000001
`
`Symantec 1011
`IPR of U.S. Pat. No. 8,677,494
`
`

`
`Application No. 13/290,708
`
`Page 2
`
`cannot because the non-provisional application was filed more than 12 months after the filing
`date of the provisional application. It appears Application No. 08/790,097, filed January 29,
`1997, claims benefit of Application No. 60/030,639, filed November 8, 1996. Please submit
`another amendment that corrects the priority chain.
`
`37 CFR § l.78(a)(6) requires a statement that the entire delay between the date the claim was due
`under 37 CFR'§ 1.78(a)(5)(ii) and the date the claim was filed was unintentional. Since the
`statementappiearing in the petition varies from the required language, the statement is being
`construed asthe statement required by 37 CFR §1.78(a)(6). If this is not a correct reading of the
`statement appearing in the petition, petitioner should promptlynotify the Office.
`
`Before the petition under 37 CFR §§ 1.78(a)(3) and l.78(a)(6) can be granted, a renewed petition
`and either an Application Data Sheet or a substitute amendment (complying with the provisions
`of 37 CFR_ 1 E121 and 37 CFR 1.76(b)(5)) to correct the above matters are required.
`
`Further correspondence with respect to this matter should be addressed as follows:
`
`By mail:
`
`‘
`‘
`
`‘
`
`'
`
`'
`
`i‘
`"
`
`Mail Stop PETITIONS
`‘ " Commissioner for Patents
`
`By hand:
`
`.
`
`.;
`
`'
`
`_
`
`I
`
`Post Office Box 1450
`
`Alexandria, VA 22313-1450
`
`Customer Service Window
`Mail Stop Petitions
`Randolph Building
`401 Dulany Street
`Alexandria, VA 22314
`
`By fax:
`
`(571) 273-8300
`‘ " ATTN: Office of Petitions
`
`'
`
`By intemet: '
`
`.
`
`‘A
`
`EFS-Web
`www.uspto.gov/ebc/efs_help.htm1
`(for help using EFS-Web call the
`Patent Electronic Business Center
`
`at (866) 217-9197)
`
`Any questions concerning this matter may be directed to the undersigned at (571) 272-3230.
`
`Shirene Willis Brantley
`
`Senior Petitions Attorney
`Office of Petitions.
`4
`
`/%
`
`000002
`
`000002
`
`

`
`FIN0001-CON1-CIP1-CON4
`
`PATENT
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Application of
`
`Yigal Mordechai EDERY, et al.
`
`Group Art Unit: 2431
`
`Serial No.: 13/290,708
`
`Examiner: Christopher A. Revak
`
`Filed: November 7, 2011
`
`For: MALICIOUS MOBILE CODE RUNTIME MONITORING SYSTEM AND METHODS
`
`CORRECTED PETITION TO ACCEPT UNINTENTIONALLY DELAYED CLAIM OF
`
`PRIORITY UNDER 35 U.S.C. §119(e) AND §120 FOR THE BENEFIT OF A PRIOR-
`FILED APPLICATION FILED UNDER 37 CFR§ 1.78(a)(3)
`
`Mail Stop Petition
`Commissioner for Patents
`
`P. O. Box 1450
`
`Alexandria, VA 22313-1450
`
`Sir:
`
`Applicant respectfully submits this corrected petition to the petition filed October 23,
`
`2012 for the acceptance of an unintentionally delayed claim of priority under 35 U.S.C. § 119(e)
`
`and §120 for the benefit of prior-filed applications in the above-referenced patent application. In
`
`conjunction with this Petition, Applicant submits an Amendment to the Specification, and
`
`payment of the required fees.
`
`Applicant understands that a petition for acceptance of a claim for late priority under 37
`
`CFR §1.78(a)(3) is only applicable to those applications filed on or after November 29, 2000 and
`
`after the expiration of the period specified in 37 CFR §1.78(a)(2)(ii). Applicant understands that
`
`the petition under 37 CFR §1.78(a)(3) must be accompanied by (1) the reference required by 35
`
`U.S.C. §l l9(e), §120 and 37 CFR §1.78(a)(2)(i) of the prior-filed application, unless previously
`
`submitted; (2) the surcharge set forth in 37 CFR §1.17(t); and (3) a statement that the entire delay
`
`between the date the claim was due under 37 CFR §1.78(a)(2)(ii) and the date the claim was filed
`
`was unintentional.
`
`000003
`
`000003
`
`

`
`Serial No. 13/290,708
`
`Docket No. FIN0001-CON1-CIP1-CON4
`
`The correction of the priority claim of the present application, filed November 7, 2011, to
`
`include a reference to prior-filed U.S. Patent Application Nos. 09/539,667, filed March 30, 2000,
`
`now U.S. Patent No. 6,804,780 and 60/030,639, filed November 8, 1996,
`
`is made after the
`
`expiration of the period specified in 37 CFR §1.78(a)(2)(ii).
`
`In accordance with 35 U.S.C. §119(e), §120, and 37 CFR §1.78(a)(2)(i), an amendment
`
`to the specification of the present application which adds a reference to prior-filed U.S. Patent
`
`Application Nos. 09/539,667 and 60/030,639 is submitted in conjunction with this Petition. This
`
`amendment has been submitted separately as an Amendment to the Specification and includes no
`
`new matter.
`
`In accordance with 37 CFR §1.78(a)(2)(i), the amendment identifies the prior filed
`
`application by application number and indicates the relationship of the applications.
`
`Applicant submits that the entire delay between the date the claim was due under 37 CFR
`
`§1.78(a)(2)(ii) and the date the claim was filed was unintentional.
`
`No additional fees are believed to be necessary since this document corrects the Petition
`
`originally filed on October 23, 2012, and the payment of the $1,410 fee as required under 37
`
`CFR §1.17(t) was electronically filed via EFS-Web with that submission. The Commissioner is
`
`authorized to charge any underpayment of fees, or to credit any overpayment,
`
`to Deposit
`
`Account No. 50-4402.
`
`Applicant respectfully submits that this request and the amendment to the specification
`
`are diligently made. Granting of this petition is requested.
`
`Date: October 30, 2012
`
`By:
`
`Respectfully submitted,
`
`/Dawn-Marie Bey — 44, 442/
`Dawn-Marie Bey
`Reg. No. 44,442
`
`King & Spalding LLP
`1700 Pennsylvania Avenue, N.W.
`Suite 200
`
`Washington, DC 20006
`(202) 626-8978 (Office)
`(202) 626-3737 (Fax)
`
`15157/105034
`Doc. No. 18339398
`
`000004
`
`000004
`
`

`
`FIN0001 —CONI-CIPI—CON4
`
`PATENT
`
`IN THE UNITED STATES PATENT AND TILADEMARK OFFICE
`
`In re Application of
`
`Yigal Mordechai EDERY, et al.
`
`Group Art Unit: 2431
`
`Serial No.: 13/290,708
`
`Examiner: Christopher A. Revak
`
`Filed: November 7, 2011
`
`Por: MALICIOUS MOBILE CODE RUNTIME MONITORING SYSTEM AND METHODS
`
`PETITION TO ACCEPT UNINTENTIONALLY DELAYED CLAIM 01? PRIORITY
`
`UNDER 35 U.S.C. §119(e) AND §120 FOR THE BENEFIT OF A PRIOR—FILED
`APPLICATION FILED UNDER 37 CFR § 1.78(a)(3)
`
`Mail Stop Petition
`Commissioner for Patents
`
`P. O. Box 1450
`
`Alexandria, VA 22313-1450
`
`Sir:
`
`Applicant respectfully petitions for the acceptance of an unintentionally delayed claim of
`
`priority under 35 USC. § 119(e) and §120 for the benefit of prior-filed applications in the
`
`above-referenced patent application.
`
`In conjunction with this Petition, Applicant submits an
`
`Amendment to the Specification, and payment of the required fees.
`
`Applicant understands that a petition for acceptance of a claim for late priority under 37
`
`CPR §1.78(a)(3) is only applicable to those applications filed on or after November 29, 2000 and
`
`after the expiration of the period specified in 37 CPR §1.78(a)(2)(ii). Applicant understands that
`
`the petition under 37 CPR §l.78(a)(3) must be accompanied by (1) the reference required by 35
`
`U.S.C. §119(e), §120 and 37 CPR §1.78(a)(2)(i) of the prior-filed application, unless previously
`
`submitted; (2) the surcharge set forth in 37 CPR §1.17(t); and (3) a statement that the entire delay
`
`between the date the claim was due under 37 CPR §1.78(a)(2)(ii) and the date the claim was filed
`
`was unintentional.
`
`000005
`
`000005
`
`

`
`Serial No. 13/290,708
`
`Docket No. FIN0001—CON1-CIP1-CON4
`
`The correction of the priority claim of the present application, filed November 7, 2011, to
`
`include a reference to prior-filed U.S. Patent Application Nos. 09/539,667, filed March 30, 2000,
`
`now U.S. Patent No. 6,804,780, 08/964,388, filed November 6, 1997, now U.S. Patent No.
`
`6,092,194, and 60/030,639, filed November 8, 1996, is made after the expiration of the period
`
`specified in 37 CFR §l .78(a)(2)(ii).
`
`In accordance with 35 U.S.C. §1l9(e), §120, and 37 CFR §1.78(a)(2)(i), an amendment
`
`to the specification of the present application which adds a reference to prior—filed U.S. Patent
`
`Application Nos. 09/539,667, 08/964,388, and 60/030,639 is submitted in conjunction with this
`
`Petition. This amendment has been submitted separately as an Amendment to the Specification
`
`and includes no new matter.
`
`In accordance with 37 CFR §l.78(a)(2)(i),
`
`the amendment
`
`identifies the prior filed application by application number and indicates the relationship of the
`
`applications.
`
`Applicant submits that the entire delay between the date the claim was due under 37 CFR
`
`§1.78(a)(2)(ii) and the date the claim was filed was unintentional.
`
`Payment of the $1,410 fee as required under 37 CFR §l.l7(t) is provided electronically
`
`via EFS—Web. The Commissioner is authorized to charge any underpayment of fees, or to credit
`
`any overpayment, to Deposit Account No. 50-4402.
`
`Applicant respectfully submits that this request and the amendment to the specification
`
`are diligently made. Granting of this petition is requested.
`
`Date: October 23, 2012
`
`By:
`
`Respectfully submitted,
`
`/Dawn-Marie Be}; - 44,442/
`Dawn—Marie Bey
`Reg. No. 44,442
`
`King & Spalding LLP
`1700 Pennsylvania Avenue, N.W.
`Suite 200
`
`Washington, DC 20006
`(202) 626-8978 (Office)
`(202) 626-3737 (Fax)
`
`15157/105034
`Doc. No. 18339398
`
`000006
`
`000006
`
`

`
`FIN0001~CON1~CIP1-CON4
`
`PATENT
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Application of
`
`Yigal Mordechai EDERY, et al.
`
`Group Art Unit: 243l
`
`Serial No.: 13/290,708
`
`Examiner: Christopher A. Revak
`
`Filed: November 7, 2011
`
`For: MALICIOUS MOBILE CODE RUNTIME MONITORING SYSTEM AND
`METHOFDS
`
`AMENDMENT TO THE SPECIFICATION
`
`Commissioner for Patents
`
`P. O. Box 1450
`
`Alexandria, VA 22313-1450
`
`Sir:
`
`In conjunction with a Petition to Accept Unintentionally Delayed Claim of Priority Under
`
`35 U.S.C. §l l9(e) and § 120 for the Benefit of a Prior-Filed Application Filed Under 37 C.F.R. §
`
`l.78(a)(3),
`
`entry of the amendments and consideration of the remarks submitted herein is
`
`respectfully requested.
`
`Amendments to the Specification begin on page 2 of this paper
`
`Remarks begin on page 4 of this paper
`
`000007
`
`000007
`
`

`
`Serial No. 13/290,708
`
`Docket No. FIN0001—CON1-CIPI-CON4
`
`Amendments to the Specification
`
`Please replace Paragraph [0001] with the following amended paragraph:
`
`[0001] This application is a continuation of assignee's pending US. patent application serial no.
`
`12/471,942, filed May 26, 2009 by inventors Yigal Mordechai Edery, et al., now US. Patent No.
`
`8,079,086, entitled "Malicious Mobile Code Runtime Monitoring System and Methods," which
`
`is a continuation of assignee's US. patent application serial no. 11/370,114, filed March 7, 2006
`
`by inventors Yigal Mordechai Edery, et al., now U.S. Patent No. 7,613,926, entitled "Method
`
`and System for Protecting a Computer and a Network from Hostile Downloadables," which is a
`
`continuation of assignee's US. patent application serial no. 09/861,229, filed on May 17, 2001
`
`by inventors Yigal Mordechai Edery, et al., now U.S. Patent No. 7,05 8,822, entitled "Malicious
`
`Mobile Code Runtime Monitoring System And Methods,” all of which are hereby incorporated
`
`by reference. US. patent application serial no. 09/861 ,229, now U.S. Patent No. 7,058,822,
`
`claims benefit of provisional US. patent application serial no. 60/205,591, entitled ”Computer
`
`Network Malicious Code Run—Time Monitoring," filed on May 17, 2000 by inventors Nimrod
`
`Itzhak Vered, et al., which is hereby incorporated by reference. US. patent application serial no.
`
`09/861,229, now US. Patent No. 7,058,822, is also a Continuation—ln—Part of assignee's US.
`
`patent application serial no. 09/539,667, entitled ”System and Method for Protecting a Computer
`
`and a Network From Hostile Downloadables,” filed on March 30, 2000 by inventor Shlomo
`
`Touboul, now U.S. Patent No. 6,804,780, and hereby incorporated by reference, which is a
`
`continuation of assignee's U.S. patent application serial no. 08/964,388, filed on November 6,
`
`1997 by inventor Shlomo Touboul, now US. Patent No. 6,092,194, also entitled "System and
`
`Method for Protecting a Computer and a Network from Hostile Downloadables" and hereby
`
`incorporated by reference, which application claims the benefit of provisional US. application
`
`serial no. 60/030,639, filed November 8, 1996 by inventors Shlomo Touboul, entitled “System
`
`and Method For Protecting a Computer From Hostile Downloadables.” U.S. Serial No.
`
`09/861 ,229, now US Patent No. 7,058,822, is also a Continuation—In—Part of assignee's US.
`
`patent application serial no. 09/551,302, entitled "System and Method for Protecting a Client
`
`During Runtime From Hostile Downloadables,” filed on April 18, 2000 by inventor Shlomo
`
`Touboul, now U.S. Patent No. 6,480,962, which is hereby incorporated by reference, which
`
`000008
`
`000008
`
`

`
`Serial No. 13/290,708
`
`Docket No. FIN0001-CONI-CIPI-CON4
`
`claims the benefit of U.S. provisional application no. 60/030,639, filed on November 8, 1996 by
`
`inventor Shlomo Touboul, entitled “System and Method For Protecting a Computer From
`
`Hostile Downloadables,” and is a continuation of U.S. application serial no. 08/790,097, filed
`
`January 29, 1997 by inventor Shlomo Touboul, now U.S. Patent No. 6,167,520, entitled “System
`
`and Method For Protecting a Client From Hostile Downloadables.”
`
`000009
`
`000009
`
`

`
`Serial No. 13/290,708
`
`Docket No. FIN0001—CON1—CIP1—CON4
`
`Remarks
`
`Applicant respectfully requests entry of the amendment to the specification of U.S. Patent
`
`Application No. 13/290,708 in conjunction with the Petition to Accept Unintentionally Delayed
`
`Claim of Priority Under 35 U.S.C. § 119(6) and § 120 for the Benefit of a Prior—Filed Application
`
`Filed Under 37 C.F.R. § l.78(a)(3) filed herewith. The amendment introduces no new matter and
`
`corrects the priority claim of the application. Applicant notes that U.S. Patent Application Nos.
`
`09/539,667, 08/964,388, and 60/030,639 and the present invention share the inventor Shlomo
`
`Touboul.
`
`Applicant respectfully notes that this submission is part of the procedural requirements
`
`involved in petitioning to correct an unintentionally delayed priority claim and is not to be
`
`construed as Applicant’s response to the Non—Final Office Action mailed July 23, 2012.
`
`No fees are believed due with this submission. However, in the event fees are due, the
`
`Commissioner is authorized to charge any underpayment of fees, or to credit any overpayment,
`
`to Deposit Account No. 50-4402.
`
`Date: October 23, 2012
`
`By:
`
`Respectfully submitted,
`
`/Dawn-Marie Bey - 44,442/
`Dawn—Ma;rie Bey
`Reg. No. 44,442
`
`King & Spalding LLP
`1700 Pennsylvania Avenue, NW.
`Suite 200
`
`Washington, DC 20006
`(202) 626-8978 (Office)
`(202) 626-3737 (Fax)
`
`15157/105034
`Doc. No. 19720357
`
`000010
`
`000010
`
`

`
`Attorney's Docket No.: FINOO01—CON1~CIP1-CON4
`
`PATENT
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In Re Patent Application of:
`
`Yigal Mordechai Edery
`Nimrod Itzhak Vered
`
`David R. Kroll
`
`Shlomo Touboul
`
`Application No: 13/290,708
`
`Examiner: Christopher A. Revak
`
`Art Unit:
`
`2431
`
`HOSTILE DOWNLOADABLES‘~../\2\/\/\/\/\/‘»/\/\./‘~../\u/\}‘~—/\)‘§/
`
`November 7, 2011
`
`METHOD AND SYSTEM FOR
`
`PROTECTING A COMPUTER
`
`AND A NETWORK FROM
`
`Filed:
`
`For:
`
`Mail Stop AMENDMENT
`Commissioner for Patents
`
`P. O. Box 1450
`
`Alexandria, VA 22313-1450
`
`AMENDMENT AND RESPONSE TO OFFICE ACTION
`
`UNDER 37 C.F.R. §1.111
`
`In response to the Office Action dated July 23, 2012 and
`
`pursuant to 37 C.F.R. §1.111 (the “Office Action”), applicants respectfully
`
`request that the above~identified application be amended as follows.
`
`Atty. Docket No. FINOO01—CON1—CIP1—CON4
`
`-1-
`
`OOOO1 1
`
`000011
`
`

`
`IN THE CLAIMS:
`
`Please substitute the following claims for the pending
`
`claims with the same number:
`
`1. (original)
`
`A computer—based method, comprising the steps of:
`
`receiving an incoming Downloadable;
`
`deriving security profile data for the Downloadable, including a
`
`list of suspicious computer operations that may be attempted by the
`
`Downloadable; and
`
`storing the Downloadable security profile data in a database.
`
`2. (original)
`
`The computer—based method of claim 1 further
`
`comprising storing a date & time when the Downloadable security profile
`
`data was derived, in the database.
`
`3. (original)
`
`The computer—based method of claim 1 wherein the
`
`Downloadable includes an applet.
`
`4. (original)
`
`The computer—based method of claim 1 wherein the
`
`Downloadable includes an active control.
`
`5. (original)
`
`The computer—based method of claim 1 wherein the
`
`Downloadable includes program script.
`
`6. (original)
`
`The computer—based method of claim 1 wherein
`
`suspicious computer operations include calls made to an operating
`
`system, a file system, a network system, and to memory.
`
`Atty. Docket No. FIN0001-CON1-CIP1-CON4
`
`-2-
`
`000012
`
`000012
`
`

`
`7. (original)
`
`The computer-based method of claim 1 wherein the
`
`Downloadable security profile data includes a URL from where the
`
`Downloadable originated.
`
`8. (original)
`
`The computer-based method of claim 1 wherein the
`
`Downloadable security profile data includes a digital certificate.
`
`9. (original)
`
`The computer-based method of claim 1 wherein said
`
`deriving Downloadable security profile data comprises disassembling the
`
`incoming Downloadable.
`
`10. (original)
`
`A system for managing Downloadables, comprising:
`
`a receiver for receiving an incoming Downloadable;
`
`a Downloadable scanner coupled with said receiver, for deriving
`
`security profile data for the Downloadable, including a list of suspicious
`
`computer operations that may be attempted by the Downloadable; and
`
`a database manager coupled with said Downloadable scanner,
`
`for storing the Downloadable security profile data in a database.
`
`11. (original)
`
`The system of claim 86 wherein said database
`
`manager also stores a date & time when the Downloadable security
`
`profile data was derived by said Downloadable scanner, in the database.
`
`12. (original)
`
`The system of claim 86 wherein the Downloadable
`
`includes an applet.
`
`13. (original)
`
`The system of claim 86 wherein the Downloadable
`
`includes an active control.
`
`Atty. Docket No. FIN0001-CON1—CIP1-CON4
`
`-3-
`
`000013
`
`000013
`
`

`
`14. (original)
`
`The system of claim 86 wherein the Downloadable
`
`includes program script.
`
`15. (original)
`
`The system of claim 86 wherein suspicious computer
`
`operations include calls made to an operating system, a file system, a
`
`network system, and to memory.
`
`16. (original)
`
`The system of claim 86 wherein the Downloadable
`
`security profile data includes a URL from where the Downloadable
`
`originated.
`
`17. (original)
`
`The system of claim 86 wherein the Downloadable
`
`security profile data includes a digital certificate.
`
`18. (original)
`
`The system of claim 86 wherein said Downloadable
`
`scanner comprises a disassembler for disassembling the incoming
`
`Downloadable.
`
`Atty. Docket NO. FIN0001-CON1—CIP1*CON4
`
`—4—
`
`000014
`
`000014
`
`

`
`REMARKS
`
`Applicants’
`
`representative has carefully studied the
`
`outstanding Office Action. The present amendment is intended to place
`
`the application in condition for allowance and is believed to overcome all
`
`of the objections and rejections made by the Office Action. Favorable
`
`reconsideration and
`
`allowance
`
`of
`
`the
`
`application
`
`are
`
`respectfully
`
`requested.
`
`Specification
`
`At paragraph 2, the Office Action has objected to the
`
`specification because of a formality. The specification has been requested
`
`to
`
`be
`
`amended
`
`in
`
`accordance with
`
`co—filed
`
`Petition
`
`to Accept
`
`Unintentionally Delayed Claim of Priority and Amendment:
`
`[0001] This application is a continuation of assignee's pending U.S. patent application serial
`no. 12/471,942, filed May 26, 2009 by inventors Yigal Mordechai Edery, et al., now U.S.
`Patent No. 8,079,086, entitled "Malicious Mobile Code Runtime Monitoring System and
`Methods," which is a continuation of assignee's U.S. patent application serial no. 11/370,114,
`filed March 7, 2006 by inventors Yigal Mordechai Edery, et al., now U.S. Patent No.
`7,613,926, entitled "Method and System for Protecting a Computer and a Network from
`Hostile Downloadables," which is a continuation of assignee's U.S. patent application serial
`no. 09/861,229, filed on May 17, 2001 by inventors Yigal Mordechai Edery, et al., now U.S.
`Patent No. 7,058,822, entitled "Malicious Mobile Code Runtime Monitoring System And
`Methods," all of which are hereby incorporated by reference. U.S. patent application serial
`no. 09/861,229, now U.S. Patent No. 7,058,822, claims benefit of provisional U.S. patent
`application serial no. 60/205,591, entitled "Computer Network Malicious Code Run-Time
`Monitoring," filed on May 17, 2000 by inventors Nimrod Itzhak Vered, et al., which is hereby
`incorporated by reference. U.S. patent application serial no. 09/861,229, now U.S. Patent No.
`7,058,822, is also a Continuation—In—Part of assignee's U.S. patent application serial no.
`09/539,667, entitled "System and Method for Protecting a Computer and a Network From
`Hostile Downloadables," filed on March 30, 2000 by inventor Shlomo Touboul, now U.S.
`Patent No. 6,804,780, and hereby incorporated by reference, which is a continuation of
`assignee's U.S. patent application serial no. 08/964,388, filed on November 6, 1997 by
`inventor Shlomo Touboul, now U.S. Patent No. 6,092,194, also entitled "System and Method
`for Protecting a Computer and a Network from Hostile Downloadables" and hereby
`incorporated by reference, which application claims the benefit of provisional U.S. application
`serial no. 60/030,639, filed November 8, 1996 by inventors Shlomo Touboul, entitled “System
`and Method For Protecting a Computer From Hostile Downloadables.” U.S. Serial No.
`09/861,229, now U.S. Patent No. 7,058,822, is also a Continuation-In-Part of assignee's U.S.
`patent application serial no. 09/551,302, entitled "System and Method for Protecting a Client
`During Runtime From Hostile Downloadables,” filed on April 18, 2000 by inventor Shlomo
`Touboul, now U.S. Patent No. 6,480,962, which is hereby incorporated by reference, which
`
`Atty. Docket No. FIN0001-CON1~CIP1-CON4
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`claims the benefit of US. provisional application no. 60/030,639, filed on November 8, 1996
`by inventor Shlomo Touboul, entitled “System and Method For Protecting a Computer From
`Hostile Downloadables,” and is a continuation of U.S. application serial no. 08/790,097, filed
`January 29, 1997 by inventor Shlomo Touboul, now US. Patent No. 6,167,520, entitled
`“System and Method For Protecting a Client From Hostile Downloadables.”
`
`Double Patenting
`
`At paragraphs 3 — 12, the Office Action has rejected the
`
`claims on the ground of non—statutory obviousness-type double patenting
`
`in view of nine patents.
`
`Applicants do not admit that the claims of the subject
`
`application are obvious over all of the nine patents. However, in order to
`
`expedite prosecution, applicants are submitting nine respective terminal
`
`disclaimers.
`
`Claim Rejections — 35 USC §102
`
`At paragraphs 13 and 14, the Office Action has rejected
`
`claims 1 — 18 under 35 U.S.C. 102(e) as being anticipated by Ji, U.S.
`
`Patent No. 5,983,348 (“Ji").
`
`On October 23, 2012, applicants filed a Petition for
`
`Delayed Claim of Priority to, inter alia, U.S. Provisional Application No.
`
`60/030,639.
`
`Ji
`
`is not prior art because Ji has a priority date of
`
`September 10, 1997, whereas the claimed invention is supported in the
`
`priority document U.S. Provisional Application No. 60/030,639 of
`
`November 8, 1996, which pre—dates Ji. Moreover, Ji itself references the
`
`claimed invention at col. 1, line 64 — col. 2, line 42.
`
`In Paragraph 2 of the June 2011 Office Action for the
`
`parent application, U.S. Serial No. 12/471,942, the Examiner requested a
`
`specific showing of support
`
`for the claimed invention in the priority
`
`document, U.S. Provisional Serial No. 60/030,639 filed on November 8,
`
`Atty. Docket No. FIN0001—CON1-CIP1~CON4
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`1996,
`
`in order to overcome the prior art of Ji. Applicants provided
`
`arguments establishing support in the Preliminary Amendment filed for
`
`the subject application on November 7, 2011. Applicants’ arguments are
`
`reproduced here for ease of reference.
`
`Support for the Claimed Invention in Touboul, U.S. Provisional
`
`Patent Application No. 601030.639 (“Touboul”)
`
`Claim 1 is supported in Touboul at least by page 8, lines
`
`14 — 19: “Security database 240 stores Down/oadab/e Security Profiles
`
`(DSPS)
`
`in a third data storage device 230 portion”; by page 15, lines 2
`
`and 3: “... code scanner 325, which in step 650 decomposes the received
`
`Downloadable into DSP data
`
`Claim 3 is supported in Touboul at least by page 2, line
`
`4: “Examples of Down/oadab/es include applets designed for use in the
`
`Java” distributing environment produced by Sun Microsystems
`
`Claim 4 is supported in Touboul at least by page 2, lines
`
`4 —— 7: “Examples of Down/oadab/es include applets designed for use
`
`in
`
`the Active X distributing environment produced by Microsoft Corporation.”
`
`Claim 6 is supported in Touboul at least by page 9, lines
`
`9 — 13: “DSP data 310 may include READS, WRITEs, file management
`
`operations,
`
`system management operations, memory management
`
`operations and CPU allocation operations;” and by page 16, lines 3 -— 8:
`
`“Code scanner 325 in step 720 decodes and registers the command and
`
`the command parameters as DSP data. Code scanner 325 in step 720
`
`registers command and command parameters into a format based on
`
`command class, e.g., file system class, network system class, memory
`
`system class and CPU system class.”
`
`Atty. Docket No. FIN0001-CON1-CIP1-CON4
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`Claim 9 is supported in Touboul at least by page 15, line
`
`15 — page 16, line 4: “FIG. 7 is a flowchart illustrating details of method
`
`650 for decomposing a Downloadable. Method 650 begins in step 705
`
`with
`
`code
`
`scanner 325 disassembling the machine
`
`code of
`
`the
`
`Downloadable.
`
`Code scanner 325 in step 710 resolves a respective
`
`command in
`
`the machine code.
`
`Code scanner 325 in step 715
`
`determines whether the resolved command is a suspect command
`
`code
`
`scanner 325 in step 720 decodes and registers the command and the
`
`command parameters as DSP data
`
`Claim 10 is supported in Touboul at least by page 8,
`
`lines 14 —~ 19: “Security database 240 stores
`
`Downloadable Security
`
`Profiles (DSPs)
`
`in a third data storage device 230 portion"; by page 10,
`
`lines 16 — 19: “Code scanner 325 receives unknown Down/oadab/es from
`
`first comparator 320 and uses conventional parsing techniques to
`
`decompose the byte code of the unknown Downloadable into DSP data;”
`
`and by page 11, lines 13 — 16: “... if second comparator 330 received the
`
`non—hostile Downloadable
`
`from
`
`code
`
`scanner 325,
`
`then
`
`its
`
`corresponding DSP data is stored in DSP data 310.”
`
`Claim 12 is supported in Touboul at least by page 2,
`
`line 4: “Examples of Down/oadab/es include applets designed for use in
`
`the Javam distributing environment produced by Sun Microsystems
`
`Claim 13 is supported in Touboul at least by page 2,
`
`lines 4 — 7: “Examples of Down/oadab/es include applets designed for use
`
`in the Active X distributing environment produced by Microsoft
`
`Corporation."
`
`Claim 15 is supported in Touboul at least by page 9,
`
`lines 9 —
`
`13: “DSP data 310
`
`may include READS, WRITEs,
`
`file
`
`management operations,
`
`system management operations, memory
`
`Atty. Docket No. FIN0001-CON1-CIP1-CON4
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`management operations and CPU allocation operations;” and by page 16,
`
`lines 3 — 8: “Code scanner 325 in step 720 decodes and registers the
`
`command and the command parameters as DSP data. Code scanner 325
`
`in step 720 registers command and command parameters into a format
`
`based on command class, e.g., file system class, network system class,
`
`memory system class and CPU system c/ass.”
`
`Claim 18 is supported in Touboul at least by page 15,
`
`line 15, lines 2 and 3: “... code scanner 325
`
`decomposes the received
`
`Down/oadab/e into DSP data
`
`For the foregoing reasons, applicants respectfully submit
`
`that the applicable objections and rejections have been overcome and
`
`that the claims are in condition for allowance.
`
`Respectfully submitted,
`
`Date: October 23, 2012
`
`By:
`
`[Dawn—Marie Bey - 44,4421
`
`King & Spalding LLP
`1700 Pennsylvania Avenue, N.W.
`Suite 200
`
`Dawn-Marie Bey
`Reg. No. 44,442
`
`Washington, DC 20006
`
`(202) 626-8978 (Office)
`
`(202) 626-3737 (Fax)
`
`Atty. Docket No. FIN0001-CON1-CIP1-CON4
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`-9-
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.goV
`
`APPLICATION NO.
`
`F ING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONF {MATION NO.
`
`13/290,708
`
`11/07/2011
`
`Yigal Mordechai Edery
`
`FIN0001—CON1—CIP1—CON4
`
`4120
`
`King and Spa1dingLLP —
`759°
`1700 Pennsylvania Ave, NW
`REVAK, CHRISTOPHER A
`Suite 200
`ART UNIT
`PAPER NUMBER
`Washington, DC 20006 “2431
`
`07/23/2012
`
`ELECTRONIC
`
`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.
`
`Notice of the Office communication was sent electronically on aboVe—indicated "Notification Date" to the
`following e—mail address(es):
`
`dbey @ KSLaw.c0m
`jpaolella-bald @ kslaW.c0m
`
`Q&QG&QReV. 04/07)
`
`000020
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`
`Office Action Summary
`
`Application No.
`
`App|icant(s)
`
`13/290,708
`
`EDERY ET AL.
`
`Examiner
`CHRBTOPHERREVAK
`
`A“ Unit
`24m
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE § MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR1.136(a).
`In no event, however, may a reply be timely filed
`after SIX (6) MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`—
`— Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1)IXl Responsive to communication(s) filed on 07 November 2011.
`
`2a)I:I This action is FINAL.
`
`2b)IXl This action is non—final.
`
`3)I:l An election was made by the applicant in response to a restriction requirement set forth during the interview on
`
`; the restriction requirement and election have been incorporated into this action.
`
`4)I:l Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims
`
`5)IZl Claim(s)1-_12is/are pending in the application.
`
`5a) Of the above claim(s) j is/are withdrawn from consideration.
`
`6)I:l Claim(s) j is/are allowed.
`
`7)|Zl Claim(s)1-_12is/are rejected.
`
`8)I:l Claim(s) j is/are objected to.
`
`9)I:l Claim(s) j are subject to restriction and/or election requirement.
`
`Application Papers
`
`10)IZI The specification is objected to by the Examiner.
`
`11)|Z| The drawing(s) filed on 11/7/11 is/are: a)IZl accepted or b)I:I objected to by the Examiner.
`
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`12)I:I The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
`
`Priority under 35 U.S.C. § 119
`
`13)I:| Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`
`a)|:I All
`
`b)I:l Some * c)I:I None of:
`
`1.|:I Certified copies of the priority documents have been received.
`
`2.|:I Certified copies of the priority documents have been received in Application No. _.
`
`3.|:I Copies of the certified copies of the priority documents have been received in this National Stage
`
`application from the International Bureau (PCT Rule 17.2(a)).
`
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1) IX] Notice of References Cited (PTO-892)
`2) D Notice of Draftsperson‘s Patent Drawing Review (PTO-948)
`3) IX] Information Disclosure Statement(s) (PTO/SB/08)
`
`Paper No(s)/Mail Date 11/7/11'2/16/12.
`U.S. Patent and Trademark Office
`
`4) El Interview Summary (PTO-413)
`Paper N°(5)/II/Ia" DaTe- E
`5) I:I Notice of informal Patent Application
`6) D Other:
`.
`
`PTOL-326 (Rev. 03-11)
`000021
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`Office Action Summary
`
`Part of Paper No./Mail Date 20120714
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`000021
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`Application/Control Number: 13/290,708
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`Page 2
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`Art Unit: