VIRNETX EXHIBIT 20(cid:24)(cid:25)
`Mangrove v. VirnetX
`Trial IPR2015-01047
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`Page 1 of 24
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`Mangrove v. VirnetX
`Trial IPR2015-01047
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`Page 1 of 24
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`DO NOT USE IN PALM PRINTER
`
`THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS
`HAYNES AND BOONE, LLP
`
`IP SECTION
`2323 VICTORY AVENUE, SUITE 700
`DALLAS, TX 75219
`
`Commissioner for Patents
`United States Patents and Trademark Office
`P.O.Box I450
`Alexandria, VA 223l3-1450
`www.usplo.gov
`
`Date: M
`
`FEB 15 2012
`
`mRE°“”'"‘"°" UNIT
`
`Transmittal of Communication to Third Party Requester
`Inter Partes Reexamination
`
`REEXAMINATION CONTROL NO. : 95001679
`
`PATENT NO. : 6502135
`
`TECHNOLOGY CENTER : 3999
`
`ART UNIT : 3992
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the above identified Reexamination proceeding. 37 CFR 1.903.
`
`Prior to the filing of a Notice of Appeal, each time the patent owner responds to this
`communication, the third party requester of the inter partes reexamination may once file
`written comments within a period of 30 days from the date of service of the patent owner's
`response. This 30-day time period is statutory (35 U.S.C. 314(b)(2)), and, as such, it cannot
`be extended. See also 37 CFR 1.947.
`
`If an ex parte reexamination has been merged with the 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.
`
`PTOL-2070(Rev.07-O4)
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`Page 2 of 24
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`
`
`Control No.
`
`Patent Under Reexamination
`
`BEHZAD PEIKARI
`
`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
`
`Third Party(ies) on 08 July, 2011
`
`RESPONSE TIMES ARE SET TO EXPIRE AS FOLLOWS:
`
`For Patent Owner's Response:
`_2_ MONTH(S) from the mailing date of this action. 37 CFR 1.945. EXTENSIONS OF TIME ARE
`GOVERNED BY 37 CFR 1.956.
`
`For Third Party Requester's Comments on the Patent Owner Response:
`30 DAYS from the date of service of any patent owner's response. 37 CFR 1.947. NO EXTENSIONS
`OF TIME ARE PERMITTED. 35 U.S.C. 314(b)(2).
`
`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.
`
`This action is not an Action Closing Prosecution under 37 CFR 1.949, nor is it a Right of Appeal Notice under
`37 CFR 1.953.
`
`PART I. THE FOLLOWING ATTACHMENT(S)' ARE PART OF THIS ACTION:
`
`1.I:] Notice of References Cited by Examiner, PTO-892
`2.I:] Information Disclosure Citation, PTO/SB/O8
`3.I:I
`PART II. SUMMARY OF ACTION:
`
`1a. E Claims E are subject to reexamination.
`1b. I:I Claims
`are not subject to reexamination.
`2. CI Claims j have been canceled.
`
`.
`
`[:1 Claims _: are confirmed. [Unamended patent claims]
`
`.
`I:I Claims
`are patentable. [Amended or new claims]
`. E Claims E are rejected.
`
`. E] Claims
`are objected to.
`I:] are not acceptable.
`[:J are acceptable
`. D The drawings filed on
`.
`[:1 The drawing correction request filed on
`is:
`[:1 approved. E] disapproved.
`.
`[:1 Acknowledgment is made of the claim for priority under 35 U.S.C. 119 (a)-(d). The certified copy has:
`[I been received.
`[:] not been received.
`l:] been filed in Application/Control No 95001679.
`10. CI Other
`
`US. Patent and Trademark Office
`PTOL-2064 (OB/06)
`
`'
`
`Paper No. 20120206
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`Page 3 of 24
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`.
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`.
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`.
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`Transmittal of Communication to
`
`Third Party Requester
`.
`.
`Inter Partes Reexamination
`
`C
`
`t
`
`IN .
`
`99001-579
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`BEHZAD PEIKARI
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`5502135
`
`H.
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address. --
`
`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.
`
`%
`
`
`
`US. Patent and Trademark Office
`PTOL—207O (5/04)
`
`.
`
`-
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`Paper No. 20120206
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`Page 4 of 24
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`Application/Control Number: 95/001,679
`Art Unit: 3992
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`DETAILED ACTION
`
`Inter Partes Reexamination
`
`1.
`
`This is an inter partes reexamination of U.S. Patent Number 6,502,135 (the '135 patent)
`
`requested by a third party requester. Claims 1-18 are subject reexamination.
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`Prosecution Summary
`
`2.
`
`The following is a brief summary of the prosecution to date in this inter partes
`
`reexamination proceeding:
`
`0
`
`On July 8, 201 1, a request for inter partes reexamination of claims 1-18 of the
`
`‘I35 patent was filed by a third party requestor.
`
`On October 3, 201 1, the USl’TO mailed a decision granting inter partes
`
`reexamination and ordering the reexamination of claims 1-18.
`
`The references discussed herein are as follows:
`
`References
`
`(1)
`
`Takahiro Kiuchi and Shigekoto Kaihara, “C—HTTP - The Development of a
`
`Secure, Closed HTTP-based Network on the Internet,” published in the Proceedings of
`
`SNDSS 1996 (“Kiuchi”).
`
`(2)
`
`U.S. Patent No. 5,898,830 to Wesinger (“Wesinger”).
`
`(3)
`
`Eduardo Solana and Jergen Harms, “Flexible Internet Secure Transactions Based
`
`on Collaborative Domains”, Security Protocols Workshop 1997, pp. 37-51 (“Solana”).
`A
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`Page 5 of 24
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`
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`Application/Control Number: 95/001,679
`Art Unit: 3992
`
`(4)
`
`(5)
`
`U.S. Patent No. 6,119,234 to Aziz (“Aziz”).
`
`David M. Martin, “A Framework for Local Anonymity in the Internet,” Technical
`
`Report. Boston University, Boston, MA, USA (Feb 21, 1998) (“Martin”).
`
`(6)
`
`US. Pat. No. 7,764,231 to Karr et al. (“Karr”).
`
`(7)
`
`D.E. Deming and G.M. Sacco, “Time-stamps in Key Distribution Protocols,”
`
`Communications ofthe ACM, Vol.24, n.8, pp. 533-536 (1981) (“Denning”).
`
`(8)
`
`C.I. Dalton and J .F. Griffin, “Applying Military Grade Security to the Internet,”
`
`Proceedings ofthe Joint European Networking Conference (May 12-15, 1997)
`
`(“Dalton”).
`
`(9)
`
`Steven M. Bellovin and Michael Merritt, “Encrypted Key Exchange: Password-
`
`Based Protocols Secure Against Dictionary Attacks,” 1992 IEEE Symposium on Security
`
`and Privacy (1992) (“Bellovin”).
`
`Claim Rejections — Relevant Statutes
`
`4.
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the
`
`basis for the rejections under this section made in this Office action:
`
`A person shall be entitled to a patent unless —
`
`(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.
`
`(e) the invention was described in (1) an application for patent, published under section l22(b), by another filed
`in the United States before the invention by the applicant for patent or (2) a patent granted on an application for
`patent by another filed in the United States before the invention by the applicant for patent, except that an
`international application filed under the treaty defined in section 351(a) shall have the effects for purposes ofthis
`subsection of an application filed in the United States only ifthe international application designated the United
`States and was published under Article 21(2) of such treaty in the English language.
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`Page 6 of 24
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`Application/Control Number: 95/001,679
`Art Unit: 3992
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`Page 4
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`5.
`
`The following is a quotation of 35 U.S.C.103(a) which forms the basis for all
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`obviousness rejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in
`section I02 ofthis title, if the differences between the subject matter sought to be patented and the prior an 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.
`
`Summary ofProposed Rejections and Status
`
`The following rejections were proposed by the request:
`
`Issue 1: Claims 1-4, 7, 10, 12-14 and 17 are alleged to be anticipated by Kiuchi
`
`under 35 U.S.C. § 102(b).
`
`The proposed rejection of claims 1-4, 7, 10 and 12 is not adopted.
`
`The proposed rejection of claims 13, 14 and 17 is adopted.
`
`Issue 2: Claims 5, 8 and 18 are alleged to be obvious over ‘Kiuchi in view of
`
`Dalton under 35 U.S.C. § 103.
`
`The proposed rejection of claims 5, 8 and 18 is not adopted.
`
`Issue 3: Claim 9 is alleged to be obvious over Kiuchi in view of Bellovin under
`
`35 U.S.C. § 103.
`
`The proposed rejection of claim 9 is not adopted.
`
`Issue 4: Claims 6 and 11 are alleged to be obvious over Kiuchi in view of Martin
`
`under 35 U.S.C.§ 103.
`
`The proposed rejection of claims 6 and 11 is not adopted.
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`Page 7 of 24
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`
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`Application/Control Number: 95/001,679
`Art Unit: 3992
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`Page 5
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`Issue 5: Claims 1-5, 7310, 12-13 and 18 are alleged to be anticipated by Wesinger
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`under 35 U.S.C. § 102(e).
`
`The proposed rejection of claims 1-5, 7-10, 12-13 and 18 is adopted.
`
`Issue 6: Claims 6 and 11 are alleged to be obvious over Wesinger in view of
`
`Martin under 35 U.S.C. § 103.
`
`The proposed rejection of claims 6 and 11 is adopted.
`
`Issue 7: Claims 13-15 are alleged to be anticipated by Solana under 35 U.S.C. §
`
`102(b).
`
`The proposed rejection of claims 13-15 is 21<i_0;)tid.
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`Issue 8: Claims 1-5, 7-8, 10, 12 and 18 are alleged to be obvious over Solana in
`
`View of Kiuchi under 35 U.S.C. § 103.
`
`The proposed rejection of claims 1-5, 7-8, 10, 12 and 18 is not adopted.
`
`Issue 9: Claims 5, 8 and 18 are alleged to be obvious over Solana in view of
`
`Kiuchi, and further in view of Dalton under 35 U.S.C. § 103.
`
`The proposed rejection of claims 5, 8 and 18 is not adopted.
`
`Issue 10: Claim 9 is alleged to be obvious over Solana in view of Kiuchi, further
`
`in view of Dalton, further in View of Bellovin under 35 U.S.C. § 103.
`
`The proposed rejection of claim 9 is not adopted.
`
`Issue 11: Claims 6 and 11 are alleged to be obvious over Solana, in view of
`
`Kiuchi, and further in view of Martin under 35 U.S.C. § 103.
`
`The proposed rejection of claims 6 and 1 1 is not adopted.
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`Page 8 of 24
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`
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`Application/Control Number: 95/001,679
`Art Unit: 3992
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`Page 6
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`Issue 12: Claim 16 is alleged to be obvious over Solana in view of Karr under 35
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`U.S.C. § 103.
`
`The proposed rejection of claim 16 is ad_op1;c__d.
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`Issue 13: Claim 17 is alleged to be obvious over Solana in view of Denning under
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`35 U.S.C.§103.
`
`The proposed rejection of claim 17 is g1_c_l_c>_;)_te_d.
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`Issue 14: Claims 1-5, 7, >10, 12 and 18 are alleged to be anticipated by Aziz under
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`35 U.S.C. § l02(e).
`
`The proposed rejection of claims 1-5, 7, 10, 12 and 18 is adopted.
`
`Issue 15: Claim 13 is alleged to be obvious over Aziz in view of Kiuchi under 35
`
`U.S.C. § 103.
`
`The proposed rejection of claim 13 is adopted.
`
`Issue 16: Claims 6 and 11 are alleged to be obvious over Aziz in view of Martin
`
`under 35 U.S.C. § 103.
`
`The proposed rejection of claims 6 and 11 is adopted.
`
`Issue 17: Claim 9 is alleged to be obvious over Aziz in view of Bellovin under 35
`
`U.S.C. § 103.
`
`_ The proposed rejection of claim 9 is adopted.
`
`Issue 18: Claims 5 and 8 are alleged to be obvious over Aziz in view of Dalton
`
`under 35 U.S.C. § 103.
`
`The proposed rejection of claims 5 and 8 is adopted.
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`Page 9 of 24
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`
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`Application/Control Number: 95/001,679
`Art Unit: 3992
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`Claim Rejections — Detailed Explanation
`
`Issue 1
`
`Claims 1-4, 7, 10, 12-14 and 17 are alleged to be anticipated by Kiuchi under 35 US. C.
`
`59 102(1)).
`
`The proposed rejection of claims 1-4; 7, 10 and 12 is not adopted.
`
`"Independent claims’ 1 and 10 require a Domain Name Service (DNS) request.
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`In the prior
`
`art, “DNS” often meant ‘-‘domain name system”.
`
`In view of the claims, and in view of the
`
`disclosure of the 'l35 patent, the DNS is interpreted as a service that returns an IP address for a‘
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`requested domain name.
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`Thus, a conventional domain name system was a system that was able to serve the
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`claimed DNS'request.
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`To demonstrate that the claimed DNS request was taught by Kiuchi, page 6 of Exhibit E-
`
`1 attached to the request states:
`
`D “The ‘C-HTTP-based secure, encrypted name and certification
`service’ is a ‘Domain Name Service (DNS)’ as recited in the claim.
`
`Kiuchi teaches that the client computer (the "client—side proxy")
`generates a Domain Name Service request:
`
`‘A client—side proxy asks the C-HTTP 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 from the client-side proxy. If the
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`Page 10 of 24
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`Application/Control Number: 95/001,679
`Art Unit: 3992
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`connection is permitted, the C-HTTP name server sends the IP
`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.’ (Kiuchi, at 65 (emphasis added).)”
`
`1 The examiner does not agree with this conclusion. A DNS is mentioned twice in Kiuchi:
`
`“In a C-HTTP-based network, instead of DNS, a C-HTTP-based secure,
`encrypted name and certification service is used” (Kiuchi, Abstract)
`
`and
`
`“The DNS name service is not used for hostname resolution as the original secure
`name service, including certification, is used for the C-HTTP-based network.”
`fl
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`Thus, it appears that Kiuchi teaches away from claims 1 and 10, as well as dependent
`
`claims 2-4, 7 and 12.
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`On page 7 of Exhibit E—1 attached to the request, there is a citation of RFC 11232 as
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`extrinsic evidence to show that a DNS request is a request for the IP address associated with a
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`given domain name. The footnote at the bottom of this page suggests an optional obviousness
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`rejection of the claims based on a combination of Kiuchi and RFC 1 1232. However, such a
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`combination would not overcome the explicit teachings of Kiuchi that a different type of service
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`is used to resolve a host name in the secure C—HTTP environment.
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`8.
`
`Claims 13, 14 and 17 are rejected under 35 U.S.C. § 1021b} as being anticipated by
`
`Kiuchi. The proposed rejection of claims 13, 14 and 17 is adopted. See pages 9 and 10 and
`
`Exhibit E-1 of the request, which are hereby incorporated by reference.
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`Page 11 of 24
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`
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`Application/Control Number: 95/001,679
`Art Unit: 3992
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`Page 9
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`The Kiuchi reference must be read carefully. Although Kiuchi does not use the exact
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`language of the claims (e.g., “C-HTTP” instead of “VPN”), the request maps the language used
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`by Kiuchi to the language of the claims and describes how every feature of 13, 14 and 17 is
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`taught by Kiuchi.
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`Issue 2
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`Claims 5, 8 and 18 are alleged to be obvious over Kiuchi in view of Dalton under 35
`
`U.S.C. § 103.
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`The proposed rejection of claims 5, 8 and 18 set forth in the request is not adopted.
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`(a)
`
`With regard to claims 5 and 8, these depend upon claim 1 and the proposed
`
`rejection of claims 5 and 8 is not adopted for reasons described for parent claim 1 in Issue 1,
`
`above. The combination of Kiuchi with Dalton does not overcome the explicit teachings of
`
`Kiuchi that a different type of service is used to resolve a host name in the secure C-HTTP
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`environment.
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`(b)
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`With regard to claim 18, the proposed rejection is not adopted for the reasons
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`described for claim 1 in Issue .1, above. Claim 18 also requires the use of a DNS request.
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`The combination of Kiuchi with Dalton does not overcome the explicit teachings of
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`Kiuchi that a different type of service is used to resolve a host name in the secure C-HTTP
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`environment.
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`Page 12 of 24
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`Application/Control Numberf 95/001,679
`Art Unit: 3992
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`Issue 3
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`Claim 9 is alleged to be obvious over Kiuchi in view 0fBellovin under 35 US. C. § 103.
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`The proposed rejection of claim 9 set forth in the request is not adopted.
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`Claim 9 depends upon claim I and the proposed rejection of claim 9 is not adopted for
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`reasons described for parent claim 1 in Issue 1, above. The combination of Kiuchi with Bellovin
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`does not overcome the explicit teachings of Kiuchi that a different type of service is used to
`
`resolve a host name in the secure C-HTTP environment.
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`Issue 4 .
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`Claims 6 and II are alleged to be obvious over Kiuchi in view 0fMartin under 35 US. C.
`
`§ 103.
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`11.
`
`The proposed rejection of claims 6 and 11 set forth in the request is not adopted.
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`With regard to claims 6 and 11, these depend upon claims 1 and 10, respectively, and the
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`proposed rejection of claims 6 and 11 is not adopted for reasons described for parent claims 1
`
`and 10 in Issue 1, above. The combination of Kiuchi with Martin does not overcome the explicit
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`teachings of Kiuchi that a different type of service is used to resolve a host name in the secure C-
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`HTTP environment.
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`Page 13 of 24
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`
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`Application/Control Number: 95/001,679
`Art Unit: 3992
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`Issue 5
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`Claims 1-5, 7-10, 12-13 and 18 are alleged to be anticipated by Wesinger under 35
`
`US. C. §102(e).
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`12.
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`Claims 1-5, 7-10, 12-13 and 18 are rejected under 35 U.S.C. § 102ge) as being anticipated
`
`by Wesinger. The proposed rejection of this claim set forth in the request is adopted. See pages
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`10-12 and Exhibit E-2 of the request, which are hereby incorporated by reference.
`
`Issue 6
`
`Claims 6 and 11 are alleged to be obvious over Wesinger in view ofMartin under 35
`
`U.S.C. 59103.
`
`13.
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`Claims 6 and 1 1 are rejected under 35 U.S.C. § 103 as being unpatentable over Wesinggr
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`in view of Martin. The proposed rejection ofthis claim set forth in the request is adopted. See
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`5 pages 10-12 and 17 and Exhibit B-2 of the request, which are hereby incorporated by reference.
`
`Issue 7
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`Claims 13-15 are alleged to be anticipated by Solana under 35 (1.8. C. § 102(b).
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`Page 14 of 24
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`
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`Application/Control Number: 95/001,679
`Art Unit: 3992 ‘
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`Page 12
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`14.
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`Claims 13-15 are rejected under 35 U.S.C. § 10216) as being anticipated by Solana. The
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`proposed rejection of this claim set forth in the request is adopted. See pages 12-15 and Exhibit
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`E-3 of the request, which are hereby incorporated by reference.
`
`Issue 8
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`Claims 1-5, 7-8, 10. 12 and 18 are alleged to be obvious over Solana in view of Kiuchi
`
`under 35 U.S.C. §103.
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`15.
`
`The proposed rejection of claims 1-5, 7-8, 10, 12 and 18 is not adopted.
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`On page 17 of Exhibit E-3 of the request, the compatibility of Solana and Kiuchi is
`
`described as follows:
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`“Kiuchi's C-HTTP name server corresponds to the Directory Service (DS) of
`Solana. Kiuchi's client-side proxy corresponds to Solana's DBS. A person of ordinary
`skill in the art would be motivated to incorporate the determining functionality of
`A
`Kiuchi's C-HTTP name server into Solana's DS because of the high level of overlap
`between the two services.”
`
`The examiner does not agree with this conclusion. A DNS is mentioned twice in Kiuchi:
`
`“In a C-1-lTTP—based network, instead of DNS, a C-HTTP—based secure,
`
`encrypted name and certification service is used” (Kiuchi, Abstract)
`
`and
`
`“The DNS name service is not used for hostname resolution as the original secure
`name service, including certification, is used for the C—HTTP—based network.”
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`Page 15 of 24
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`
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`Application/Control Number: 95/001,679
`Art Unit: 3992
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`_
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`Page 13
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`Thus while the DS of Solana may include a DNS-sec (Solana, page 43), Kiuchi teaches
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`that a different type of service is used to resolve a host name in the secure C—HTTP environment.
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`The proposed rejection suggests that even though Solana does not teach the claimed
`
`“detennining whether the DNS request transmitted in step (1) is requesting access to a secure
`
`web site”, it would have been obvious to make such a determination because this feature is
`
`taught-by Kiuchi.
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`However, as shown above, Kiuchi does not use a DNS. Therefore, I(iuc_hi's C—HTTP
`
`name server does not correspond to the Directory Service (DS) of Solana, as asserted by the
`
`request. Kiuchi teaches away from the use of a DNS and thus the combination of Solana and
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`Kiuchi proposed by the request would not supply a determination of whether a DNS request is
`
`requesting access to a secure web site, as required by claims 1-5, 7-8, 10, 12, and 18.‘
`
`Issue 9
`
`Claims 5, 8 and 18 are alleged to be obvious ove_r Solana in view ofKiuchi, andfurther
`
`in view 0fDalt0n under 35 U.S. C. § 103.
`
`16.
`
`The proposed rejection of claims 5, 8, and 18 set forth in the request is not adopted.
`
`With regard to claims 5, 8, and 18, the proposed rejection is not adopted for reasons
`
`described in Issue 8, above. The combination of Solana and Kiuchi with Dalton does not
`
`overcome the explicit teachings of Kiuchi that a different type of service is used to resolve a host
`
`name in the secure C—HTTP environment.
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`Page 16 of 24
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`
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`Application/Control Number: 95/001,679
`Art Unit: 3992
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`Issue 10
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`Claim 9 is alleged to be obvious over Solana in view of Kiuchi, further in view ofDa1!on,
`
`further in view 0fBellovin under 35 US. C. § 103.
`
`17.
`
`The proposed rejection of claim 9 set forth in the request is not adopted.
`
`With regard to claim 9, the proposed rejection is not adopted for reasons described in
`
`Issue 8, above. The combination of Solana and Kiuchi with Dalton and Bellovin does not
`
`overcome the explicit teachings of Kiuchi that a differentltyple of service is used to resolve a host
`
`name in the secure C-1-ITTP environment.
`
`Issue 11
`
`Claims 6 and 11 are alleged to be obvious over Solana, in view ofKiuchi, andfurther in
`
`view ofMartin under 35 US. C. 59 103.
`
`18.
`
`The proposed rejection of claims 6 and 1 1 set forth in the request is not adopted.
`
`With regard to claims 6 and 1 1, the proposed rejection is not adopted for reasons
`
`described in Issue 8, above. The combination of Solana and Kiuchi with Martin does not
`
`overcome the explicit teachings of Kiuchi that a different type of service isused to resolve a host
`
`name in the secure C-1-ITTP environment.
`
`Page 17 of 24
`
`
`
`Application/Control Number: 95/001,679
`Art Unit: 3992 -
`
`Issue 12
`
`Claim 16 is alleged to be obvious over Solana in view ofKarr under 35 US. C. § 103.
`
`19.
`
`Claim 16 is rejected under 35 U.S.C. § 103 as being unpatentable over Solana in view of
`
`Karr. The proposed rejection of this claim set forth in the request is adopted. See pages 12-15
`
`and 18 and Exhibit E—3 of the request, which are hereby incorporated by reference.
`
`Issue 13
`
`Claim 17 is alleged to be obvious over Solana in view 0fDenning under 35 US. C. § 103.
`
`20.
`
`Claim 17 is rejected under 35 U.S.C. § 103 as being unpatentable over Solana in view of
`
`Denning. The proposed rejection of this claim set forth in the request is adopted. See pages 12-
`
`15 and 18 and Exhibit E-3 of the request, which are hereby incorporated by reference.
`
`Issue 14
`
`Claims 1-5, 7, 10, 12 and 18 are alleged to be anticipated by xiziz under 35 US. C. 59
`
`1 02(e).
`
`21.
`
`Claims 1-5, 7, 10, 12 and 18 are rejected under 35 U.S.C._§ 102(6) as being anticipated
`
`by Aziz. The proposed rejection of this claim set forth in the request is adopted. See pages 15
`
`and 16 and Exhibit E-4 of the request, which are hereby incorporated by reference.
`
`Page 18 of 24
`
`
`
`Application/Control Number: 95/001,679
`Art Unit: 3992
`
`Page 16
`
`In addition to the citations provided in the request, note also the discussion of a “secure
`
`DNS” in Aziz, column 5, line 61, to column 6, line 22.
`
`Issue 15
`
`Claim 13 is alleged to be obvious over Aziz in view ofKiuchi under 35 US. C. § 103.
`
`22.
`
`Claim 13 is rejected under 35 U.S.C. § 103 as being unpatentable over Aziz in view of
`
`Kiuchi. The proposed rejection ofthis claim set forth in the request is adopted. See pages 9, 10,
`
`15 and 16 and Exhibit E-4 of the request, which are hereby incorporated by reference.
`
`Issue 16
`
`Claims 6 and 11 are alleged to be obvious over Aziz in view ofMartin under 35 (1.8. C. 59
`
`23.
`
`Claims 6 and 1 1 are rejected under 35 U.S.C._ § 103 as being unpatentable over Aziz in
`
`view of Martin. The proposed rejection of this claim set forth in the request is adopted. See
`
`pages 9, 10 and 17 and Exhibit E-4 of the request, which are hereby incorporated by reference.
`
`' Issue 17
`
`Claim 9 is alleged to be obvious over Aziz in view of Bellovin under 35 U.S. C. § 103.
`
`Page 19 of 24
`
`
`
`Application/Control Number: 95/001,679
`Art Unit: 3992
`
`Page 17
`
`24.
`
`Claim 9 is rejected under 35 U.S.C. § 103 as being unpatentable over Aziz in view of
`
`Bellovin. The proposed rejection of this claim set forth in the request is adopted. See pages 9,
`
`10 and 18 and Exhibit E-4 of the request, which are hereby incorporated by reference.
`
`Issue 18
`
`Claims 5 and 8 are alleged to be obvious over Aziz in view ofDalton under 35 US. C. §
`
`25.
`
`Claims 5 and 8 are rejected under 35 U.S.C. § 103 as being unpatentable over Aziz in
`
`view of Dalton. The proposed rejection ofthis claim set forth in the request is adopted. See
`
`pages 9, 10 and 18 and Exhibit E-4 of the request, which are hereby incorporated by reference.
`
`Examiner ’s Statement of Reasonsfor Patentability/Confirmation
`
`26.
`
`None of the claims subject to reexamination have been confirmed at this time.
`
`Response to Submissions by Patent Owner and Requestor
`
`27.
`
`Patent owner has filed no submissions regarding the merits of the rejections proposed in
`
`the request.
`
`28.
`
`The rejections proposed in the request have been carefully considered by the examiner
`
`and addressed above.
`
`Page 20 of 24
`
`
`
`Application/Control Number: 95/001,679
`Art Unit: 3992
`
`29.
`
`The examiner notes the following passage from the ‘I35 patent (column 37, line 63, to
`
`column 38, line l3):
`
`“According to certain aspects of the invention, a specialized DNS server traps
`DNS requests and, if the request is from a special type of user (e.g., one for which secure
`communication services are defined), the server does not return the true IP address of the
`target node, but instead automatically sets up a virtual private network between the target
`node and the user. The VPN is preferably implemented using the IP address ‘hopping’
`, features of the basic invention described above, such that the true identity of the two
`nodes cannot be determined even if packets during the communication are intercepted.
`For DNS requests that are determined to not require secure services (e.g., an unregistered
`user), the DNS server transparently ‘passes through’ the request to provide a normal
`look-up function and return the IP address of the target web server, provided that the
`requesting host has permissions to resolve unsecured sites. Different users who make an
`identical DNS request could be provided with different results.”
`
`This passage represents significant aspects of the invention to which many of the claims
`
`are directed. Each of the independent claims requires setting up a virtual private network (VPN)
`
`or a virtual private link in response to a DNS request or a “request to establish a connection”.
`
`Claim 1 1 is directed to an IP hopping engine for pseudorandomly changing IP addresses.
`
`However, none of the claims include “the server does not return the true IP address of the
`
`target node, but instead automatically sets up a virtual private network between the target node
`
`and the user”.
`
`Consequently, for any prior art reference used in a rejection above, it does not matter
`
`whether or not the server returns the true IP address of the target node to the user or client and
`
`sets up a VPN instead, because this feature is absent from the independent claims.
`
`Page 21 of 24
`
`
`
`Application/Control Number: 95/001,679
`Art Unit: 3992
`
`CONCLUSION
`
`Submissions
`
`30.
`
`In order to ensure full consideration of any amendments, affidavits or declarations, or
`
`other documents as evidence of patentability, such documents must be submitted in response to
`
`this Office action. Submissions after the next Office action, which is intended to be an Action
`
`Closing Prosecution (ACP), will be governed by 37 CFR 1.116(b) and (d), which will be strictly
`
`enforced.
`
`Service of Papers
`
`31.
`
`Any paper filed with the USPTO, i.e., any submission made, by either the Patent Owner
`
`or the Third Party Requester must be served on every other party in the reexamination
`
`proceeding, including any other third party requester that is part of the proceeding due to merger
`
`of the reexamination proceedings. As proof of service, the party submitting the paper to the
`
`Office must attach a Certificate of Service to the paper, which sets forth the name and address of
`
`the party served and the method of service. Papers filed without the required Certificate of
`
`Service may be denied consideration. 37 CFR 1.903; MPEP 2666.06.
`
`Amendments in Reexamination Proceedings
`
`32.
`
`Any proposed amendment to the specification and/or claims in this reexamination proceeding
`
`must comply with 37 CFR 1.S30(d)-(j), must be formally presented pursuant to 37 CFR 1.52(a) and (b),
`
`and must contain any fees required by 37 CFR 1.20(c). Amendments in an inter parles reexamination
`
`Page 22 of 24
`
`
`
`Application/Control Number: 95/001,679
`Art Unit: 3992
`
`Page 20
`
`proceeding are made in the same manner that amendments in an ex parte reexamination are made.
`
`MPEP 2666.01. See MPEP 2250 for guidance as to the manner of making amendments in a
`
`reexamination proceeding.
`
`Extensions of Time
`
`33.
`
`Extensions of time under 37 CFR 1.136(a) will not be permitted in inter partes
`
`reexamination proceedings because the provisions of 37 CFR 1.136 apply only to “an applicant”
`
`and not to the patent owner in a reexamination proceeding. Additionally, 35 U.S.C. 314(0)
`
`requires that inter partes reexamination proceedings “will be conducted with special dispatch”
`
`(37 CFR 1.937). Patent owner extensions of time in inter partes reexamination proceedings are
`
`provided for in 37 CFR 1.956. Extensions of time are not available for third party requester
`
`comments, because a comment period of 30 days from service of patent owner’s response is set
`
`'
`
`by statute. 35 U.S.C. 314(b)(3).
`
`Notification of Concurrent Proceedings
`
`34.
`
`The patent owner is reminded of the continuing responsibility under 37 CFR 1.985(a), to
`
`apprise the Office of any litigation activity, or other prior or concurrent proceeding, involving the
`
`patent undergoing reexamination or any related patent throughout the course of this
`
`reexamination proceeding. The third party requester is also reminded of the ability to similarly
`
`inform the Office of any such activity or proceeding throughout the course of this reexamination
`
`proceeding. See MPEP § 2686 and 2686.04.
`
`Page 23 of 24
`
`
`
`Application/Control Number: 95/001,679
`Art Unit: 3992
`
`Page 21
`
`All correspondence relating to this inter partes reexamination proceeding should be directed:
`
`By Mail to:
`
`Mail Stop Inter Partes Reexam
`Central Reexamination Unit
`Commissioner for Patents
`United States Patent & Trademark Office
`P.O. Box 1450
`
`Alexandria, VA 22313-1450
`
`By FAX to:
`
`(571)273-9900
`Central Reexamination Unit
`
`By hand to:
`
`Customer Service Window
`
`Randolph Building
`401 Dulany Street
`Alexandria, VA 22314
`
`Registered users of EFS-Web may alternatively submit such correspondence via the electronic
`filing system EFS-Web, at https://efs.usgto.gov/efile/mvportal/efs-registered. EFS-Web offers
`the benefit of quick submission to the particular area of the Office that needs to act on the
`correspondence. Also, EFS-Web submissions are “soft scanned” (i.e., electronically uploaded)
`directly into the official file for the reexamination proceeding, which offers parties the
`opportunity to review the content of their submissions after the “soft scanning” process is
`complete.
`
`Any inquiry concerning this communication should be directed to the Central Reexamination
`Unit at telephone number (571) 272-7705.
`
`Signed:
`
`/B. James Peikaril
`
`B. James Peikari
`
`Primary Examiner
`Art Unit 3992
`
`Conferees:
`
`/r.g.f./
`
`Alexander Kosowski
`Supervisor
`Art Unit 3992
`
`Page 24 of 24
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