P.0. Box l450 AIe'<7mdri7i, Virginia 223134450
`
`l.VI’l‘|<‘.I) S'l‘A'l‘l<B I)l<ll’/\R'l‘Ml<lN'l‘()l<' (T()MV1l<lR(?l<l
`United States Patent and Trademark Olficc
`Address: COM}/IISSIONER FOR PATENTS
`
`www uspi.0.goV
`
`APPLICATION NO.
`FILING DATE
`FIRST NAMED INVENTOR
`ATTORNEY DOCKET NO.
`CONFIRMATION NO.
`
`0' 13
`95/001,679
`07/08/2011
`65 2
`5
`4361492
`9786
`
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
`°‘°’”’2°”
`7”“
`2””
`LL13
`901 NEVV YORK AVENUE, NW’
`wAsHINGToNaDc20oo1-4413
`
`PEIKARI, BEHZAD
`
`3992
`
`MALL DATE
`
`O9/15/2015
`
`DELIVERY MODE
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL-90A (Rev. 04/07)
`
`Page 1 of 38
`
`VIRNETX EXHIBIT 2057
`
`Mangrove V. VimetX
`Trial IPR2015-01047
`
`VIRNETX EXHIBIT 2057
`Mangrove v. VirnetX
`Trial IPR2015-01047
`
`Page 1 of 38
`
`

`
`_
`_
`_
`Transmittal of Communication to
`Third Party Requester
`Inter Partes Reexamination
`
`Control No.
`
`::5(;?%‘n-:3r79
`
`Patent Under Reexamination
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address. --
`
`B. JAMES PEIKARI
`
`3992
`
`lj (THIRD PARTY REQUESTER‘S CORRESPONDENCE ADDRESS) jl
`
`Haynes and Boone, LLP
`IP Section
`2323 Victory Avenue, Suite 700
`Dallas, TX 75219
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark Office
`in the above—identified reexamination prceeding. 37 CFR 1.903.
`
`Prior to the filing of a Notice of Appeal, each time the patent owner responds to this communication,
`the third party requester of the 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.
`
`U.S. Patent and Trademark Office
`PTOL-2070 (Rev. 07-04)
`
`Paper No. 20150904
`
`Page 2 of 38
`
`

`
`Control No.
`
`Patent Under Reexamination
`
`Right of Appeal Notice
`
`95/001,679
`Examiner
`B. JAMES PEIKARI
`
`6502135
`Art Unit
`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 03 June 2015
`
`Third Party(ies) on 02 July, 2015
`
`Patent owner and/or third party requester(s) may file a notice of appeal with respect to any adverse decision
`with payment of the fee set forth in 37 CFR 41 .20(b)(1) within one-month or thirty-days (whichever is
`longer). See MPEP 2671. In addition, a party may file a notice of cross appeal and pay the 37 CFR
`41 .20(b)(1) fee within fourteen days of service of an opposing party's timely filed notice of appeal. See
`MPEP 2672.
`
`All correspondence relating to this inter partes reexamination proceeding should be directed to the Central
`Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end of this Office action.
`
`If no party timely files a notice of appeal, prosecution on the merits of this reexamination proceeding will be
`concluded, and the Director of the USPTO will proceed to issue and publish a certificate under 37 CFR 1.997 in
`accordance with this Office action.
`
`The proposed amendment filed
`
`|:I will be entered
`
`|:| will not be entered*
`
`*Reasons for non-entry are given in the body of this notice.
`
`1a. E Claims 1-9 and 13-18 are subject to reexamination.
`
`1b. IE Claims 1 are not subject to reexamination.
`2. D Claims j have been cancelled.
`
`. D Claims j are confirmed. [Unamended patent claims].
`.
`I:| Claims j are patentable. [Amended or new claims].
`.
`IZ Claims 1-9 and 13-18 are rejected.
`.
`|:I Claims j are objected to.
`I:| are not acceptable.
`I:I are acceptable.
`.
`I:| The drawings filed on
`. D The drawing correction request filed on j is I:I approved. I:I disapproved.
`. D Acknowledgment is made of the claim for priority under 35 U.S.C. 119 ( )-(d) or (f). The certified copy
`has:
`
`I:I been received.
`10. [I Other
`
`Attachments
`
`I:I not been received.
`
`I:I been filed in Application/Control No.
`
`1. El Notice of References Cited by Examiner, PTO-892
`2.
`|:| Information Disclosure Citation, PTO/SB/08
`3.I:I
`
`U_S_ Patent and Trademark Office
`PTOL-2066 (08-06)
`
`Right of Appeal Notice (37 CFR 1.953)
`
`Part of Paper No. 20150904
`
`Page 3 of 38
`
`

`
`Application/Control Number: 95/001,679
`Art Unit: 3992
`
`DETAILED ACTION
`
`Inter Partes Reexamination
`
`1.
`
`This is an interpartes reexamination of U8. Patent Number 6,502,135 (the '135
`
`patent), issued December 31, 2002.
`
`Claims 1-9 and 13-18 are subject to reexamination.
`
`Prosecution Summary
`
`2.
`
`The following is a brief summary of the prosecution to date in this merged
`
`reexamination proceeding:
`
`0
`
`On July 8, 2011, a request for interpartes reexamination of claims 1-18 of
`
`the '135 patent, assigned control no. 95/001,679 (“the '679 proceeding”),
`
`was filed by a third party requester (“requester” or “the '679 requester”).
`
`On October 3, 2011, the USPTO mailed a decision granting interpartes
`
`reexamination and ordering the reexamination of claims 1-18 in the '679
`
`proceeding.
`
`On February 15, 2012, the USPTO mailed a non—final Office action in the
`
`'679 proceeding. Claims 1-18 were rejected.
`
`On May 15, 2012, patent owner filed a response to the February 15, 2012
`
`Office action. No claims were amended or canceled.
`
`On June 14, 2012, in the '679 proceeding, requester filed comments.
`
`Page 4 of 38
`
`

`
`Application/Control Number: 95/001,679
`Art Unit: 3992
`
`Page 3
`
`On March 11, 2013, the USPTO mailed a non-final Office action. Claims
`
`1-18 were rejected.
`
`On June 11, 2013, patent owner filed a response to the March 11, 2013
`
`Office action. No claims were amended or canceled.
`
`On July 9, 2013, requester filed comments.
`
`On January 10, 2014, the USPTO mailed an action closing prosecution
`
`(ACP), which will be treated as a second non-final Office action. Claims 1-
`
`18 were rejected.
`
`On March 10, 2014, patent owner filed a response to the January 10,
`
`2014 Office action.
`
`On April 9, 2014, requester filed comments.
`
`On April 3, 2015, the USPTO mailed an action closing prosecution (ACP).
`
`Claims 10-12 were withdrawn from consideration. Claims 1-9 and 13-18
`
`were rejected.
`
`On June 3, 2015, patent owner filed a response to the ACP.
`
`On July 2, 2015, requester filed comments.
`
`Page 5 of 38
`
`

`
`Application/Control Number: 95/001,679
`Art Unit: 3992
`
`References
`
`The references discussed herein are as follows:
`
`(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").
`
`(4)
`
`U.S. Patent No. 6,119,234 to Aziz (“Aziz").
`
`(5)
`
`David M. Martin, “A Framework for Local Anonymity in the Internet,’’
`
`Technical Report. Boston University, Boston, MA, USA (Feb 21, 1998) (“Martin”).
`
`(6)
`
`U.S. Pat. No. 7,764,231 to Karr et al. (“Karr”).
`
`(7)
`
`D.E. Denning and G.M. Sacco, “Time-stamps in Key Distribution
`
`Protocols," Communications of the ACM, Vol.24, n.8, pp. 533-536 (1981) (“Denning”).
`
`(8)
`
`C.|. Dalton and J.F. Griffin, “Applying Military Grade Security to the
`
`Internet,’’ Proceedings of the 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”).
`
`Page 6 of 38
`
`

`
`Application/Control Number: 95/001,679
`Art Unit: 3992
`
`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 122(b), by another filed
`in the United States before the invention by the applicant for patent or (2) a patent granted on an application for
`patent by another filed in the United States before the invention by the applicant for patent, except that an
`international application filed under the treaty defined in section 351 (a) shall have the effects for purposes of
`this subsection of an application filed in the United States only if the international application designated the
`United States and was published under Article 21 (2) of such treaty in the English language.
`
`5.
`
`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
`
`obviousness rejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in
`section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are
`such that the subject matter as a whole would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived
`by the manner in which the invention was made.
`
`Summary of Proposed Rejections and Status
`
`6.
`
`The following rejections were proposed by the request filed July 8, 2011 in the
`
`'679 proceeding. References to claims 10-12 have been withdrawn.
`
`Issue 1: Claims 1-4, 7, 13, 14 and 17 are alleged to be anticipated by
`
`Kiuchi under 35 U.S.C.§102( ).
`
`The proposed rejection of claims 1-4, 7, 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.
`
`Page 7 of 38
`
`

`
`Application/Control Number: 95/001,679
`Art Unit: 3992
`
`The proposed rejection of claims 5, 8 and 18 is 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 adopted.
`
`Issue 4: Claim 6 is alleged to be obvious over Kiuchi in view of Martin
`
`under 35 U.S.C. § 103.
`
`The proposed rejection of claim 6 is adopted.
`
`Issue 5: Claims 1-5, 7-9, 13 and 18 are alleged to be anticipated by
`
`Wesinger under 35 U.S.C.§102( ).
`
`The proposed rejection of claims 1-5, 7-9, 13 and 18 is adopted.
`
`Issue 6: Claim 6 is alleged to be obvious over Wesinger in view of Martin
`
`under 35 U.S.C.§103.
`
`The proposed rejection of claim 6 is adopted.
`
`Issue 7: Claims 13-15 are alleged to be anticipated by Solana under 35
`
`U.S.C.§102( ).
`
`The proposed rejection of claims 13-15 is adopted.
`
`Issue 8: Claims 1-5, 7-8 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 and 18 is 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 adopted.
`
`Page 8 of 38
`
`

`
`Application/Control Number: 95/001,679
`Art Unit: 3992
`
`Page 7
`
`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 adopted.
`
`|ssue11: Claim 6 is 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 claim 6 is adopted.
`
`Issue 12: Claim 16 is alleged to be obvious over Solana in view of Karr
`
`under 35 U.S.C.§103.
`
`The proposed rejection of claim 16 is .
`
`Issue 13: Claim 17 is alleged to be obvious over Solana in view of
`
`Denning under 35 U.S.C.§103.
`
`The proposed rejection of claim 17 is a<:l_o1&d.
`
`Issue 14: Claims 1-5, 7 and 18 are alleged to be anticipated by Aziz under
`
`35 u.s.c.§1o2( ).
`
`The proposed rejection of claims 1-5, 7 and 18 is .
`
`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: Claim 6 is alleged to be obvious over Aziz in view of Martin
`
`under 35 U.S.C.§103.
`
`The proposed rejection of claim 6 is adopted.
`
`Page 9 of 38
`
`

`
`Application/Control Number: 95/001,679
`Art Unit: 3992
`
`Page 8
`
`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.
`
`Claim Rejections — Detailed Explanation
`
`Issue 1
`
`Claims 1-4, 7, 13, 14 and 17 are alleged to be anticipated by Kiuchi under 35 U. S. C. §
`
`102(b).
`
`7.
`
`Claims 1-4 and 7 are rejected under 35 U.S.C. § 102(b) as being anticipated by
`
`Kiuchi. The proposed rejection of this claim set forth in the request is adopted. See
`
`pages 9 and 10 and Exhibit E-1 of the request, which are hereby incorporated by
`
`reference.
`
`Although the C-HTTP name server of Kiuchi appears to teach away from the
`
`claimed DNS: ‘‘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” (Kiuchi, pg. 64), the C-
`
`HTTP name server of Kiuchi does in fact teach the same functionality of a service that
`
`Page 10 of 38
`
`

`
`Application/Control Number: 95/001,679
`Art Unit: 3992
`
`Page 9
`
`returns an IP address for a requested domain name: (a) The client-side proxy sends the
`
`C-HTTP name server “the host specified in a given URL” (Kiuchi, pg. 65) and (b) In
`
`response, the C-HTTP name server “sends the IP address.” (Kiuchi, pg. 65).
`
`8.
`
`Claims 13, 14 and 17 are re'ected 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.
`
`The Kiuchi reference must be read carefully. Although Kiuchi does not use the
`
`exact language of the claims (e.g., “C—HTTP” instead of “VPN”), the request maps the
`
`language used by Kiuchi to the language of the claims and describes how every feature
`
`of 13, 14 and 17 is taught by Kiuchi.
`
`Issue 2
`
`Claims 5, 8 and 18 are alleged to be obvious over Kiuchi in view of Dalton under
`
`35 U.S.C. § 103.
`
`9.
`
`Claims 5, 8 and 18 are re'ected under 35 U.S.C. § 103 as being obvious over
`
`Kiuchi in view of Dalton. The proposed rejection of this claim set forth in the request is
`
`adopted. See pages 9, 10 and 18 and Exhibit E—1 of the request, which are hereby
`
`incorporated by reference.
`
`Page 11 of 38
`
`

`
`Application/Control Number: 95/001,679
`Art Unit: 3992
`
`Page 10
`
`Although the C-HTTP name server of Kiuchi appears to teach away from the
`
`claimed DNS: ‘‘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” (Kiuchi, pg. 64), the C-
`
`HTTP name server of Kiuchi does in fact teach the same functionality of a service that
`
`returns an IP address for a requested domain name: (a) The client-side proxy sends the
`
`C-HTTP name server “the host specified in a given URL” (Kiuchi, pg. 65) and (b) In
`
`response, the C-HTTP name server “sends the IP address.” (Kiuchi, pg. 65).
`
`Issue 3
`
`Claim 9 is alleged to be obvious over Kiuchi in view of Bellovin under 35 U. S. C. §
`
`1 03.
`
`10.
`
`Claim 9 is reiected under 35 U.S.C. § 103 as being obvious over Kiuchi 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—1 of the request, which are hereby incorporated by
`
`reference.
`
`Although the C-HTTP name server of Kiuchi appears to teach away from the
`
`claimed DNS: ‘‘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,
`
`Page 12 of 38
`
`

`
`Application/Control Number: 95/001,679
`Art Unit: 3992
`
`Page 11
`
`including certification, is used for the C-HTTP-based network” (Kiuchi, pg. 64), the C-
`
`HTTP name server of Kiuchi does in fact teach the same functionality of a service that
`
`returns an IP address for a requested domain name: (a) The client—side proxy sends the
`
`C—HTTP name server “the host specified in a given URL” (Kiuchi, pg. 65) and (b) In
`
`response, the C—HTTP name server “sends the IP address.” (Kiuchi, pg. 65).
`
`Issue 4
`
`Claim 6 is alleged to be obvious over Kiuchi in view of Martin under 35 U.S.C. §
`
`103.
`
`11.
`
`Claim 6 is reiected under 35 U.S.C. § 103 as being obvious over Kiuchi 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-1 of the request, which are hereby incorporated by
`
`reference.
`
`Although the C—HTTP name server of Kiuchi appears to teach away from the
`
`claimed DNS: ‘‘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” (Kiuchi, pg. 64), the C-
`
`HTTP name server of Kiuchi does in fact teach the same functionality of a service that
`
`returns an IP address for a requested domain name: (a) The client—side proxy sends the
`
`Page 13 of 38
`
`

`
`Application/Control Number: 95/001,679
`Art Unit: 3992
`
`Page 12
`
`C-HTTP name server “the host specified in a given URL” (Kiuchi, pg. 65) and (b) In
`
`response, the C-HTTP name server “sends the IP address.” (Kiuchi, pg. 65).
`
`Issue 5
`
`Claims 1-5, 7-9, 13 and 18 are alleged to be anticipated by Wesinger under 35 U. S. C. §
`
`102(e).
`
`12.
`
`Claims 1-5, 7-9, 13 and 18 are reiected under 35 U.S.C. § 102(e) as being
`
`anticipated by Wesinger. The proposed rejection of this claim set forth in the request is
`
`adopted. See pages 10-12 and Exhibit E-2 of the request, which are hereby
`
`incorporated by reference.
`
`Issue 6
`
`Claim 6 is alleged to be obvious over Wesinger in view of Martin under 35 U. S. C. § 103.
`
`13.
`
`Claim 6 is reiected under 35 U.S.C. § 103 as being unpatentable over Wesinger
`
`in view of Martin. The proposed rejection of this claim set forth in the request is
`
`adopted. See pages 10-12 and 17 and Exhibit E-2 of the request, which are hereby
`
`incorporated by reference.
`
`Issue 7
`
`Claims 13- 15 are alleged to be anticipated by Solana under 35 U. S. 0. § 102(b).
`
`Page 14 of 38
`
`

`
`Application/Control Number: 95/001,679
`Art Unit: 3992
`
`Page 13
`
`14.
`
`Claims 13-15 are re'ected under 35 U.S.C. § 102§e) as being anticipated by
`
`Solana. The proposed rejection of this claim set forth in the request is adopted. See
`
`pages 12-15 and Exhibit E—3 of the request, which are hereby incorporated by
`
`reference.
`
`Issue 8
`
`Claims 1-5, 7-8 and 18 are alleged to be obvious over Solana in view of Kiuchi
`
`under 35 U.S.C. § 103.
`
`15.
`
`Claims 1-5, 7-8 and 18 are re'ected under 35 U.S.C. § 103 as being obvious over
`
`Solana in view of Kiuchi. The proposed rejection of this claim set forth in the request is
`
`adopted. See pages 9, 10 and 12-15 and Exhibit E—3 of the request, which are hereby
`
`incorporated by reference.
`
`Although the C—HTTP name server of Kiuchi appears to teach away from the
`
`claimed DNS: ‘‘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” (Kiuchi, pg. 64), the C-
`
`HTTP name server of Kiuchi does in fact teach the same functionality of a service that
`
`returns an IP address for a requested domain name: (a) The client—side proxy sends the
`
`C—HTTP name server “the host specified in a given URL” (Kiuchi, pg. 65) and (b) In
`
`response, the C—HTTP name server “sends the IP address.” (Kiuchi, pg. 65).
`
`Page 15 of 38
`
`

`
`Application/Control Number: 95/001,679
`Art Unit: 3992
`
`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.
`
`16.
`
`Claims 5, 8 and 18 are re'ected under 35 U.S.C. § 103 as being obvious over
`
`Solana in view of Kiuchi and further in view of Dalton. The proposed rejection of this
`
`claim set forth in the request is adogted. See pages 9, 10, 12-15 and 18 and Exhibit E-
`
`3 of the request, which are hereby incorporated by reference.
`
`Although the C-HTTP name server of Kiuchi appears to teach away from the
`
`claimed DNS: ‘‘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” (Kiuchi, pg. 64), the C-
`
`HTTP name server of Kiuchi does in fact teach the same functionality of a service that
`
`returns an IP address for a requested domain name: (a) The client—side proxy sends the
`
`C-HTTP name server “the host specified in a given URL” (Kiuchi, pg. 65) and (b) In
`
`response, the C-HTTP name server “sends the IP address.” (Kiuchi, pg. 65).
`
`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. 0. § 103.
`
`Page 16 of 38
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`

`
`Application/Control Number: 95/001,679
`Art Unit: 3992
`
`17.
`
`Claim 9 is reiected under 35 U.S.C. § 103 as being obvious over Solana in view
`
`of Kiuchi and further in view of Dalton and Bellovin. The proposed rejection of this claim
`
`set forth in the request is adopted. See pages 9, 10, 12-15 and 18 and Exhibit E-3 of
`
`the request, which are hereby incorporated by reference.
`
`Although the C—HTTP name server of Kiuchi appears to teach away from the
`
`claimed DNS: ‘‘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” (Kiuchi, pg. 64), the C-
`
`HTTP name server of Kiuchi does in fact teach the same functionality of a service that
`
`returns an IP address for a requested domain name: (a) The client—side proxy sends the
`
`C—HTTP name server “the host specified in a given URL” (Kiuchi, pg. 65) and (b) In
`
`response, the C—HTTP name server “sends the IP address.” (Kiuchi, pg. 65).
`
`Issue 11
`
`Claim 6 is alleged to be obvious over Solana, in view of Kiuchi, and further in
`
`view of Martin under 35 U.S.C. § 103.
`
`18.
`
`Claim 6 is reiected under 35 U.S.C. § 103 as being obvious over Solana in view
`
`of Kiuchi and further in view of Martin. The proposed rejection of this claim set forth in
`
`Page 17 of 38
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`

`
`Application/Control Number: 95/001,679
`Art Unit: 3992
`
`Page 16
`
`the request is adopted. See pages 9, 10, 12-15 and 17 and Exhibit E-3 of the request,
`
`which are hereby incorporated by reference.
`
`Although the C-HTTP name server of Kiuchi appears to teach away from the
`
`claimed DNS: ‘‘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” (Kiuchi, pg. 64), the C-
`
`HTTP name server of Kiuchi does in fact teach the same functionality of a service that
`
`returns an IP address for a requested domain name: (a) The client-side proxy sends the
`
`C-HTTP name server “the host specified in a given URL” (Kiuchi, pg. 65) and (b) In
`
`response, the C-HTTP name server “sends the IP address.” (Kiuchi, pg. 65).
`
`Issue 12
`
`Claim 16 is alleged to be obvious over Solana in view of Karr under 35 U. S. C. §
`
`103.
`
`19.
`
`Claim 16 is re'ected 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.
`
`Page 18 of 38
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`

`
`Application/Control Number: 95/001,679
`Art Unit: 3992
`
`Issue 13
`
`Claim 17 is alleged to be obvious over Solana in view of Denning under 35
`
`U.S.C. § 103.
`
`20.
`
`Claim 17 is re'ected 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 and 18 are alleged to be anticipated by Aziz under 35 U. S. C. §
`
`102(9).
`
`21.
`
`Claims 1-5, 7 and 18 are re'ected under 35 U.S.C. § 102(e) 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.
`
`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.
`
`Page 19 of 38
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`

`
`Application/Control Number: 95/001,679
`Art Unit: 3992
`
`Issue 15
`
`Claim 13 is alleged to be obvious over Aziz in view of Kiuchi under 35 U. S. C. §
`
`1 03.
`
`22.
`
`Claim 13 is re'ected under 35 U.S.C. § 103 as being unpatentable over Aziz in
`
`view of Kiuchi. The proposed rejection of this 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
`
`Claim 6 is alleged to be obvious over Aziz in view of Martin under 35 U. S. C. §
`
`103.
`
`23.
`
`Claim 6 is re'ected under 35 U.S.C.
`
`103 as bein un atentable 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. §
`
`Page 20 of 38
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`

`
`Application/Control Number: 95/001,679
`Art Unit: 3992
`
`Page 19
`
`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 of Dalton under 35
`
`U. S. C. § 103.
`
`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 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.
`
`Examiner’s Statement of Reasons for Patentability/Confirmation
`
`26.
`
`None of the claims subject to reexamination have been confirmed at this time.
`
`Page 21 of 38
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`

`
`Application/Control Number: 95/001,679
`Art Unit: 3992
`
`Response to Submissions by Patent Owner and Ftequestor
`
`The following is responsive to the arguments presented by patent owner on June
`
`3, 2015 and to the comments filed by requester on July 2, 2015. This response also
`
`relies on comments filed by requester on April 9, 2014.
`
`It is hereby noted: wherever the examiner states that arguments presented on
`
`certain pages of either patent owner’s response or requester’s comments are
`
`convincing and "incorporated herein by reference”, such incorporation by reference
`
`expressly excludes (1) any documents or exhibits (for example, court decisions,
`
`declarations, PTAB decisions, dictionaries, etc. that might be presented by patent owner
`
`or requester) that are not included in the respective grounds of rejection for each of the
`
`Issues presented above, unless explicitly stated by the examiner, (2) any reference to or
`
`arguments directed to claims 10, 11 or 12, and (3) any reference to any other
`
`reexamination proceeding than the '679 proceeding.
`
`On June 3, 2015, patent owner filed a response to the April 3, 2015 ACP. No
`
`claims were amended or canceled. Also submitted were court papers.
`
`On July 2, 2015, requester filed comments.
`
`Each of these has been carefully considered by the examiner.
`
`Page 22 of 38
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`

`
`Application/Control Number: 95/001,679
`Art Unit: 3992
`
`Issue 1
`
`27.
`
`Patent owner’s comments directed to Issue 1 appear on pages 1-13 of the
`
`response filed June 3, 2015.
`
`The examiner notes that a client computer is any computer that through network
`
`connections (including buses and proxy devices) accesses services or data made
`
`available by a target computer, which is commonly called a server.
`
`Thus, patent owner’s attempts to distinguish a “client computer” from a "client-
`
`side proxy” or to limit Kuichi‘s "client computer" to a "user‘s computer" are unconvincing.
`
`The examiner notes that Kiuchi does not use the claimed terminology “client
`
`computer" or “server computer”. However, Kiuchi does, in fact, teach the claimed client
`
`computer and server computer. Use of the same terminology is not required; In re
`
`Bond, 910 F.2d 831,832 (Fed. Cir. 1990).
`
`Given that the proxy (e.g., a computer) serves the client-side, this proxy is a
`
`computer for a client or "a client computer" as broadly as recited.
`
`Also, the specification of the '135 patent does not define or limit the "client
`
`computer" (e.g. client 801, client 901, etc.) so as to exclude the client-side proxy in
`
`Kiuchi. Likewise, the specification of the '135 patent does not define or limit the "server
`
`computer" so as to exclude the server—side proxy in Kiuchi. Thus, the '135 patent
`
`Page 23 of 38
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`

`
`Application/Control Number: 95/001,679
`Art Unit: 3992
`
`Page 22
`
`disclosure does not exclude a proxy as a part of client computer or a server computer
`
`and does not define either a client computer or a server computer to exclude a proxy.
`
`In response to patent owner’s arguments, the requester presents arguments on
`
`pages 2-7 of the comments filed July 2, 2015. These arguments are fully responsive to
`
`each of the arguments presented by patent owner. These arguments are convincing
`
`and incorporated herein by reference.
`
`The rejections in Issue 1 are maintained.
`
`Issue 2
`
`28.
`
`Patent owner’s comments directed to Issue 2 appear on pages 13 and 14 of the
`
`response filed June 3, 2015.
`
`Patent owner contends that the proposed combination of Kiuchi and Dalton
`
`would not work, arguing that Kiuchi teaches away from an open—access system and
`
`instead teaches a closed network.
`
`The examiner notes that the Kiuchi network is not a physically closed network.
`
`The Kiuchi system is actually implemented on the internet. Kiuchi states, ‘‘In this paper,
`
`we discuss the design and implementation of a closed HTTP (Hypenext Transfer
`
`Protocol)—based network (C—HTTP) which can be built on the lntemet” (see Kiuchi, page
`
`64). Thus, Kiuchi is built on an open platform (the internet) and achieves a "closed"
`
`network by implementing security protocols.
`
`Page 24 of 38
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`

`
`Application/Control Number: 95/001,679
`Art Unit: 3992
`
`Page 23
`
`Regarding the discussion of claim 8, the examiner notes that it was Kiuchi (and
`
`not Dalton) that was cited to teach passing the request to a DNS server.
`
`In response to patent owner’s assertions, the requester presents arguments on
`
`pages 8 and 9 of the comments filed July 2, 2015. These arguments are fully
`
`responsive to each of the arguments presented by patent owner. These arguments are
`
`convincing and incorporated herein by reference. The rejections in Issue 2 are
`
`maintained.
`
`Issue 3
`
`29.
`
`Patent owner’s comments directed to Issue 3 appear on page 14 of the response
`
`filed June 3, 2015.
`
`Patent owner does not present new arguments, but does m