IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`PATENT
`
`In re Application of:
`
`Customer Number:
`
`Victor Larson
`
`Confirmation Number: 3528
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`Serial No.: 111679,416
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`Group Art Unit: 2453
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`Filed: February 27, 2007
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`Examiner: Krisna Lim
`
`For:
`
`Attorney Reference No:
`
`METHOD FOR
`ESTABLISHING SECURE
`COMMUNICATION LINK
`BETWEEN COMPUTERS
`OF VIRTUAL PRIVATE
`NETWORK
`
`Sir:
`
`077580-0015 (VRNK-1CP2DVCN)
`
`FILED VIA EFS-WEB
`
`RESPONSE/AMENDMENT "B"
`
`In response to the final Office Action dated April 8, 2010, it is respectfully requested that
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`the time for response to the Office Action be extended for three (3) months to October 8, 2010,
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`and reconsideration and further examination of the above-identified application are respectfully
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`requested based on the following:
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`Amendments to the Claims are reflected in the listing of claims, which begins on page 2 of this
`
`paper.
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`Remarks/Arguments begin on page 7 of this paper.
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`AMENDMENTS TO THE CLAIMS
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`Page 1 of 12
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`Apple v. VirnetX, IPR2015-00866
`Petitioner Apple Inc. - Ex. 1069, p. 1
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`

`
`Serial No. 111679,416
`Amendment B
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`This listing of claims will replace all prior versions, and listings, of claims in the
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`application:
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`LISTING OF CLAIMS:
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`1. (Cancelled)
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`2. (Currently Amended) A method of communicating using a first device to communicate with
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`a second device having a secure name, the method comprising:
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`from the first device, sending a message to a secure name service, the message requesting
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`[[an]] a network address associated with the secure name of the second device;
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`at the first device, receiving a message containing the network address associated with
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`the secure name of the second device; and
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`from the first device, sending a message to the network address associated with the
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`secure name of the second device using a secure communication link.
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`3. (Currently Amended) The method according to claim 2, wherein the secure name of the
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`second device is a secure domain namefurther including supporting a plurality of services
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`through the secure communication link.
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`4. (Previously Presented) The method according to claim 2, wherein the secure name indicates
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`security.
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`5. (Currently Amended) The method according to claim 2, wherein receiving the message
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`containing the network address associated with the secure name of the second device includes
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`receiving the message in encrypted form.
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`6. (Previously Presented) The method according to claim 5, further including decrypting the
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`message.
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`7. (Currently Amended) The method according to claim 2, wherein the second device is capable
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`of supporting a secure communication link as well as a non-secure communication link, the
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`method further including establishing a non-secure communication link with the second device
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`when needed ...
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`Page 2 of 12
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`Apple v. VirnetX, IPR2015-00866
`Petitioner Apple Inc. - Ex. 1069, p. 2
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`

`
`Serial No. 111679,416
`Amendment B
`
`8. (Currently Amended) The method according to claim 2, wherein receiving a message
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`containing the network address associated with the secure name of the device includes receiving
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`the network address as an IP address associated with the secure name of the device.
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`9. (Previously Presented) The method according to claim 2, further including automatically
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`initiating the secure communication link after it is enabled.
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`10.
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`(Currently Amended) The method according to claim 2, wherein receiving a message
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`containing the network address associated with the secure name of the device includes receiving
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`the message at the first device through tunneling within the secure communication link.
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`11.
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`(Currently Amended) The method according to claim 2, wherein receiving a message
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`containing the network address associated with the secure name of the device includes receiving
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`the message in the form of at least one tunneled packet.
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`12.
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`(Previously Presented) The method according to claim 2, wherein the receiving and
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`sending of messages includes receiving and sending the messages in accordance with any one of
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`a plurality of communication protocols.
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`13.
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`(Currently Amended) The method according to claim 2, wherein the receiving an and
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`sending of messages through the secure communication link includes multiple sessions.
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`14.
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`(Previously Presented) The method according to claim 2, further including supporting a
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`plurality of services over the secure communication link.
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`15.
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`(Previously Presented) The method according to claim 14, wherein the plurality of
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`services comprises a plurality of communication protocols, a plurality of application programs,
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`multiple sessions, or a combination thereof.
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`16.
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`(Previously Presented) The method according to claim 15, wherein the plurality of
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`application programs comprises video conferencing, e-mail, a word processing program,
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`telephony or a combination thereof.
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`17.
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`(Previously Presented) The method according to claim 15, wherein the plurality of
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`services comprises audio, video or a combination thereof.
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`Page 3 of 12
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`Apple v. VirnetX, IPR2015-00866
`Petitioner Apple Inc. - Ex. 1069, p. 3
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`

`
`Serial No. 111679,416
`Amendment B
`
`18.
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`(Previously Presented) The method according to claim 2, wherein the secure
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`communication link is an authenticated link.
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`19.
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`(Currently Amended) The method according to claim 2, wherein the first device is a
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`computer, and the steps are performed on the computer.
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`20.
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`(Currently Amended) The method according to claim 2, wherein the first device is a
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`client computer connected to a communication network, and the method is performed by the
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`client computer on the communication network.
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`21.
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`(Currently Amended) The method according to claim 2, further including providing an
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`unsecure unsecured name associated with the device.
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`22.
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`(Currently Amended) The method according to claim 2, wherein the secure name is
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`registered prior to the step of sending a message to a secure name service.
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`23.
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`(Currently Amended) The method according to claim 2, wherein the secure name of the
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`second device is a secure, non-standard domain name.
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`\Vherein sending a message to a name service comprises sending a first message from a
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`first device to the name service, the first message requesting from the name service the address
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`associated with the secure name of the device,
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`wherein receiving a message comprises receiving at the first device a second message
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`from the name service, the second message containing the address associated with the secure
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`name of the device, and
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`v1herein sending a message to the address comprises sending a third message from the
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`first device to the address associated \'o'ith the secure name of the device using the secure
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`communication linl<.
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`24.
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`(Currently Amended) A method fer-of using a first device to securely communicate
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`communicating with a second device overifr. a communication network, the device having a
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`secure name, the method comprising:
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`at the first device requesting and obtaining registration of a secure name of-afor the first
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`device, the secure name being associated with [[an]] a network address;
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`Page 4 of 12
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`Apple v. VirnetX, IPR2015-00866
`Petitioner Apple Inc. - Ex. 1069, p. 4
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`

`
`Serial No. 111679,416
`Amendment B
`
`receiving at the network address associated with the secure name of the first device a
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`message from a second device of the desire to securely communicate with the first device; and
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`sending a message securely from the first device to the second device.
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`25.
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`(Currently Amended) The method according to claim 24, wherein requesting and
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`obtaining registration of a secure name ef.a-for the first device comprises requesting from using
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`the first device to obtain a registration of the secure name ef-the-for the first device, and wherein
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`sending a message securely comprises sending the message from the first device to the second
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`device using a secure communication link.
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`26.
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`(Currently Amended) A method for communicatingofusing a first device to
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`communicate with a second device ffi-over a communication network, the device associated with
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`a secure name and an unsecured name, the method comprising:
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`from the first device requesting and obtaining registration of an unsecured name
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`associated with athe first device;
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`from the first device requesting and obtaining registration of a secure name associated
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`with the first device, wherein [[an]] a unique network address corresponds to the secure name
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`associated with the first device;
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`receiving at the unique network address associated with the secure name a message from
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`a second device requesting the desire to securely communicate with the first device; and
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`from the first device sending a message securely from the first device to the second
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`device.
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`27.
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`(Currently Amended) The method according to claim 26,
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`wherein requesting and obtaining registration of an unsecured name associated with athe
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`first device comprises requesting from using the first device to obtain a registration of the
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`unsecured name associated with the first device, and
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`wherein requesting and obtaining registration of a secure name associated with the first
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`device comprises requesting from using the first device to obtain a registration of the secure
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`name associated with the first device.
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`28.
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`(Currently Amended) A non-transitory machine-readable medium comprising
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`instructions for:
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`Page 5 of 12
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`Apple v. VirnetX, IPR2015-00866
`Petitioner Apple Inc. - Ex. 1069, p. 5
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`

`
`Serial No. 11/679,416
`Amendment B
`
`sending a message to a secure name service, the message requesting [[an]] a network
`
`address associated with a secure name of a device;
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`receiving a message containing the network address associated with the secure name of
`
`the device; and
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`sending a message to the network address associated with the secure name of the device
`
`using a secure communication link.
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`29.
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`(Currently Amended) A non-transitory machine-readable medium comprising
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`instructions for a method fur-of communicating with a device having a secure name, the method
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`compnsmg:
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`receiving at [[an]] a network address associated with a secure name of a first device a
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`message from a second device requesting the desired to securely communicate with the first
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`device, wherein the secure name of the first device is registered; and
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`sending a message securely from the first device to the second device.
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`30.
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`(Currently Amended) A non-transitory machine-readable medium comprising
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`instructions for a method fur-of communicating with a first device associated with a secure name
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`and an unsecured name, the method comprising:
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`receiving, at [[an]] a network address corresponding to a-the secure name associated with
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`athe first device, a message from a second device of the desired to securely communicate with
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`the first device, 'Wherein an unsecured name is associated with the first device, and the secure
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`name and the unsecured name are registered; and
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`sending a message securely over a secure communication link from the first device to the
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`second device.
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`Page 6 of 12
`
`Apple v. VirnetX, IPR2015-00866
`Petitioner Apple Inc. - Ex. 1069, p. 6
`
`

`
`Serial No. 11/679,416
`Amendment B
`
`REMARKS/ARGUMENTS
`
`Claims 2-30 remain in the application, of which claims 2, 24, 26, 28, 29, and 30 are the
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`independent claims. Claims 2, 3, 5, 7, 8, 10, 11, 13, 19-30 have been amended to more clearly
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`define the invention. The changes to the claims are fully supported by the original disclosure.
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`No new matter has been introduced into the claims. Reconsideration and further examination are
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`respectfully requested.
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`The changes to the application are fully supported by the original disclosure, including,
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`for example, original paragraphs [0313] to [0331].
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`Objection to the Specification
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`The Specification has been objected to for failing to provide support for "machine
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`readable medium," as recited in claims 28-30, because "machine readable medium" may be
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`defined to broadly include non-statutory subject matter. The Office Action notes that adding
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`"non-transitory" to claims 28-30 does not raise the issue of new subject matter. Because claims
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`28-30 have been amended to recite "non-transitory," the Applicant respectfully submits that this
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`objection is moot.
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`Rejection under 3 5 U.S. C. § 112, second paragraph
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`Claims 2-30 have been rejected under 35 U.S.C. § 112, second paragraph, as being
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`indefinite for failing to particularly point out and distinctly claim the subject matter which the
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`Applicant regards as the invention .. The rejection is respectfully traversed, and reconsideration
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`and withdrawal of the § 112 rejection is respectfully requested.
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`Regarding claim 2, the Office Action states that it is unclear from where a message is
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`sent. It states that is also unclear what kind of "name service" is being claimed (i.e., a secure
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`Page 7 of 12
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`Apple v. VirnetX, IPR2015-00866
`Petitioner Apple Inc. - Ex. 1069, p. 7
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`

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`Serial No. 11/679,416
`Amendment B
`
`domain name service? A domain name service?). It further states that it is also unclear what kind
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`of address is being claimed (i.e., an address for a secure computer network?). It further states
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`that it is also unclear where a message is being received.
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`As amended, claim 2 recites as follows:
`
`A method of using a first device to communicate with a second device
`having a secure name, the method comprising:
`from the first device, sending a message to a secure name service,
`the message requesting a network address associated with the secure name of the
`second device;
`at the first device, receiving a message containing the network
`address associated with the secure name of the second device; and
`from the first device, sending a message to the network address
`associated with the secure name of the second device using a secure
`communication link.
`
`The Applicant responds to the rejections of claim 2 as follows. First, the Applicant has
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`amended claim 2 to clarify that it is the first device that is "sending a message" and "receiving a
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`message" to so that it can send a message over "a secure communication link."
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`Second, the Applicant has amended "name service" to read "secure name service." This
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`secure name service is a service for resolving secure names into network addresses. This secure
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`name service offers functionality that cannot be accomplished by a standard domain name
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`service.
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`Third, the Applicant has amended "address" to read "network address." This network
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`address is one that is associated with a device connected to a communications network. It is not
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`limited to an address of a secure computer network, as suggested in the Office Action. A
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`network address can be associated with any device registered on a network, including, but not
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`limited to, web servers, mobile handsets, and/or computers.
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`The Applicant respectfully submits that, as amended, these limitations in claim 2 are not
`
`unclear. The Applicant further submits that claims 3-23, which depend on claim 2, are not
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`Page 8 of 12
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`Apple v. VirnetX, IPR2015-00866
`Petitioner Apple Inc. - Ex. 1069, p. 8
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`

`
`Serial No. 111679,416
`Amendment B
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`unclear for similar reasons. Accordingly the Applicant respectfully requests withdrawal of these
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`rejections and reconsideration of claims 2-23.
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`Regarding claim 24, the Office Action states that "secure name" is unclear, and questions
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`whether this is a secure domain name. It further states that it is unclear what kind of address is
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`being claimed. It further states that it is unclear what kind of the first device and second device
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`are being claimed, and whether they are the same or different.
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`As amended, claim 24 recites as follows:
`
`A method of using a first device to securely communicate with a second
`device over a communication network, the method comprising:
`at the first device requesting and obtaining registration of a secure
`name for the first device, the secure name being associated with a network
`address;
`
`receiving at the network address associated with the secure name
`of the first device a message from a second device ofthe desire to securely
`communicate with the first device; and
`sending a message securely from the first device to the second
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`device.
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`The Applicant responds to the rejection of claim 24 as follows. First, the Applicant
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`submits that a "secure name" is a name associated with a network address of a first device. The
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`name can be registered such that a second device can obtain the network address associated with
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`the first device from a secure name registry and send a message to the first device. The first
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`device can then send a secure message to the second device. The claimed "secure name"
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`includes, but is not limited to, a secure domain name. For example, a "secure name" can be a
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`secure non-standard domain name, such as a secure non-standard top-level domain name
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`(e.g., .scorn) or a telephone number.
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`Second, the Applicant has amended "address" to read "network address." This network
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`address is one that is associated with a device on a communications network. It is not limited to
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`an address of a secure computer network, as suggested in the Office Action. A network address
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`Page 9 of 12
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`Apple v. VirnetX, IPR2015-00866
`Petitioner Apple Inc. - Ex. 1069, p. 9
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`

`
`Serial No. 111679,416
`Amendment B
`
`can be associated with any device registered on a network, including, but not limited to, web
`
`servers, mobile handsets, and computers.
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`Third, the Applicant submits that the first device and second device are different to the
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`extent that they are associated with two different network addresses. These devices can include,
`
`but are not limited to, web servers, mobile handsets, and/or computers.
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`The Applicant respectfully submits that, as amended, these limitations in claim 24 are not
`
`unclear. The Applicant further submits that claim 25, which depends on claim 24, is not unclear
`
`for similar reasons.
`
`Regarding claims 26-30, the Office Action states that they are also unclear because they
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`recite similar language to claim 24. For at least the reasons stated above, the Applicant
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`respectfully submits that claims 26-30, as amended, are similarly not unclear.
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`In sum, the Applicant respectfully submits that, in view of the foregoing amendments and
`
`remarks, the rejections under 35 U.S.C. § 112, second paragraph have been traversed.
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`Accordingly, the Applicant respectfully requests reconsideration and withdrawal of these
`
`rejections.
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`Rejection under 3 5 U.S. C. § 101
`
`Claims 28-30 have been rejected under 35 U.S.C. § 101 for claiming non-statutory
`
`subject matter. The Office Action states that claims drawn to a "machine-readable medium"
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`includes both non-transitory tangible media and transitory propagating signals. It states that
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`transitory embodiments are not directed to statutory subject matter.
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`Although the Applicant respectfully disagrees with this interpretation of "machine-
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`readable medium," the Applicant has nevertheless amended claims 28-30 to make explicit that
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`they are drawn to statutory subject matter, namely "non-transitory machine-readable medi[a]."
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`Page 10 of 12
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`Apple v. VirnetX, IPR2015-00866
`Petitioner Apple Inc. - Ex. 1069, p. 10
`
`

`
`Serial No. 111679,416
`Amendment B
`
`Accordingly, the Applicant respectfully requests reconsideration and withdrawal of these
`
`rejections.
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`Non-Statutory Obviousness-Type Double Patenting Rejections
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`Claims 2, 24, 26, and 28-30 have been rejected on the ground of nonstatutory
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`obviousness-type double patenting as being unpatentable over claim 1 of U.S. Patent No.
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`7, 188,180. The Applicant submits herewith a terminal disclaimer to overcome this rejection.
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`Accordingly, the Applicant respectfully submits that this rejection has been overcome, and
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`requests withdrawal of the rejection accordingly.
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`Claims 2, 24, 26, and 28-30 have been provisionally rejected on the ground of
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`nonstatutory obviousness-type double patenting as being unpatentable over claim 1 of copending
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`U.S. Patent Application Serial No. 111839,987. The Applicant submits herewith a terminal
`
`disclaimer to overcome this rejection. Accordingly, the Applicant respectfully submits that these
`
`rejections are traversed and requests withdrawal of the rejections accordingly.
`
`The absence of a reply to a specific rejection, issue, or comment does not signify
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`agreement with or concession of that rejection, issue, or comment. In addition, because the
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`arguments made above may not be exhaustive, there may be other reasons for patentability of
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`any or all claims that have not been expressed. Finally, nothing in this paper should be construed
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`as an intent to concede, or an actual concession of, any issue with regard to any claim, or any
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`cited art, except as specifically stated in this paper, and the amendment or cancellation of any
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`claim does not necessarily signify concession of unpatentability of the claim prior to its
`
`amendment or cancellation.
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`Page 11 of 12
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`Apple v. VirnetX, IPR2015-00866
`Petitioner Apple Inc. - Ex. 1069, p. 11
`
`

`
`Serial No. 111679,416
`Amendment B
`
`CONCLUSION
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`In view of the foregoing amendments and remarks, the entire application is believed to be
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`in condition for allowance, and such action is respectfully requested at the Examiner's earliest
`
`convenience. Should the Examiner have any questions, please call the undersigned at the phone
`
`number listed below.
`
`Authorization is hereby given to charge our deposit account, No. 50-1133, for an
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`Extension of Time (three-months) Under 37 CFR 1.136, and for any other fees that may be
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`required for the prosecution of the subject application.
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`Respectfully submitted,
`
`McDERMOTT WILL & EMERY LLP
`
`/Toby H. Kusmer/
`Toby Kusmer, Reg. No.: 26,418
`McDERMOTT WILL & EMERY LLP
`28 State Street
`Boston, Massachusetts 02109
`Telephone: (617) 535-4065
`Facsimile: (617) 535-3800
`e-mail: tkusmer@mwe.com
`
`Date: October 8, 2010
`
`BST99 1659565-2.077580.0015
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`Page 12 of 12
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`Apple v. VirnetX, IPR2015-00866
`Petitioner Apple Inc. - Ex. 1069, p. 12