FIN000l-CONI-CIPI-CON4
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`PATENT
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`In re Application of
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`Yigal Mordechai EDERY, et al.
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`Group Art Unit: 2431
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`Serial No.: 13;’290,'?08
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`Examiner: Christopher A. Revak
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`Filed: November 7, 201 I
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`For: MALICIOUS MOBILE CODE RUNTIME MONITORING SYSTEM AND METHODS
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`REQUEST FOR RECONSIDERATION OF THE DISMISSED RENEWED PETITION
`TO ACCEPT UNINTENTIONALLY DELAYED CLAIM OF PRIORITY UNDER 35
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`U.S.C. §1l9(e) AND §l20 FOR THE BENEFIT OF A PRIOR-FILED APPLICATION
`FILED UNDER 37 CFR§ l.78(a)(3)
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`Mail Stop PETITIONS
`Commissioner for Patents
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`P. O. Box 1450
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`Alexandria, VA 22313-1450
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`Dear Sir:
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`In response to the December 3, 2013 dismissal of the Assignee’s renewed petition for the
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`acceptance of an unintentionally delayed claim of priority under 35 U.S.C. § I l9(e) and §l20 for
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`the benefit of prior-filed applications in the above-referenced patent application, the Assignee
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`respectfully requests reconsideration of the petition dismissal in view of the revised priority
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`language submitted in conjunction herewith as an Amendment to the Specification pursuant to
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`37 CFR 1.312.
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`In accordance with the Patent Office’s suggestion in the December 3” dismissal, the
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`following amendment to the specification of the present application which adds a reference to
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`prior-filed U.S. Patent Application No. 08,390,097, filed January 28, I997, now US. Patent No.
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`6,167,520 which claims benefit of US. Provisional Patent Application No. 60f030,639,
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`is
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`submitted in conjunction with this Petition:
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`[000]] This application is a continuation of assignee‘s pending U.S. patent
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`application serial no. 12f4?'1,942, filed May 26, 2009 by inventors Yigal
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`Mordechai Edery, et al., now U.S. Patent No. 8,0';'9,086, entitled "Malicious
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`PTAB, Exhibit 3003
`PTAB, Exhibit 3003
`Symantec Corp. v. Finjan, Inc.
`Symantec Corp. v. Finjan, Inc.
`IPR2015-01897
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`|PR2015—01897
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`

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`Serial No. 13/290,708
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`Docket No. FIN000l-CONI-CIPI-CON4
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`Mobile Code Runtime Monitoring System and Methods," which is a continuation
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`of assignee's U.S. patent application serial no.
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`1 V370,] 14, filed March 7, 2006 by
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`inventors Yigal Mordechai Edery, et al., now U.S. Patent No. 7,6l3,926, entitled
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`"Method and System for Protecting a Computer and a Network from Hostile
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`Downloadables," which is a continuation of assignee's U.S. patent application
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`serial no. 09;’86l,229, filed on May 17, 2001 by inventors Yigal Mordechai
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`Edery, et al., now U.S. Patent No. 7,058,822, entitled "Malicious Mobile Code
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`Runtime Monitoring System And Methods," all of which are hereby incorporated
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`by reference. U.S. patent application serial no. 09:’86l,229, now U.S. Patent No.
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`7,058,822, claims benefit of provisional U.S. patent application serial no.
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`60z’205,59l, entitled "Computer Network Malicious Code Run-Time Monitoring,"
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`filed on May 17, 2000 by inventors Nimrod ltzhak Vered, et al., which is hereby
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`incorporated by reference. U.S. patent application serial no. 09786 1 ,229, now
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`U.S. Patent No. 7,058,822, is also a Continuation—In-Part of assignee's U.S. patent
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`application serial no. 09;’539,667, entitled "System and Method for Protecting a
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`Computer and a Network From Hostile Downloadables," filed on March 30, 2000
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`by inventor Shlomo Touboul, now U.S. Patent No. 6,804,780, and hereby
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`incorporated by reference, which is a continuation of assignee's U.S. patent
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`application serial no. 08r’964,388, filed on November 6, 1997 by inventor Shlomo
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`Touboul, now U.S. Patent No. 6,092,194, also entitled "System and Method for
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`Protecting a Computer and a Network from Hostile Downloadables" and hereby
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`incorporated by reference, which application claims the benefit of provisional
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`U.S. application serial no. 60x’030,639, filed November 8, 1996 by inventors
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`Shlomo Touboul, entitled “System and Method For Protecting a Computer From
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`Hostile Downloadables.” U.S. Serial No. 09z’86l,229, now U.S. Patent No.
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`7,058,822, is also a Continuation-In-Part of assignee's U.S. patent application
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`serial no. 0955 l ,302, entitled "System and Method for Protecting a Client During
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`Runtime From Hostile Downloadables,” filed on April 18, 2000 by inventor
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`Shlomo Touboul, now U.S. Patent No. 6,480,962, which is hereby incorporated
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`by reference, which is a continuation of U.S. application serial no. 08f790,097,
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`filed Januagy 29, 1997 by inventor Shlomo Touboul, now U.S. Patent No.
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`Serial No. 13/290,708
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`Docket No. FIN000l-CONI-CIPI-CON4
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`6,167,520, entitled “System and Method For Protecting a Client From Hostile
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`Downloadables” which claims the benefit of U.S. provisional application no.
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`60x’030,639, filed on November 8, 1996 by inventor Shlomo Touboul, entitled
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`“System and Method For Protecting a Computer From Hostile Downloadables.”
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`This amendment has been submitted separately as an Amendment to the Specification under 3'?
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`CFR 1.312 and includes no new matter.
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`In accordance with 3? CFR §1.?8(a)(2)(i),
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`the
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`amendment
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`identifies the prior filed application by application number and indicates the
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`relationship of the applications.
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`Assignee understands that a petition for acceptance of a claim for late priority under 37
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`CFR §l.78(a)(3) is only applicable to those applications filed on or after November 29, 2000 and
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`after the expiration of the period specified in 37 CFR §l.78(a)(2)(ii). Assignee understands that
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`the petition under 37 CPR §1.78(a)(3) must be accompanied by
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`(1) the reference required by 35 U.S.C. §ll9(e), §120 and 3? CFR §1.78(a)(2)(i) of the
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`prior-filed application, unless previously submitted;
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`(2) the surcharge set forth in 3'? CFR §1.]7(t); and
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`(3) a statement that the entire delay between the date the claim was due under 37 CFR
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`§l.78(a)(2)(ii) and the date the claim was filed was unintentional.
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`The correction of the priority claim of the present application is made to complete the
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`priority claim to include a specific reference to prior-filed U.S. Patent Application No.
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`08f790,09'.=', filed January 28, 199?, now U.S. Patent No. 6,16'?',520 which also claims benefit of
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`U.S. Provisional Patent Application No. 60;’030,639, filed November 8, 1996. This request is
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`made after the expiration of the period specified in 37 CFR §1.78(a)(2)(ii).
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`Assignee submits that the entire delay between the date the claim was due under 37 CPR
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`§l.78(a)(2)(ii) and the date the claim was originally filed was unintentional.
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`Payment o1°$l,4l0 fee as required under 37 CFR §l.l7(t) was provided electronically via
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`EFS-Web with the petition filed on October 23, 2012 and no additional fees are believed to be
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`due. The Commissioner is authorized to charge any additional fees determined to be due to
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`Deposit Account No. 50-6099.
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`Serial No. 13/290,708
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`Docket No. FIN00{Il-CONI-CIPI-CON4
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`Assignee submits that this request and the amendment to the specification are diligently
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`made to correct the record of the present application. Granting of this renewed petition and
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`entrance of the Amendment to the Specification are respectfully requested.
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`Respectfully submitted,
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`/Dawn—Marfe Beg — 44,44.3/
`Dawn-Marie Bey
`Reg. No. 44,442
`Attorneys for Assignee
`Finjan, Inc.
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`Date: December 6, 2013
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`By:
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`Bey & Cotropia PLLC
`213 Bayly Court
`Richmond, Virginia 23229
`(w) 804-441-8530
`
`