Page 1 of 18
`
`VIRNETX EXHIBIT 20(cid:20)(cid:26)
`Apple v. VirnetX
`Trial IPR 2015-008(cid:26)(cid:19)
`
`

`
`
`
`UNITED STATES PATENT AND TRADEMARR OFFICE
`
`
`Commissioner for Patents
`United States Patents and Trademark Office
`P.O.Box 1450
`Alexandria, VA 223l 3-I450
`www.uspto.gov
`
`~ DO NOT USE IN PALM PRINTER
`
`THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS
`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`
`\
`
`Date:
`
`1425 K STREET N.w.
`SUITE 800
`
`WASHINGTON, D.C. 20005
`
`Transmittal of Communication to Third Party Requester
`Inter Partes Reexamination
`
`REEXAMINATION CONTROL NO. : 95001270
`
`-
`
`PATENT NO. : 7188180
`
`‘
`
`TECHNOLOGY CENTER : 3999
`
`ART UNIT ; 3992
`
`‘ M/MLED
`
`_
`
`DECO 3 2010
`CENTRAL l7.EE3)’.All/llNATlON UNIT
`
`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 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.
`
`l"T'OL-2070(Rev.07-04)
`
`Page 2 of 18
`
`Page 2 of 18
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`

`
`Right of Appeal Notice
`(37.CFR 1.953)
`
`Control No.
`
`95/001,270
`Examiner
`
`Patent Under Reexamination
`
`7188180
`Art Unit
`
`ANDREW L. NALVEN
`
`3992
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address. --
`
`Patent Owner on
`
`
`
`
`
` Responsive to the communication(s) filed by:
`
`
`
`
`Third Party(ies) on
`
`
`
`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
`C] will not be entered*
`I:] will be entered
`
`
`
`
`
` F°9°.“.°’.U‘
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`I:l been filed in Application/Control No.
`
` *Reasons for non-entry are given in the body of this notice.
`
`
`1a. XI Claims 1 4 10 12-15 17 20 26 28-31 33 and 35 are subject to reexamination.
`
`1b. E Claims 2 3 5-9 11 16 18 19 21-25 27 32 34 and 36-41 are not subject to reexamination.
`
`
`
`2.
`[:I Claims :_ have been cancelled.
`
`3.
`Claims 1 4 10 12-15 17 20 26 28-31 33 and 35 are confirmed. [Unamended patent claims].
`
`
`4. D Claims j are patentable. [Amended or new claims].
`1
`D Claims __ are rejected.
`[:1 Claims j are objected to.
`C] are not acceptable.
`I: are acceptable.
`E] The drawings filed on
`[:1 The drawing correction request filed on
`is [J approved. I:] disapproved.
`I:I Acknowledgment is made of the claim for priority under 35 U.S.C. 119 (a)-(d) or (f). The certified copy
`has:
`El been received. D not been received.
`10. C] Other
`-
`
`
`
` Attachments
`
`1. D Notice of References Cited by Examiner, PTO-892
`2. D Information Disclosure Citation, PTO/SB/O8
`
`3.l:l
`
`
`
`
`
`
`
`U.S. Patent and Trademark Office
`PTOL-2066 (08-06)
`
`Page 3 of 18
`
`Right of Appeal Notice (37 CFR 1.953)
`
`Part of Paper No. 20101130
`
`‘
`
`Page 3 of 18
`
`

`
`Application/Control Number: 95/001,270
`
`Page 2
`
`Art Unit: 3992
`
`RIGHT or APPEAL NOTICE
`
`The following action addresses claims 1, 4, 10, 12-15, 17, 20, 26, 28-31, 33, and 35 of
`
`US Patent No. 7,188,180 ("the '180 patent").
`
`An Action Closing Prosecution was issued on June 16, 2010.
`
`No response to the Action Closing Prosecution was received.
`
`Status of Claims
`
`Original Claims 1, 4, 10, 12-15, 17, 20, 26, 28-31, 33, and 35 are confirmed.
`
`Rejections Proposed by Requestor — Previously Adopted, Now Not Adopted
`
`1.
`
`Requestor proposed that claims 1, 10, 12, 14, 17, 26, 28, 30, 31, and 33 be rejected under
`
`35 US C lO2(a) as being anticipated by Aventail. This proposed rejection was adopted in the first
`
`Office action mailed on 1/ 19/2010. However, upon consideration of the remarks submitted by
`
`‘ Patent Owner, this proposed rejection is hereby withdrawn and not adopted for the following
`
`reasons.
`
`2.
`
`Patent owner argues that the rejection of claims 1, 10, 12, 14, 17, 26, 28, 30, 31, and 33
`
`as anticipated by Aventail should be withdrawn because Aventail is not prior art to the '180
`
`patent. Specifically, Patent Owner argued that the request and the 1/19/2010 office action did
`
`not show that Aventail was published prior to the priority date of the ‘ 180 patent. The request
`
`asserts that Aventail was published between 1996 and 1999. This assertion was based on the
`
`document’s copyright date. The request did not set forth any further evidence of the date of
`
`publication.
`
`Page 4 of 18
`
`Page 4 of 18
`
`

`
`Application/Control Number:v95/001,270
`
`-
`
`Page 3
`
`Art Unit: 3992
`
`3.
`
`A search was conducted to detennine the publication date of the Aventail reference.
`
`However, no evidence was found that established the publication date. Accordingly, Aventail
`
`cannot be relied upon as prior art to the '180 patent and all rejections based upon Aventail are
`
`hereby withdrawn and not adopted.
`
`4.
`
`Further, Patent Owner argues that the ‘ 180 patent clearly distinguishes the claimed
`
`"secure domain name" from a domain name that happens to correspond to a secure computer.
`
`Patent Owner’s argument is persuasive. The Examiner agrees that the '18O patent distinguishes
`
`the claimed “secure domain name.” For example, the ‘I80 patent explains that a secure domain
`
`name is a non-standard domain name and that querying a convention domain name server using
`
`a secure domain name will result in a return message indicating that the URL is unknown ( ‘180
`
`patent, column 51 lines 25-35). Similarly, Patent Owner argues that the ‘I80 patent clearly
`
`distinguishes the claimed “secure domain name service” from a conventional domain name
`
`service that can resolve domain names of computers that are used to establish secure .
`
`connections. Patent Owner’s argument is persuasive. The Examiner agrees that the '1 80 patent
`
`distinguishes the claimed “secure domain name service.” For example, the ‘ 180 patent explains
`
`that a secure domain name service can resolve addresses for a secure domain name whereas a
`
`conventional domain name service cannot resolve addresses for a secure domain name (‘I 80
`
`patent, column 51 lines 25-35).
`
`5.
`
`Aventail does not teach the claimed “secure domain name” or “secure domain name
`
`service" as defined by the '1 80 patent. Aventail teaches the use of a DNS server and the creation V
`
`of a secure tunnel to a secure remote site. However, Aventail does not teach the claimed secure
`
`domain name or secure domain name service as defined by the '180 patent as being a part of a
`
`Page 5 of 18
`
`Page 5 of 18
`
`

`
`Application/Control Number: 95/001,270
`
`Page 4
`
`Art Unit: 3992
`
`non-conventional domain name system. For this additional reason the proposed rejection is not
`
`adopted.
`
`6.
`
`Requestor proposed that claims 1, 4, 10, 12-15, 17, 20, 26, 28-31, 33,,and 35 be rejected
`
`under 35 USC 103(a) as being rendered obviousuby the combination of VPN Overview in view
`
`of RFC 1035. This proposed rejection was adopted in the first Office action mailed on
`
`l/ 19/2010. However, upon consideration of the remarks submitted by Patent Owner, this
`
`5 proposed rejection is hereby withdrawn and not adopted for the following reasons.
`
`7.
`
`Patent Owner "argues that the ‘ 180 patent clearly distinguishes the claimed "secure
`
`domain name" from a domain name that happens to correspond to a secure computer. Patent
`
`Owner’s argument is persuasive. The Examiner agrees that the '180 patent distinguishes the
`
`claimed “secure domain name.” For example, the ‘ 1 80 patent explains that a secure domain
`
`name is a non-standard domain name and that querying a convention domain name server using
`
`a secure domain name will result in a return message indicating that the URL is unknown ( ‘180
`
`patent, column 51 lines 25-35). Similarly, Patent Owner argues that the ‘180 patent clearly
`
`distinguishes the claimed “secure domain name service” from a conventional domain name
`
`service that can resolve domain names of computers that are used to establish secure
`
`connections. Patent Owner’s argument is persuasive. The Examiner agrees that the ‘I 80 patent
`
`distinguishes the claimed “secure domain name service.” For example, the ‘I80 patent explains
`
`that a secure domain name service can resolve addresses for a secure domain name whereas a
`
`conventional domain name service cannot resolve addresses for a secure domain name (‘180
`
`patent,‘ column 1 lines 25-35).
`
`Page 6 of 18
`
`Page 6 of 18
`
`

`
`Application/Control Number: 95/001,270
`
`.
`
`Page 5
`
`Art Unit: 3992
`
`8.
`
`VPN Overview and RFC 1035 do not teach the claimed “secure domain name” or “secure
`
`domain name service" as defined by the '180 patent. RFC 1035 describes the framework for a
`
`conventional domain name system (RFC 1035, Page 3), but does not disclose an implementation
`
`including a secure domain name service and secure domain names as claimed by the ‘180 patent.
`
`Similarly, VPN Overview provides an overview of virtual private networks including their basic
`
`requirements. However, neither RFC 1035 or VPN Overview teach the claimed secure domain
`
`name or secure domain name service as defined by the '180 patent as being a part of a non-
`
`conventional domain name system. Accordingly, the proposed rejection is not adopted.
`
`\/
`
`9.
`
`Requestor proposed that claims 1, 10, 12-15, 17, 26, 28-31, and 33 be rejected under 35
`
`USC 102(a) as being anticipated by Kaufman’. This proposed rejection was adopted in the first
`
`Office action mailed on 1/19/2010. However, upon consideration of the remarks submitted by '
`
`Patent Owner, this proposed rejection is hereby withdrawn and not adopted for the following
`
`reasons.
`
`I
`
`10.
`
`Patent Owner argues that the ‘ 180 patent clearly distinguishes the claimed "secure
`
`domain name" from a domain name that happens to correspond to a secure computer. Patent
`
`Owner’s argument is persuasive. The Examiner agrees that the '180 patent distinguishes the
`
`claimed “secure domain name.” For example, the ‘I80 patent explains that a secure domain
`
`name is a non-standard domain name and that querying a convention domain name server using
`
`a secure domain name will result in a return message indicating that the URL is unknown ( ‘180
`
`patent, column 51 lines 25-35). Similarly, Patent Owner argues that the ‘180 patent clearly
`
`distinguishes the claimed “secure domain name service” from a conventional domain name
`
`Page 7 of 18
`
`Page 7 of 18
`
`

`
`Application/Control Number: 95/001,270
`
`Page 6
`
`Art Unit: 3992
`
`service that can resolve domain names of computers that are used to establish secure
`
`connections. Patent Owner’s argument is persuasive. The Examiner agrees that the '18O patent
`
`distinguishes the claimed “secure domain name service.” For example, the ‘180 patent explains
`
`that a secure domain name service can resolve addresses for a secure domain name whereas a
`
`conventional domain name service cannot resolve addresses for a secure domain name (‘180
`
`patent, column 51 lines 25-35).
`
`11.
`
`Kaufman does not teach the claimed “secure domain name” or “secure domain name
`
`service" as defined by the ‘I80 patent. Kaufman describes the implementation of virtual private
`
`networks and IPsec security, but does not disclose an implementation including a secure domain
`
`name service and secure domain names as claimed by the .‘180 patent. Kaufman does not teach
`
`the claimed secure domain name or secure domain name service as defined by the '180 patent as
`
`being a part of a non-conventional domain name system. Accordingly, the proposed rejection is
`
`not adopted.
`
`12.
`
`Requestor proposed that claims 1, 4, 10, 12-15, 17, 20, 26, 28-31, 33, and 35 be rejected
`
`under 35 USC 103(a) as being rendered obvious by the combination of Kaufman in view of
`
`Galvin. This proposed rejection was adopted in the first Office action mailed on 1/19/2010.
`
`However, upon consideration of the remarks submitted by Patent Owner, this proposed rejection
`
`is hereby withdrawn and not adopted for the following reasons.
`
`13.
`
`Patent Owner argues that the ‘I80 patent clearly distinguishes the claimed "secure
`
`domain name" from a domain name that happens to correspond to a secure computer. Patent
`
`Owner’s argument is persuasive. The Examiner agrees that the '180 patent distinguishes the
`
`Page 8 of 18
`
`‘
`
`Page 8 of 18
`
`

`
`Application/Control Number: 95/001,270
`
`Page 7
`
`Art Unit: 3992
`
`claimed “secure domain name.” For example, the ‘I80 patent explains that a secure domain
`
`name is a non-standard domain name and that querying a convention domain name server using
`
`a secure domain name will result in a return message indicating that the URL is unknown (‘[80
`
`patent, column 51 lines 25-35). Similarly, Patent Owner argues that the ‘180 patent clearly
`
`distinguishes the claimed “secure domain name service” from a conventional domain name
`
`service that can resolve domain names of computers that are used to establish secure
`
`connections. Patent Owner’s argument is persuasive. The Examiner agrees that the ‘I80 patent
`
`distinguishes the claimed “secure domain name service.” For example, the ‘ 1 80 patent explains
`
`that a secure domain name service can resolve addresses for a secure domain name whereas a
`
`conventional domain name service cannot resolve addresses for a secure domain name (‘180
`
`patent, column 51 lines 25-35).
`
`14.
`
`Kaufman and Galvin do not teach the claimed “secure domain name” or “secure domain
`
`name service" as defined by the '1 80 patent. Kaufman describes the implementation of virtual .
`
`private networks and IPsec security, but does not disclose an implementation including a secure
`
`1 domain name service and secure domain names as claimed by the ‘ 1 80 patent. Galvin describes
`
`a domain name service that uses public keys to prove the integrity of a domain name service
`
`record (Galvin, Page 1). However, this type of domain name service is a conventional type of
`
`domain name service that is different from the claimed secure domain name service because it
`
`still relies on conventional domain names and does not provide security for secure domains.
`
`Instead, it seeks to prove the authenticity of a domain name service record to prove to a client
`
`that that the record was not forged. Kaufman and Galvin do not teach the claimed secure domain
`
`Page 9 of 18
`
`Page 9 of 18
`
`

`
`Application/Control Number: 95/001,270
`
`Page 8
`
`Art Unit: 3992
`
`name or secure domain name service as defined by the '180 patent as being a part of a non-
`
`conventional domain name system. Accordingly, the proposed rejection is not adopted.
`
`1
`
`15.
`
`Requestor proposed that claims 1, 4, 10, 12-15, 17, 20, 26, 28-31, 33, and 35 be rejected
`
`under 35 USC 102(a) as being anticipated by Gauntlet. This proposed rejection was adopted in
`
`the first Office action mailed on 1/ 19/2010. However, upon consideration of thenremarks
`
`submitted by Patent Owner, this proposed rejection is hereby withdrawn and not adopted for the
`
`following reasons.
`
`16.
`
`Patent Owner argues that the ‘180 patent clearly distinguishes the claimed "secure
`
`domain name" from a domain name that happens to correspond to a secure computer. Patent
`
`Owner’s argument is persuasive. The Examiner agrees that the '180 patent distinguishes the
`
`claimed “secure domain name.” For example, the ‘I80 patent explains that a secure domain
`
`name is a non-standard domain name and that querying a convention domain name server using
`
`a secure domain name will result in a return message indicating that the URL is unknown ( ‘180
`
`patent, column 51 lines 25-35). Similarly, Patent Owner argues that the ‘ 180 patent clearly
`
`distinguishes the claimed “secure domain name service” from a conventional domain name
`
`service that can resolve domain names of computers that are used to establish secure
`
`connections. Patent Owner’s argument is persuasive. The Examiner agrees that the ‘I80 patent
`
`distinguishes the claimed “secure domain name service.” For example, the ‘ 180 patent explains
`
`that a secure domain name service can resolve addresses for a secure domain name whereas a
`
`conventional domain name service cannot resolve addresses for a secure domain name (‘180
`
`patent, column 51 lines 25-35).
`
`Page 10 of 18
`
`Page 10 of 18
`
`

`
`Application/Control Number: 95/001,270
`Art Unit: 3992
`
`1
`
`Page 9
`
`17.
`
`Gauntlet does not teach the claimed “secure domain name” or “secure domain name
`
`service" as defined by the '180 patent. Gauntlet describes the implementation of a software
`
`based firewall ‘system that provides for tunneling where the addresses of the secure tunneling
`
`servers must be advertised, but does not disclose an implementation including a secure domain
`
`_ name service and secure domain names as claimed by the ‘ 180 patent. Gauntlet does not teach
`
`the claimed secure domain name or secure domain name service as defined by the '180 patent as
`
`being a part of a non-conventional domain name system. Accordingly, the proposed rejection is
`
`not adopted.
`
`18.
`
`Requestor proposed that claims 1, 4, 10, 12-15, 17, 26, 28-31, 33, and 35 be rejected
`
`under 35 USC 103(a) as being rendered obvious by the combination of Hands-On in view of
`
`Installing'NT. This proposed rejection was adopted in the firstOff1ce action mailed on
`
`1/19/2010. However, upon consideration of the remarks submitted by Patent Owner, this
`
`proposed rejection is hereby withdrawn and not adopted for the following reasons.
`
`19.
`
`Patent Owner argues that the ‘ 180 patent clearly distinguishes the claimed "secure
`
`domain name" from a domain name that happens to correspond to a secure computer. Patent‘
`
`Owner’s argument is persuasive. The Examiner agrees that the '180 patent distinguishes the
`
`claimed “secure domain name.” For example, the ‘ 180 patent explains that a secure domain
`
`name is a non-standard domain name and that querying a convention domain name server using
`
`a secure domain name will result in a return message indicating that the URL is unknown ( ‘I80
`
`patent, column 51 lines 2535). Similarly, Patent Owner argues that the ‘180 patent clearly
`
`distinguishes the claimed “secure domain name service” from a conventional domain name
`
`Page 11 of 18
`
`Page 11 of 18
`
`

`
`Application/ControlNumber: 95/001,270
`
`Art Unit: 3992
`
`‘
`
`Page 10
`
`service that can resolve domain names of computers that are used to establish secure
`
`connections. Patent Owner’s argument is persuasive. The Examiner agrees that the '18O patent
`
`distinguishes‘ the claimed “secure domain name service.” For example, the ‘I80 patent explains
`
`that a secure domain name service can resolve addresses for a secure domain name whereas a
`
`conventional domain name service cannot resolve addresses for a secure domain name (‘180
`
`patent, column 51 lines 25-35).
`
`20.
`
`Hands—On and Installing NT do not teach the claimed “secure domain name” or “secure
`
`domain name service" as defined by the '1 80 patent. Hands-On describes the implementation of
`
`secure communications using PPTP tunneling protocols and describes the use of a conventional
`
`DNS system, but does not disclose an implementation including a secure domain name service
`
`and secure domain names as claimed by the ‘180 patent. Installing NT describes the use of a
`
`PPTP server to set up a secure connection, but does not describe the use of a secure domain
`
`name service using a secure domain name. Hands—On and Installing NT do not teach the
`
`claimed secure domain name or secure domain name service as defined by the '18O patent as
`
`being a part of a non-conventional domain name system. Accordingly, the proposed rejection is
`
`not adopted.
`
`21.
`
`Requestor proposed that claims 1, 10, 12-15, 17, 26, 28-31, and 33 be rejected under 35
`
`USC 102(a) as being anticipated by Microsoft VPN. This proposed rejection was adopted in the
`
`first Office action mailed on 1/19/2010. However, upon consideration of the remarks submitted
`
`by Patent Owner, this proposed rejection is hereby withdrawn and not adopted for the following
`
`reasons .
`
`Page 12 of 18
`
`Page 12 of 18
`
`

`
`Application/Control Number: 95/001,270
`
`Art Unit: 3992
`
`Page 11
`
`V
`
`22.
`
`Patent Owner argues that the ‘180 patent clearly distinguishes the claimed "secure
`
`domain name" from a domain name that happens to correspond to a secure computer. Patent
`
`Owner’s argument is persuasive. The Examiner agrees that the '180 patent distinguishes the
`
`claimed “secure domain name.” For example, the ‘180 patent explains that a secure domain
`
`name is a non-standard domain name and that querying a convention domain name server using
`
`a secure domain name will result in a return message indicating that the URL is unknown (‘180
`
`patent, column 51 lines 25-35). Similarly, Patent Owner argues that the ‘ 180 patent clearly
`
`distinguishes the claimed “secure domain name service” from a conventional domain name
`
`‘service that can resolve domain names of computers that are used to establish secure
`
`connections. Patent Owner’s argument is persuasive. The Examiner agrees that the '180 patent
`
`distinguishes the claimed “secure domain name service.” For example, the ‘180 patent explains
`
`that a secure domain name service can resolve addresses for a secure domain name whereas a
`
`conventional domain name service cannot resolve addresses for a secure domain name (‘I 80
`
`patent, column 51 lines 25-35).
`
`23.
`
`Microsoft VPN does not teach the claimed “secure domain name” or “secure domain
`
`name service" as defined by the '180 patent. Microsoft VPN describes the implementation of a
`
`virtual private network to allow a remote client to gain access to a corporate network using a
`
`PPTP tunnel through a VPN server, but does not disclose an implementation including a secure
`
`domain name service and secure domain names as claimed by the ‘ 180 patent. Microsoft VPN
`
`does not teach the claimed secure domain name or secure domain name service as defined by the
`
`'1 80 patent as being a part of a non-conventional domain name system. Accordingly, the
`
`proposed rejection is not adopted.
`
`Page 13 of 18
`
`Page 13 of 18
`
`

`
`Application/Control Number: 95/001,270
`
`Page 12
`
`Art Unit: 3992
`
`Rejections Proposed by Requestor — Previously Not Adopted That Remain Not Adopted
`
`24.
`
`The non-final action mailed on January 19, 2010 is hereby incorporated by reference.
`
`25.
`
`Requestor proposed that claims 4, 13, 15, 20, 29, 31, and 35 be rejected under 35 USC
`
`102(a) as being anticipated by Aventail. This proposed rejection was not adopted for the reasons
`
`set forth on Pages 12-15 of the January 19, 2010 non-final office action.
`
`26.
`
`Requestor proposed that claims 4, 20, and 35 be rejected under 35 USC 103(a) as being
`
`rendered obvious by the combination of VPN Overview in View of RFC 1035. This proposed
`
`rejection was not adopted for the reasons set forth on Pages 16-17 of the January 19, 2010 non-
`
`final office action.
`
`27.
`
`Requestor proposed that claims 4, 20, and 35 be rejected under 35 USC 102(a) as being
`
`anticipated by Kaufman. This proposed rejection was not adopted for the reasons set forth on
`
`Pages 20-21 of the January 19, 2010 non-final office action.
`
`28.
`
`Requestor proposed that claims 4, 20, and 35 be rejected under 35 USC 103(a) as being
`
`rendered obvious by the combination of Kaufman in view of Galvin. This proposed rejection
`
`was not adopted for the reasons set forth on Pages 22-23 of the January 19, 2010 non-final office
`
`action.
`
`29.
`
`Requestor proposed that claims 4, 20, and 35 be rejected under 35 USC 102(a) as being
`
`anticipated by Gauntlet. This proposed rejection was not adopted for the reasons set forth on
`
`Page 24 of the January 19, 2010 non-final office action.
`
`Page 14 of 18
`
`Page 14 of 18
`
`

`
`Application/Control Number: 95/001,270
`
`Page 13
`
`Art Unit: 3992
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`30.
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`Requestor proposed that claims 4, 20, and 35 be rejected under 35 USC l03(a) as being
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`rendered obvious by the combination of Hands-On in view of Installing NT. This proposed
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`rejection was not adopted for the reasons set forth on Pages 25-26 of the January 19, 2010 non-
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`’
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`final office action.
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`STATEMENT OF REASONS FOR PATENTABILITY AND/OR CONFIRMATION
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`The following is an examiner’s statement of reasons for patentability and/or confirmation
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`of the claims found patentable in this reexamination proceeding:
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`Claims 1, 4, 10, 12-15, 17, 20, 26, 28-31, 33, and 35 are confirmed as patentable for the
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`following reasons. The cited prior art fails to teach or suggest the claimed features of a "secure
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`domain name" and a "secure domain name service.” Instead, the cited prior art teaches the use of
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`a conventional domain name system and conventional domain names where some of the domain
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`names correspond to a host that requires authentication. The ‘ 180 patent distinguishes the
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`claimed secure domain names and secure domain name service from a conventional domain
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`name service by explaining that a secure domain name is a non-standard domain name and that
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`querying a convention domain name server using a secure domain name will result in a return
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`message indicating that the URL is unknown (‘180patent, column 51 lines 25-35) and that a
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`secure domain name service can resolve addresses for a secure domain name whereas a
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`conventional domain name service cannot resolve addresses for a secure domain name (‘I 80
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`patent, column 51 lines 25-35). Accordingly, the cited prior art fails to anticipate or render
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`obvious claims 1, 4, 10, 12-15, 17, 20, 2.6, 28-31, 33, and 35.
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`-
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`Page 15 of 18
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`Page 15 of 18
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`

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`Application/Control Number: 95/001,270
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`Page 14
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`Art-Unit: 3992
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`Any comments considered necessary by the PATENT OWNER regarding the above
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`statement must be submitted promptly to avoid processing delays. Such submission by the
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`patent owner should be labeled: “Comments on Statement of Reasons for Patentability and/or
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`Confirmation” and will be placed in the reexamination file.
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`This is a RIGHT or APPEAL NOTICE (RAN); see MPEP § 2673.02 and § 2674. The
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`decision in this Office action as to the patentability or unpatentability of any original patent
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`claim, any proposed amended claim and any new claim in this proceeding is a FINAL
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`DECISION.
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`No amendment can be made in response to the Right of Appeal Notice‘ in an inter partes
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`reexamination. 37 CFR l.953(c), Further, no affidavit or other evidence can be submitted in an
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`inter partes reexamination proceeding after the right of appeal notice, except as provided in 37
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`CFR 1.981 or as permitted by 37 CFR 41.77(b)(l). 37 CFR l.l16(f).
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`Each party has a thirty-day or one-month time period, whichever is longer, to file a
`notice of appeal. The patent owner may appeal to the Board of Patent Appeals and Interferences
`with respect to any decision adverse to the patentability of any original or proposed amended or
`new claim of the patent by filing a notice of appeal and paying the fee set forth in 37 CFR
`4l.20(b)(1). The third party requester may appeal to the Board of Patent Appeals and
`Interferences with respect to any decision favorable to the patentability of any original or
`proposed amended or new claim of the patent by filing a notice of appeal and paying the fee set
`forth in 37 CFR 41.20(b)(1).
`
`In addition, a patent owner who has not filed a notice of appeal may file a notice of cross
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`appeal within fourteen days of service of a third party requester’s timely filed notice of appeal
`
`and pay the fee set forth in 37 CFR 41 .20(b)(l). A third party requester who has not filed a
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`Page 16 of 18
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`Page 16 of 18
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`

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`Application/Control Number: 95/001,270
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`.
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`Page 15
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`Art Unit: 3992
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`notice of appeal may file a notice of cross appeal within fourteen days of service of a patent
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`owner’s timely filed notice of appeal and pay the fee set forth in 37 CFR 4l.20(b)(1).
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`Any appeal in this proceeding must identify the claim(s) appealed, and must be signed by
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`the patent owner (for a patent owner appeal) or the third party requester (for a third party
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`requester appeal), or their duly authorized attorney or agent.
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`Any party that does not file a timely notice of appeal or a timely notice of cross appeal
`will lose the right to appeal from any decision adverse to that party, but will not lose the right to
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`file a respondent brief and fee where it is appropriate for that party to do so. If no party files a
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`timely appeal, the reexamination prosecution will be terminated, and the Director will proceed to
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`issue and publish a certificate under 37 CFR 1.997 in accordance with this Office action.
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`All correspondence relating to this inter partes reexamination proceeding should be
`directed:
`~
`
`By Mail to: Mail Stop Inter Partes Reexam
`Attn: Central Reexamination Unit
`
`Commissioner of Patents
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`United States Patent & Trademark Office
`P.O. Box 1450
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`Alexandria, VA 22313-1450
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`By FAX to:
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`(571) 273-9900
`Central Reexamination Unit
`
`By hand:
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`‘
`
`Customer Service Window
`Randolph Building
`401 Dulany St.
`Alexandria, VA 22314
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`Page 17 of 18
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`Page 17 of 18
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`

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`Application/Control Number: 95/001,270
`Art Unit: 3992
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`_
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`Page 16
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`Any inquiry concerning this communication or earlier communications from the
`examiner, or as to the status of this proceeding, should be directed to the Central Reexamination
`Unit at telephone number (571)_272-7705.
`‘
`
`Signed:
`
`/Andrew Nalven/
`
`Andrew Nalven
`CRU Examiner
`
`GAU 3992
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`(571) 272-3839
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`Conferee: E3 K
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`Conferee:
`
`fl
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`'
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`Page 18 of 18
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`Page 18 of 18