`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO Box 1450
`Alexandna, Virgmia 22313-1450
`www.uspto gov
`
`95/001,856
`
`12/16/201]
`
`
`
`
`
`7921211
`
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
`LLP
`901 NEW YORK AVENUE, NW
`WASHINGTON, DC 20001 -4415
`
`43614102
`
`4051
`
`‘
`FOSTER. ROLAND G
`
`PAPER NUMBER
`
`ART UNIT
`3992
`
`MAIL DATE
`
`06/25/2013
`
`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 1017
`
`MICROSOFT 1017
`
`1
`
`

`

`Transmittal of Communication to
`
`Third Party Requester
`.
`.
`Inter Partes Reexamination
`
`Control No.
`
`Patent Under Reexamination
`
`
`95/001856
`7921211
`Examiner
`Art Unit
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address. --
`
`ROLAND FOSTER
`
`3992
`
`'— (THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS) —|
`
`HAYNES AND BOONE, LLP
`IP SECTION
`2323 VICTORY AVENUE, SUITE 700
`DALLAS, TX 75219
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark Office
`in the above-identified reexamination prceeding. 37 CFR 1.903.
`
`Prior to the filing of a Notice of Appeal, each time the patent owner responds to this communication,
`the third party requester of the interpartes reexamination may once file written comments within a
`period of 30 days from the date of service of the patent owner's response. This 30-day time period is
`
`statutory (35 U.S.C. 314(b)(2)), and, as such, it cannot be extended. See also 37 CFR 1.947.
`
`If an ex parte reexamination has been merged with the inter partes reexamination, no responsive
`submission by any ex parte third party requester is permitted.
`
`All correspondence relating to this inter partes reexamination proceeding should be directed to the
`Central Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end of the
`communication enclosed with this transmittal.
`
`
`
`
`
`US. Patent and Trademark Office
`PTOL-2070 (Rev. 07-04)
`
`Paper No. 20130612
`
`2
`
`

`

`
`Control No.
`Patent Under Reexamination
`
`Right of Appeal Notice
`(37 CFR 1 953)
`
`
`
`
`
`
`95/001,856
`7921211
`Examiner
`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 02 January, 2013
`Third Party(ies) on 30 January, 2013
`
`Patent owner and/or third party requester(s) may file a notice of appeal with respect to any adverse decision
`with payment of the fee set forth in 37 CFR 41 .20(b)(1) within one-month or thirty-days (whichever is
`longer). See MPEP 2671. In addition, a party may file a notice of cross appeal and pay the 37 CFR
`41 .20(b)(1) fee within fourteen days of service of an opposing party's timely filed notice of appeal. See
`MPEP 2672.
`
`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.
`
`If no party timely files a notice of appeal, prosecution on the merits of this reexamination proceeding will be
`concluded, and the Director of the USPTO will proceed to issue and publish a certificate under 37 CFR 1.997 in
`accordance with this Office action.
`
`The proposed amendment filed
`
`|:I will be entered
`
`|:l will not be entered*
`
`*Reasons for non-entry are given in the body of this notice.
`
`1a. IE Claims @ are subject to reexamination.
`
`1b. I:| Claims _ are not subject to reexamination.
`2.
`|:| Claims _ have been cancelled.
`
`PWNP‘S’TPW
`
`I:I Claims _ are confirmed. [Unamended patent claims].
`
`IX Claims u are patentable. [Amended or new claims].
`
`E Claims 1-10, 12-60 are rejected.
`
`I:l Claims
`are objected to.
`
`I:I are not acceptable.
`[I are acceptable.
`I:l The drawings filed on
`I:l The drawing correction request filed on _ is El approved. I:I disapproved.
`I:l Acknowledgment is made of the claim for priority under 35 U.S.C. 119 (a)-(d) or (f). The certified copy
`has:
`
`|:I been received.
`
`10. I:l Other
`
`Attachments
`
`|:I not been received.
`
`|:I been filed in Application/Control No.
`
`1. I] Notice of References Cited by Examiner, PTO-892
`2.
`I:l Information Disclosure Citation, PTO/SB/O8
`3.I:I
`
`US. Patent and Trademark Office
`PTOL-2066 (08-06)
`
`Right of Appeal Notice (37 CFR 1.953)
`
`Part of Paper No. 20130612
`
`
`
`3
`
`

`

`Application/Control Number: 95/001,856
`Art Unit: 3992
`
`L
`
`Introduction
`
`Page 2
`
`This Office action addresses claims 1-60 of United States Patent No. 7,921,211 B2 (the
`
`"Larson" patent), for which reexamination was granted in the Order Granting Inter Partes
`
`Reexamination (hereafter the "Order"), mailed March 5, 2012, in response to a Request for Inter
`
`Partes Reexamination, filed December 16, 2011 (the ”Request").
`
`An Action Closing Prosecution ("ACP") mailed October 1, 2012 rejected original claims
`
`1-10 and 12-16 of the Larson patent. Original claim 11 was found patentable.
`
`The patent owner responded by filing arguments and associated evidence on January 2,
`
`2013 (the "Response").
`
`The third party requester responded by filing Comments on the Patent Owner's Response
`
`on January 30, 2013 (the "Comments").
`
`Evidence Submitted After the ACP
`
`The patent owner submitted the Supplemental Declaration of Angelos D. Keromytis,
`
`Ph.D. on January 2, 2013 (the "Supplemental Declaration”), which was after the mailing date of
`
`said ACP. Evidence submitted after an action closing prosecution (§ 1.949) in an inter partes
`
`reexamination filed under § 1.913 but before or on the same date of filing an appeal (§ 41.31 or §
`
`41.61 of this title), may be admitted upon a showing of good and sufficient reasons why the
`
`affidavit or other evidence is necessary and was not earlier presented. 37 CFR § 1.116(e). The
`
`patent owner did not set forth a showing why the Supplemental Declaration was necessary and
`
`4
`
`

`

`Application/Control Number: 95/001,856
`Art Unit: 3992
`
`Page 3
`
`was not earlier presented. After an ACP in an inter partes reexamination, the patent owner may
`
`once file comments limited to the issues raised in the Office action closing prosecution. 37 CFR
`
`§ 1 .95] (a). Thus, the patent owner may not file additional comments showing why the
`
`Supplemental Declaration should be entered. The Supplemental Declaration is not of record in
`
`this proceeding. The examiner however has briefly reviewed the Supplemental Declaration, but
`
`it does not persuade the examiner to withdraw any rejection.
`
`Conclusion
`
`The examiner has fully considered the arguments and evidence of record 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 "Response to Arguments" section for further explanation. All prior
`
`rejections are maintained. Accordingly, this Office action is made a Right of Appeal Notice,
`
`which is a final Office action. See MPEP § 2673.01 , .02. See also the “conclusion” section to
`
`this Office action.
`
`Submissions after the Action Closing Prosecution (ACP)
`
`Said Response, Comments and Supplemental Declaration were submitted after the ACP.
`
`The Supplemental Declaration is not entered for the reasons discussed above. The Response and
`
`Comments have been entered.
`
`5
`
`

`

`Application/Control Number: 95/001,856
`Art Unit: 3992
`
`Page 4
`
`2.
`
`2.A.
`
`Final Decisions
`
`Final Decisions Regarding Patentability — Right of Appeal
`
`37 CFR § 1953 states regarding the Examiner’s Right of Appeal Notice in an inter partes
`
`reexamination:
`
`(C) The Right of Appeal Notice shall be a final action, which comprises a final rejection setting
`forth each ground of rejection and /or final decision favorable to patentability including each
`determination not to make a proposed rejection, an identification of the status of each claim, and
`the reasons for decisions favorable to patentability and /or the grounds of rejection for each
`claim....
`
`35 U.S.C. 315, in turn, states regarding an appeal from an inter partes reexamination:
`
`(a) PATENT OWNER. 7 The patent owner involved in an inter partes reexamination
`proceeding under this chapter —
`(1)
`may appeal under the provisions of section 134...with respect to any decision
`adverse to the patentability of any original or proposed amended or new claim of
`the patent; and
`may be a party to any appeal taken by a third—party requester under subsection
`(b)-
`(b) THIRD-PARTY REQUESTER. — A third-party requester —
`(1)
`may appeal under the provisions of section 134...with respect to any final
`decision favorable to the patentability of any original or proposed amended or
`new claim of the patent...
`
`(2)
`
`2.B.
`
`Final Decision Favorable to Patentability
`(Determinations NOT to Adopt the Proposed Rejections)
`
`Claim 11 was found patentable over the applied, prior art of record for the reasons set
`
`forth in Section 4.
`
`6
`
`

`

`Application/Control Number: 95/001,856
`Art Unit: 3992
`
`Page 5
`
`2C.
`
`Final Decision Unfavorable to Patentability
`(Determinations to Adopt the Proposed Rejections)
`
`A total of four principal references, in certain combinations, have been asserted in the
`
`Request as providing teachings relevant to the claims of the Larson patent.
`
`Rolf Lendenrnann, Understanding OSF DCE 1.1f0rAIX and 05/2, IBM International Technical
`Support Organization (Oct. 1995) (“Lendenmann”), attached as Exhibit D-1 (parts 1 and 2) to
`the Request.
`
`US. Patent No. 6,119,234 (“Aziz”), attached as Exhibit D—2 to the Request.
`
`Takahiro Kiuchi and Shigekoto Kaihara, “C-IITTP-The Development of a Secure, Closed IITTP-
`based Network on the Internet,” Proceedings of the Symposium on Network and Distributed
`System Security, 1996 (“Kiuchi”), attached as Exhibit D—I 6 to the Request.
`
`Bryan Pfaffenberger, Netscape Navigator 3.0: Surfing the Web and Exploring the Internet,
`Academic Press (1996) (“Pfaffenberger”), attached as Exhibit D-17 to the Request.
`
`The request also asserts additional references to explain features in the principal
`
`references or as secondary teaching references.
`
`Information Sciences Institute, “Transmission Control Protocol,” DARPA Internet Program
`Protocol Specification Request for Comments 793 (Sept. 1981) (“RFC 793”), attached as Exhibit
`D-3.
`
`D. Eastlake and C. Kaufman, Network Working Group, Information Sciences Institute, “Domain
`Name System Security Extensions,” Request for Comments 2065 (Jan. 1997) (“RFC 2065”),
`attached as Exhibit D-4.
`
`US. Patent No. 5,898,830 (“Wesinger”), attached as Exhibit D—5 to the Request.
`
`US. Patent No. 5,689,641 (“Ludwig”), attached as Exhibit D—6 to the Request.
`
`David M. Martin, “A Framework for Local Anonymity in the Internet,” Technical Report.
`Boston University, Boston, MA, USA (Feb. 21, 1998) (“Martin”), attached as Exhibit D-7.
`
`Bruce Schneier, Applied Cryptography (1996) (“Schneier”), attached as Exhibit D-8.
`
`7
`
`

`

`Application/Control Number: 95/001,856
`Art Unit: 3992
`
`Page 6
`
`Lawton, George, “New top-level domains promise descriptive names,” Sunworld Online,
`September 1996 (“Lawton”), attached as Exhibit D-9.
`
`Gaspoz, Jean-Paul, “VPN on DCE: From Reference Configuration to Implementation,” Bringing
`Telecommunication Services to the People , IS&N ’95, Third International Conference on
`Intelligence in Broadband Services and Networks, October 1995 Proceedings (“Gaspoz”),
`attached as Exhibit D-10.
`
`US. Patent No. 6,269,099 (“Borella”), attached as Exhibit D-11 to the Request.
`
`US. Patent No. 6,560,634 (“Broadhurst”), attached as Exhibit D-12 to the Request.
`
`Mark Pallen, “The World Wide Web,” British Medical Journal, vol. 311 at 1554 (Dec. 9, 1995)
`(“Pallen”), attached as Exhibit D-13.
`
`R.L. Rivest et al., “A Method for Obtaining Digital Signatures and Public-Key Cryptosystems,”
`Communications of the ACM, vol. 21, no. 2, pp. 120—126 (Feb. 1978) (“Rivest”), attached as
`Exhibit D- 14.
`
`US. Patent No. 4,952,930 (“Franaszek”), attached as Exhibit D-15 to the Request.
`
`Frederic Gittler el al., “The DCE Security Service,” Hewlett—Packard Journal, pp. 41—48, (Dec.
`1995) (“Gittler”), attached as Exhibit D-18 .
`
`2.D.
`
`Summary Regarding Those Proposed Rejections Adopted and Not Adopted
`by the Examiner
`
`As will be explained in Section 3 (Response to Arguments), the rejections identified in
`
`Issues 1, 3—5, 7, 8, 11—13, 15, 17, 18, 20 and 21 (Request, pp. 31—34) remain adopted. The
`
`rejections identified in Issues 9 and 16 remain adopted except for the rejections of claims 5, 23,
`
`27 and 50 (Issue 9) and 10—13 (Issue 16), which are withdrawn. All rejections identified in
`
`Issues 2, 6, 10, 14 and 19 are withdrawn. Claims 1-10 and 12-60 however remain rejected under
`
`at least one grounds of rejection.
`
`8
`
`

`

`Application/Control Number: 95/001,856
`Art Unit: 3992
`
`Page 7
`
`2.E.
`
`Entitlement to the Benefit of an Earlier Filing Date
`
`Requestor asserts that the instant claims are not entitled to the earliest filing date of
`
`October 30, 1998, the filing date of the oldest parent, provisional application. None of the
`
`principal references asserted by the third party requester appear to be intervening references nor
`
`does the statutory basis of rejections based upon the principal reference appear to be affected by
`
`the entitlement question. Nonetheless, the examiner agrees with the third party requester. Each
`
`of the independent claims recite a "domain name service" and a ”domain name service system"
`
`limitation. A continuation-in-part application (“CIP”) 09/558,210, filed April 26, 2000, includcs
`
`a section entitled “Continuation-in-Part Improvements” on page 56 specifically discussing secure
`
`domain name service queries on pages 81-88. The parent applications prior to this date do not
`
`appear to even be directed to services similar to domain name lookup. Thus, the applications
`
`filed prior to April 26, 2000 fail to provide written description support nor enable the subject
`
`matter recited in claims 1-60 of the Larson patent. Accordingly, the effective filing date for
`
`claims 1—60 is no earlier than the April 26, 2000 filing date of ClP application 09/558,210.
`
`2.F.
`
`Rejections Based upon Lendenmann (Issues 1, 3-5, 7 and 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.
`
`9
`
`

`

`Application/Control Number: 95/001,856
`Art Unit: 3992
`
`Page 8
`
`(Issue 1) Claims 1-3, 5, 6, 14-30, 33-54, and 57-60 are rejected under 35 U.S.C. 102(b)
`
`as being anticipated by Lendenmann.
`
`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 through 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.
`
`(Issue 3) Claim 7 is rejected under 35 U.S.C. 103(a) as being unpatentable over
`
`Lendenmann as applied to the respective, parent claims above, and further in View of Wesinger.
`
`(Issue 4) Claims 8 and 9 are rejected under 35 U.S.C. 103(a) as being unpatentable over
`
`Lendenmann as applied to the respective, parent claims above, and further in View of Gaspoz,
`
`(Issue 5) Claim 10 is rejected under 35 U.S.C. 103(a) as being unpatentable over
`
`Lendenmann in View of Gaspoz, as applied to the respective, parent claims above, and further in
`
`View of Schneier.
`
`(Issue 7) Claims 12 and 13 are rejected under 35 U.S.C. 103(a) as being unpatentable
`
`over Lendenmann in View of Gaspoz, as applied to the respective, parent claims above, and
`
`further in View of RFC 793.
`
`10
`
`10
`
`

`

`Application/Control Number: 95/001,856
`Art Unit: 3992
`
`Page 9
`
`(Issue 8) Claims 31, 32, 55 and 56 are rejected under 35 U.S.C. 103(a) as being
`
`unpatentable over Lendenmann in view of Ludwig, as applied to the respective, parent claims
`
`above, and further in view ofRFC 793.
`
`Summary
`
`Independent claim 1 is representative of all independent claims. Independent claim 1
`
`recites:
`
`l. A system for providing a domain name service for establishing a secure communication
`link, the system comprising:
`
`a domain name service system configured to be connected to a communication network, to
`store a plurality of domain names and corresponding network addresses, to receive a query
`for a network address, and to comprise an indication that the domain name service system
`supports establishing a secure communication link.
`
`Regarding the specification of the Larson patent for which reexamination is requested,
`
`Fig. 25 (reproduced below) is labeled “prior art."
`
`11
`
`11
`
`

`

`Application/Control Number: 95/001,856
`Art Unit: 3992
`
`Page 10
`
`
`
`sea
`.
`£4 .,
`man
`
`
`
`s“.
`9% RES?
`
`.7
`
`2%
`
`magi?
`i‘éiifi EéiE
`
`
`
`Fifi. 25
`
`Fig. 25 (prior art) discloses: (l) a domain name service system configured to be
`
`connected to a communication network, (2) storing a plurality of domain names and
`
`corresponding network addresses. and (3) receiving a query for a network address. Thus, all
`
`limitations in claim 1 are admitted prior art except the final limitation “to comprise an indication
`
`that the domain name service system supports establishing a secure communication link.”
`
`Nonetheless Lendenmann teaches all the limitations in representative claim 1.
`
`Lendenmann describes a Distributed Computing Environment (”DCE") providing a directory
`
`service specifically including a Cell Directory Service (CDS).
`
`(P. 10, section 1.4.4 DCE
`
`Directory Service).
`
`12
`
`12
`
`

`

`Application/Control Number: 95/001,856
`Art Unit: 3992
`
`Page 11
`
`Regarding the limitation “domain name service configured for connection to a
`
`communication network,” Lendenmann teaches that the CDS (domain name service) is
`
`connected to a communication network, as illustrated in Fig. 15, which is reproduced below:
`
`
`
`m: .
`
`as
`
`
`
`
`
`Regarding the limitation “to store a plurality of domain names and corresponding
`
`network addresses” then “to receive a query for a network address,” Lendenmann teaches
`
`regarding the CDS (domain name service) at p. 21. section 2.2:
`
`The directory service component that controls names inside a cell is called the Cell Directory
`Service (CDS). The CDS stores names of resources in that cell so that when given a name, CDS
`returns the network address of the named resource.
`
`See also the CDS lookup process described on pages 29-34.
`
`13
`
`13
`
`

`

`Application/Control Number: 95/001,856
`Art Unit: 3992
`
`Page 12
`
`Regarding the limitation to provide an “indication that the domain name service supports
`
`establishing a secure communications link,” a query from a client to a directory service (CDS)
`
`server Via a network is made by a remote procedure call, as illustrated in Fig. 15, which is
`
`reproduced below. See also pp. 9 and 173.
`
`
`
`Lendenmann further teaches that RCP calls relies upon well—known authentication
`
`algorithms, such as shared-secret key and public key (p. 192, section 10.4.1) including supplying
`
`the requesting client with a session key and a service ticket encrypted with server’s session key
`
`(i.e., digitally signed certificate) (p. 194). The client encrypts the RFC call with the session key,
`
`which the "server immediately challenges...by sending it a randomly generated number which
`
`the client has to encrypt with the session key and return to the server." P. 194, section 10.4.4.
`
`The client transmits the encrypted response, which the server decrypts using the server‘s session
`
`14
`
`14
`
`

`

`Application/Control Number: 95/001,856
`Art Unit: 3992
`
`Page 13
`
`key obtained from the decrypted service ticket. If the decrypted random number matches, then
`
`the "session key is used in further communication over the binding." Id. Thus, the sending of
`
`the "randomly generated number" is an indication that the domain name service (CDS reached
`
`Via a RCP call Via the network) supports the establishment of subsequent, secure communication
`
`link using a shared secret key (the session key) for encryption/decryption.
`
`By returning the network address corresponding to a secure domain name, the Cell
`
`Directory Service (CDS) also provides ”an indication..." as recited in the claim. Request,
`
`Exhibit F-l (Claim Chart), p. 13. Similarly, by only performing operations for users authorized
`
`using access control lists (ACLs), the CDS provides an indication that supports establishing a
`
`secure communication link.
`
`(Id. at 14).
`
`Incorporation by Reference
`
`Thus, the third party requester proposed rejection of claims identified above as set forth
`
`on pages 11-17, 31, 32 and Exhibit F-l (claim chart), are adopted and incorporated by reference.
`
`2.G.
`
`Rejections Based upon Aziz (Issues 9, 11-13, 15)
`
`Claim Rejections - 35 USC § 102
`
`A person shall be entitled to a patent unless 7
`
`(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
`patcnt by anothcr filed in the United States before the invcntion by thc applicant for patent, except that an
`international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this
`subsection of an application filed in die 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.
`
`15
`
`15
`
`

`

`Application/Control Number: 95/001,856
`Art Unit: 3992
`
`Page 14
`
`(Issue 9) Claims 1, 2, 6-9, 14-22, 24, 25, 28, 33-49, 51, 52 and 57-60 are rejected under
`
`35 USC. 102(e) as being anticipated by Aziz.
`
`Claim Rejections - 35 USC § 103
`
`(Issue 11) Claim 3, 4, and 26 are rejected under 35 USC. 103( a) as being unpatentable
`
`over Aziz as applied to the respective, parent claims above, and further in view of Lawton.
`
`(Issue 12) Claim 9 is rejected under 35 USC. 103(a) as being unpatentable over Aziz as
`
`applied to the respective, parent claims above, and further in view of Franaszek.
`
`(Issue 13) Claim 10 is rejected under 35 USC. 103(a) as being unpatentable over Aziz
`
`as applied to the respective, parent claims above, and further in view of Schneier.
`
`(Issue 15) Claims 29-32 and 53-56 are rejected under 35 USC. 103(a) as being
`
`unpatentable over Aziz, as applied to the respective, parent claims above, and further in view of
`
`Ludwig.
`
`Summary
`
`Independent claim 1 is representative of all independent claims, as discussed above.
`
`Similarly, the features of independent claim 1 have been discussed.
`
`16
`
`16
`
`

`

`Application/Control Number: 95/001,856
`Art Unit: 3992
`
`Page 15
`
`Also as discussed, all limitations in claim 1 are admitted prior art except the final
`
`limitation “to comprise an indication that the domain name service system supports establishing
`
`a secure communication link.”
`
`Nonetheless Aziz teaches all the limitations in representative claim 1. Aziz describes a
`
`"secure domain name server for a computer network,” where the “domain name database stores
`
`secure computer network addresses for the computer network." (Abstract).
`
`Regarding the limitation “domain name service configured for connection to a
`
`communication network,” see the Aziz abstract, as discussed above. See also Fig. l, reproduced
`
`below, which illustrates the outside name server 120 (NDS) connected to public network 190.
`
`
`
`
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`

`

`Application/Control Number: 95/001,856
`Art Unit: 3992
`
`Page 16
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`Regarding the limitation “to store a plurality of domain names and corresponding
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`network addresses” then “to receive a query for a network address,” Aziz teaches at col. 1, ll. 26—
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`38:
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`In the Internet world, the names and addresses of hosts are stored in databases on computers
`located throughout the world. A computer that has one of these databases, and responds to
`queries for a host's address, is known by various names, including "Domain Name Server" or
`simply "name server." Because so many host computers have Internet addresses, it is not practical
`to maintain the name and address information for all hosts in one database. Instead, such
`information is distributed among the Internet Domain Name Servers throughout the world.
`
`Domain Name Servers and their associated name and address databases are just one system used
`to respond to address queries (also referred to as "resolving addresses").
`
`Regarding the limitation to provide an “indication that the domain name service supports
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`establishing a secure communications link,” Aziz describes configuring the DNS to respond to
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`requests with a special record that includes information needed for secure communications:
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`The registered name server for a domain is configured to return a new resource
`record type, herein called an SX record, in response to requests for information needed for secure
`communications with protected hosts in that domain. The resolver on (or otherwise associated
`with) the authorized client is configured to use the data in the SX record to dynamically update
`the information used by the client to handle secure communications.
`
`(Col. 4, ll. 8-16).
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`Alternatively, a name server can be configured to return an SX record in the response that
`includes the answer to a query for some other record. For example, if the client queries for a host
`address, a name server might send a response with the host address in the answer section and the
`SX record in the additional section.
`
`18
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`18
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`

`

`Application/Control Number: 95/001,856
`Art Unit: 3992
`
`(Col. 4, 11. 44—49).
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`Page 17
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`Thus, the presence of SX records in the response from the DNS (NS 120) provides an
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`indication that the DNS establishing a secure communication link.
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`Aziz describes automatically adding the KEY and SIG records, which also provides "an
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`indication..." as recited in the claim. (Request at 19).
`
`Incorporation by Reference
`
`Thus, the third party requester proposed rejection of the claims identified above on pages
`
`11, 12, 17-20, 32, 33 and Exhibit F-2 (claim chart), are adopted and incorporated by reference.
`
`2.H. Rejections Based upon Kiuchi and Pfaffenberger (Issues 16-18, 20, 21)
`
`Claim Rejections - 35 USC § 103
`
`(Issue 16) Claims 1-4, 6, 8, 9, 14-19, 22, 24-30, 33, 34, 36-43, 46, 48-54 and 57-60 are
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`rejected under 35 U.S.C. 103(a) as being unpatentable over Kiuchi in view of Pfaffenberger.
`
`(Issue 17) Claims 5, 23 and 47 are rejected under 35 U.S.C. 103(a) as being
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`unpatentable over Kiuchi in View of Pfaffenberger as applied to the respective, parent claims
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`above and further in View of Rivest.
`
`19
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`19
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`

`

`Application/Control Number: 95/001,856
`Art Unit: 3992
`
`Page 18
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`(Issue 18) Claim 7 is rejected under 35 U.S.C. 103(a) as being unpatentable over Kiuchi
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`in view of Pfaffenberger as applied to the respective, parent claims above and further in view of
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`Borella.
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`(Issue 20) Claims 20, 21, 35, 44 and 45 are rejected under 35 U.S.C. 103(a) as being
`
`unpatentable over Kiuchi in view of Pfaffenberger as applied to the respective, parent claims
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`above and further in view of Broadhurst.
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`(Issue 21) Claims 31, 33, 35 and 56 are rejected under 35 U.S.C. 103(a) as being
`
`unpatentable over Kiuchi in view of Pfaffenberger as applied to the respective, parent claims
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`above and further in view of Ludwig.
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`My
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`Independent claim 1 is representative of all independent claims, as discussed above.
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`Similarly, the features of independent claim 1 have been discussed.
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`Also as discussed, all limitations in claim 1 are admitted prior art except the final
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`limitation “to comprise an indication that the domain name service system supports establishing
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`a secure communication link.”
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`Nonetheless, Kiuchi in view of Pfaffenberger teaches all the limitations in representative
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`claim 1. Kiuchi describes a ”closed HTTP-based networ " ("C-HTTP”) on the Internet that
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`relies in part upon a "C—HTTP name server." Abstract.
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`20
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`20
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`

`

`Application/Control Number: 95/001,856
`Art Unit: 3992
`
`Page 19
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`Regarding the limitations directed to a domain name service configured for connection
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`to a communication network, storing a plurality of domain names and corresponding network
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`addresses, then receiving a query for a network address, Kiuchi states at p. 65, section 2.3,
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`subsections (2) and (3):
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`A client-side proxy asks the C-IITTP name server whether it can communicate with the host
`specified in a given URL. If the name server confirms that the query is legitimate, it examines
`whether the requested server-side proxy is registered in the closed network and is permitted to
`accept the connection form the client—side proxy. If the connection is permitted, the C—HTTP
`name server sends the 1P address and public key of the server-side proxy and both request and
`response Nonce values. If it is not permitted, it sends a status code which indicates an
`error. . .thn the C-HTTP name server confirms that thc spccificd scrvcr-sidc proxy is an
`appropriate closed network member, a client side proxy sends a request for connection to the
`server—side proxy, which is encrypted using the server—side proxy’s public key....
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`The same section of Kiuchi cited above also teaches providing an indication that the
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`domain name service supports establishing a secure communications link. Specifically, the
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`sending of the "public key" is an indication that the domain name service (C-HTTP name server)
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`supports the establishment of subsequent, secure communication link using a shared public key
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`for encryption/decryption.
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`Pfaffenberger also describes indicating support for a secure communication link by
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`providing a Visible icon on an http browser (Request, pp. 22-24) and that the addition of an http
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`browser to the C—http system of Kiuchi would have been obvious (p. 22).
`
`21
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`21
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`

`

`Application/Control Number: 95/001,856
`Art Unit: 3992
`
`Page 20
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`Incorporation by Reference
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`Thus, the third party requester proposed rejection of claims identified above on pages 11,
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`12, 20—24, 33, 34 and Exhibit F—3 (claim chart), are adopted and incorporated by reference.
`
`I!”
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`Response to Arguments
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`The examiner has considered the arguments and evidence of record provided in both the
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`patent owner‘s Response and in the third party requester's Comments. Based on consideration of
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`the entire record, the third party requester‘s arguments and evidence are deemed more persuasive.
`
`As noted in Section l, the patent owner's Supplemental Declaration has not been entered and is
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`not of record in this proceeding. The examiner however has briefly reviewed the Declaration,
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`but it does not persuade the examiner to decide any issues favorable to patentability.
`
`The patent owner appears to have presented new arguments in the Response while
`
`dropping other arguments first presented in response to the ACP. The reader of this RAN is
`
`requested to consult the prosecution history, including the ACP, if “older” arguments are again
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`presented in the patent owner's Brief, should one be filed.
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`3.1.
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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
`
`22
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`22
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`

`

`Application/Control Number: 95/001,856
`Art Unit: 3992
`
`Page 21
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`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”)
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`system” and not a particular
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`:4
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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, e. g., 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. The examiner agree