, 24, 25, 37, 48, and 49 are rejected under 35 USC. 103(a) as being
`
`unpatentable overProvino as applied to the respective, parent claims above (if applicable), and
`
`further in view of RFC 920.
`
`Claims 10-13 are rejected under 35 USC. 103(a) as being unpatentable over Provino as
`
`applied to the respective, parent claims above (if applicable), and further in view of Reed.
`
`Claims 7, 29-32 and 53-56 are rejected under 35 USC. 103(a) as being unpatentable
`
`over Solana as applied to the respective, parent claims above (if applicable), and further in view
`
`of Beser.
`
`Claims 1, 2, 5, 6, 8, 9 and 14—60 are rejected under 35 USC. 103(a) as being
`
`unpatentable over Provino as applied to the respective, parent claims above (if applicable), and
`
`further in view of RFC 2230.
`
`10
`
`10
`
`

`

`Application/Control Number: 95/001,789
`
`Art Unit: 3992
`
`Page 9
`
`Claims 2-5, 24, 25, 37, 48 and 49 are rejected under 35 U.S.C. 103(a) as being
`
`unpatentable over Provino as applied to the respective, parent claims above (if applicable), and
`
`further in View of RFC 2230, and further in view of RFC 920.
`
`Claims 10-13 are rejected under 35 U.S.C. 103(a) as being unpatentable over Provino as
`
`applied to the respective, parent claims above (if applicable), and further View of RFC 2230, and
`
`further in view of Reed.
`
`Claims 7, 29-32 and 53-56 are rejected under 35 U.S.C. 103(a) as being unpatentable
`
`over Provino as applied to the respective, parent claims above (if applicable), and further in View
`
`of RFC 2230, and further in view of Beser.
`
`Claims 1, 2, 5, 6, 8, 9 and 14-60 are rejected under 35 U.S.C. 103(a) as being
`
`unpatentable over Provino as applied to the respective, parent claims above (if applicable), and
`
`further in view of RFC 2504. '
`
`Claims 2-5, 24, 25, 37, 48 and 49 are rejected under 35 U.S.C. 103(a) as being
`
`unpatentable over Provino as applied ‘to the respective, parent claims above (if applicable), and
`
`further in view of RFC 2504, and further in View of RFC 920.
`
`11
`
`
`
`11
`
`

`

`Application/Control Number: 95/001,789
`
`Art Unit: 3992
`
`Page 10
`
`Claims 10-13 are rejected under 35 U.S.C. 103(a) as'being unpatentable over Provino as
`
`applied to the respective, parent claims above (if applicable), and further view of RFC 2504, and
`
`further in View of Reed.
`
`Claims 7, 29-32 and 53-56 are rejected under 35 U.S.C. 103(a) as being unpatentable
`
`lover Provino as applied to the respective, parent claims above (if applicable), and further in view
`
`of RFC 2504, and further in view of Beser.
`
`Incorporation by Reference
`
`Thus, the third party requester proposed rejection. of claims 1-60 on pages 1 18-225 of the
`
`Request and Exhibits C3, C4 and C5 (claim charts), are adopted and incorporated by reference.
`
`2.F.
`
`Rejections Based upon Beser (Issues 21-24)
`
`Claim Rejections — 35 USC § 102
`
`Claims 1, 2, 5-7 and 14-60 are rejected under 35 U.S.C. 102(e) as being anticipated by
`
`Beser.
`
`Claim Rejections - 35 USC § 103
`
`Claims 2-5, 24, 25, 37, 48, and 49 are rejected under 35 U.S.C. 103(a) as being
`
`unpatentable over Beser as. applied to the respective, parent claims above (if applicable), and
`
`further in view of RFC 920.
`
`12
`
`12
`
`

`

`Application/Control Number: 95/001,789
`
`Page 1 1
`
`Art Unit: 3992
`
`Claims 8 and 9 are rejected under 35 U.S.C. 103(a) as being unpatentable over Beser as
`
`applied to the respective, parent claims above (if applicable), and further in view of RFC 2401.
`
`Claims 10-13 are rejected under 35 U.S.C. 103(a) as being unpatentable over Beser as
`
`applied to the respective, parent claims above (if applicable), and further view of RFC 2401, and
`
`further in view of Reed.
`
`Incorporation by Reference
`
`Thus, the third party requester proposed rejection of claims 1-60 on pages 226-277 of the
`
`Request and Exhibit C6 (claim chart), are adopted and incorporated by reference.
`
`2.G. Rejections Based upon RFC 2230 (Issues 25-29)
`
`Claim Rejections - 35 USC § 102
`
`Claims 1, 2, 6, 7 and 14-60 are rejected under 35 U.S.C. 102(b) as being anticipated by
`
`RFC 2230.
`
`Claim Rejections - 35 USC § 103
`
`Claims 2-5, 24, 25, 37, 48, and 49 are rejected under 35 U.S.C. 103(a) as being
`
`unpatentable over RFC 2230 as applied to the respective, parent claims above (if applicable), and
`
`further in View of RFC 920.
`
`13
`
`13
`
`

`

`Application/Control Number: 95/001,789
`
`Art Unit: 3992
`
`Page 12
`
`Claims 8 and 9 are rejected under 35 U.S.C. 103(a) as being unpatentable over RFC
`
`2230 as applied to the respective, parent claims above (if applicable), and further in view of RFC
`
`2401.
`
`Claims 10-13 are rejected under 35 U.S.C. 103(a) as being unpatentable over RFC 2230
`
`as applied to the respective, parent claims above (if applicable), and further view of RFC 2401,
`
`and further in view of Reed.
`
`Claims 29-32 and 53-56 are rejected under 35 U.S.C. 103(a) as being unpatentable over
`
`RFC 2230 as applied to the respective, parent claims above (if applicable), and further in view of
`
`RFC 2230, and further in view of Beser.
`
`Incorporation by Reference
`
`Thus, the third party requester proposed rejection of claims 1-60 on pages 278-323 of the
`
`Request and Exhibit C7 (claim chart), are adopted and incorporated by reference.
`
`2.H. Rejections Based upon RFC 2538 (Issues 30—35)
`
`Claim Rejections - 35 USC § 102
`
`(a) the invention was known or used by others in this country, or patented or described in a printed publication in
`this or a foreign country, before the invention thereof by the applicant for a patent.
`
`Claims 1, 2, 6, 14-22, 24-46, 48-52 and 57-60 are rejected under 35 U.S.C. 102(a) as
`
`being anticipated by RFC 2538.
`
`14
`
`14
`
`

`

`Application/Control Number: 95/001,789
`
`Page 13
`
`Art Unit: 3992
`
`Claim Rejections - 35 USC § 103
`
`Claims 3, 4, 24, 25, 48 and 49 are rejected under 35 USC. 103(a) as being unpatentable
`
`over RFC 2538 as applied to the respective, parent claims above (if applicable), and further in
`
`view of RFC 920.
`
`Claims 8 and 9 are rejected under 35 USC. 103(a) as being unpatentable over RFC
`
`2538 as applied to the respective, parent claims above (if applicable), and further in view of RFC
`
`2401.
`
`Claims 10-13 are rejected under 35 USC. 103(a) as being unpatentable over RFC 2538
`
`as applied to the respective, parent claims above (if applicable), and further view of RFC 2401,
`
`and further in View of Reed.
`
`Claims 7, 29-32 and 53-56 are rejected under 35 USC. 103(a) as being unpatentable
`
`over RFC 2538 as applied to the respective, parent claims above (if applicable), and further in
`
`view of Beser.
`
`Claims 5, 23 and 47 are rejected under 35 USC. 103(a) as being unpatentable over RFC
`
`2538 as applied to the respective, parent claims above (if applicable), and further in view of RFC
`
`2065.
`
`15
`
`15
`
`

`

`Application/Control Number: 95/001,789
`
`Page 14
`
`Art Unit: 3992
`
`Incorporation by Reference
`
`Thus, the third party requester proposed rejection of claims 1-60 on pages 324-366 of the
`
`Request and Exhibit C8 (claim chart), are adopted and incorporated by reference.
`
`;
`
`Response to Arguments
`
`3.1.
`
`Prior Art Publication '
`
`The patent owner’s arguments and associated evidence (Response, pp. 5-9) have been
`
`carefully considered, but the requester’s evidence demonstrates that Solana, Reed, and the
`
`RFC(s) were printed publications available as prior art. Regarding Solana, Exhibit C to the
`
`Comments provides evidence that Solana was formally published in a treatise called “Lecture
`
`Notes in Computer Science” (LCNS) by Springer-Verlag in 1998. The declarant also attested to
`these facts. See the Declaration of Michael Allyn Fratto Under 37 C.F.R. 1.132, Fratto
`
`I
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`Declaration, filed with the Comments (the “Fratto Declaration”), paragraph 11. See also the
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`Comments, p. 3. Regarding Reed, the same declarant presents evidence, such as the Association
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`of Computing Machinery (ACM) website reporting the citation of Reed no later than December
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`of 1996. Fratto Declaration, paragraphs 12-15. Regarding the RFC(s), these publications are
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`among the most authoritative publications for Internet systems and protocols. The examiner
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`agrees with the requester that “RFC documents are published and disseminated to the relevant
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`public by the Internet Engineering Task Force (IETF) pursuant to a transparent and well-known
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`process. Under these well-known procedures, RFCs are self-authenticating printed publications
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`— each contain verifiable information documenting the date of its public distribution.”
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`Comments, pp. 3 & 4. Moreover:
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`Thus, the RFC documents cited in the Request and in the Office action would each have been
`published during the month and year that is listed in the heading of the RFC in accordance with
`IETF BCP 9. Each of these RFCs also would have been publicly distributed by the IETF and
`announced via their mailing listduring the month and year listed in the heading of the RFC, and
`thus would have been publicly available without restriction as of the date noted on the document.
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`Fratto Declaration, paragraph 24. See also paragraphs 16-23.
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`The various RFC(s) identified in the Response, p. 8 are thus printed publications
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`available as prior art during the month and year listed in the heading of the subject RFC.
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`3.2.
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`Claim Interpretation
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`Claim 1, which is representative, broadly recites (emphasis added):
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`A system for providing a domain name service for establishing a secure
`communication link, the system comprising:
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`a domain name service system configured and arranged to be connected to a communication
`network, store a plurality of domain names and corresponding network addresses, receive a query
`for a netWork address, and indicate in response to the query whether the domain name service
`system supports establishing a secure communication link.
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`- Thus, claim 1 recites a domain name service (“DNS”) “system” and not a particular
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`computer device or structural configuration, such as a single secure DNS server. Such an
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`interpretation is consistent with the specification of the patent under reexamination, see, ag, col.
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`40, 11. 18-31, where the DNS system is implemented using gatekeeper 2603, DNS proxy 2610
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`and DNS server 2609. As the requester correctly notes, this means the “DNS system according
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`to the claims can be distributed across multiple computer systems. .
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`. .” Fratto Declaration, June
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`25, 2012, paragraph 31. Thus, the DNS system is reasonably interpreted as comprising a single
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`device or multiple devices.
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`The patent owner characterizes the invention as a special and separate DNS device that
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`traps DNS queries, determines whether the query is from a “special type of user,” and then,
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`actively assists in the creation of a virtual private network ("VPN") link. The Declaration of
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`Angelos D. Keromytis, Ph.D., filed with the Response (the “Keromytis”), paragraphs 17-19.
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`Regarding whether the DNS device is a separate device, as discussed above, the claims
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`do not recite a particular special DNS device, much less a device physically separate from a
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`conventional DNS server, which is also consistent with the specification of the patent under
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`reexamination. Indeed in one embodiment, the patent owner states "It will be appreciated that
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`the functions of DNS proxy 2610 and DNS server 2609 can be combined into a single server for
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`convenience." Col. 40, 11. 27-31, emphasis added.
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`In view of the above, the claimed DNS “system” is interpreted reasonably broad
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`consistent with the specification to comprise a single device (e. g. , a DNS server) or various
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`combinations of multiple devices (e. g., a DNS server and other DNS devices) (e. g., a DNS
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`server, a DNS proxy) (e. g., a DNS server, a DNS proxy, and other DNS devices). The patent
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`owner in their Response has not pointed to any language and arguments clearly disclaiming the
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`embodiments discussed above that support this interpretation.
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`Regarding whether the DNS system determines the query is from a special user and then
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`actively assists in the establishment of a VPN, the patent owner asserts the special DNS server
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`2602 (Fig. 26) in the patent under reexamination differs from a conventional DNS server in that
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`“DNS proxy 2610 [part of DNS server 2602]... determines whether the computer 2601 is
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`authorized to access the site” and, if so, "transmits a message to gatekeeper 2603 to facilitate the
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`creation of a VPN link between computer 2601 and secure target site 2604”. Keromytis
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`Declaration, paragraph 18. “DNS proxy 2610 then responds to the computer’s 2601 DNS
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`request with an address received from the gatekeeper 2604.” Id. That is, rather than
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`conventionally returning a public key to the initiator (e.g., computer 2601) sothat the target and
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`the initiator can establish a VPN, the special DNS server authenticates the request, then relies
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`upon the services’of a gatekeeper to receive an address (e.g. , a “hopblock” address, col. Col. 39,
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`67 — col. 40, l. 8) that the DNS server then provides to the initiator so that the initiator and target
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`can establish a VPN. See also the Keromytis Declaration, paragraph 19.
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`The claims however do not recite a DNS “server” (as previously discussed) much less a
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`DNS server that authenticates a user and relies upon the services of a gatekeeper, which is also
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`consistent with the specification. Indeed in one embodiment, the patent owner states the DNS
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`server (SDNS 3319) is queried "in the clear” (without using a VPN link) and without
`authenticating the user. Col. 51, 11. 37—50. The server then repliesfiijhout the use of a
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`gatekeeper 3314 “in the clear” so that the initiator and the target can establish a VPN. Id.
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`In view of the above, the claimed DNS system is interpreted reasonably broad consistent
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`with the specification has n_ot requiring a DNS server capable of authenticating the user and no_t
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`requiring the services of a gatekeeper to aid in the establishment of a VPN. The patent owner in
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`'
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`their Response has not pointed to any language and arguments clearly disclaiming the
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`embodiments discussed above that support this interpretation.
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`The district court in related litigation interpreted “indication” as having no special
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`'
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`meaning in view of the specification of the patent under reexamination and indeed the
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`specification does not use this term specifically. Thus, the term may be construed broadly to
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`mean a visible message or signal to a user that the DNS system supports establishing a secure
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`communication link. Markman Order, Ex. A. to the Comments, pp. 27 & 28.
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`3.3.
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`The Solana Prior Art
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`3.3.A.
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`Solana Teaches a “Domain Name Service System Configured to. . .Store Domain
`Names and Corresponding Network Addresses.”
`.
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`The patent owner asserts Solana fails to teach a domain name server system configured to
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`store a plurality of domain names and corresponding network addresses. First, it is argued,
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`“Solana merely discloses that the DS stores “naming information and. . .certificates that securely
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`bind domains to their public keys.” Response, p. 12. See also the Keromytis Declaration,
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`paragraph 24. The examiner does not agree. Solana teaches a “Directory Service (DS) holding
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`naming information....As mentioned, existing naming infrastructures (DNS—sec, X509) might be
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`used for this purpose." P.43. Solana cites to RFC 2065 as an example of said DNS-sec
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`(reference 16). RFC 2065 (DNS Security Extensions), as the name suggests, is an extension to
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`9 DNS and thus cites to and incorporates RFC 1033, 1034 and 1035, which describe the
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`conventional naming infrastructure of DNS. RFC 2065, abstract and section 1. Thus, the DNS-
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`sec embodiment of Solana incorporates at least RFC(s) 1034, 1035 and 2065. RFC(s) 1034,
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`1035 and 2065 are also of record in this proceeding. The naming information in DNS, as is
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`notoriously well known by one of Ordinary skill, includes domain names and their corresponding
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`addresses. See, e. g., RFC 1034, section 3.6. See also the requester’s Fratto Declaration,
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`paragraph 34.
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`Second, the patent owner argues the naming information is stored in Solana's DS "in the
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`form of UNIs," which do not include both a domain name and a corresponding network address.
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`Response, p. 12. See also the Keromytis Declaration, paragraph 25. The patent owner
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`misinterprets the role of the UNI. Solana teaches at p. 43 (emphasis added):
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`A coordinated global Directory Service (DS) holding naming information and especially'
`certificates that securely bind domains to their public keys is also required and constitutes the
`cryptographic support for inter-domain transactions. As mentioned, existing naming
`infrastructures (DNS-sec, X509) might be used for this purpose.
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`A well-defined convention establishing an Uniform Naming Information (UNI) is also needed to
`designate principals and domains globally and unequivocally as, for instance, a common
`name, an E-mail address, or a network address. Note that this information may also be
`published in the Directory Service.
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`The information necessary for the provision of secure end-to-end transactions is kept in the Local
`Authentication Database (LAD) that will contain for each principal (UNI) the local
`authentication credentials: for this, we propose to use an asymmetric cryptosystem with the
`principal owning the private key and the LAD holding the corresponding public key[].
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`Thus, Solana teaches of a DNS system that stores both “naming information” and .
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`certificate information. The certificates bind “domains to their public keys" by using globally
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`unique, identifying information (UNIs) about the owner of the public key. The UNI includes a
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`network address, which is published in the local authentication database (LAD). One of ordinary
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`skill would certainly understand that information is “published” in the LAD for the purpose of
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`reading by the public (searching). Thus, Solana at the least teaches the DNS system is queried
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`using a UNI network address in order toretrieve the corresponding public key.
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`Solana however further teaches the DNS system stores a plurality of domain names