UNITED STA 1ES p A 1ENT 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.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`90/013,016
`
`10/07/2013
`
`7647633
`
`382984-000006
`
`9521
`
`11119/2013
`7590
`115222
`Bey & Cotropia PLLC (Fin jan Inc.)
`213 Bayly Court
`Richmond, VA 23229
`
`EXAMINER
`
`BASEHOAR, ADAM L
`
`ART UNIT
`
`PAPER NUMBER
`
`3992
`
`MAIL DATE
`
`DELIVERY MODE
`
`11/19/2013
`
`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)
`
`Blue Coat Systems - Exhibit 1027 Page 1
`
`

`
`Commissioner for Patents
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-·1450
`W"aAA"I.IJ:.'=ptO.QOV
`
`DO NOT USE IN PALM PRINTER
`
`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
`
`RYAN W. COBB, DLA PIPER LLP (US)
`
`401 B STREET
`
`SUITE 1700
`
`SAN DIEGO, CA 92101
`
`EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO. 90/013,016.
`
`PATENT NO. 7647633.
`
`ART UNIT 3992.
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the above identified ex parte reexamination proceeding (37 CFR 1 .550(f)).
`
`Where this copy is supplied after the reply by requester, 37 CFR 1.535, or the time for filing a
`reply has passed, no submission on behalf of the ex parte reexamination requester will be
`acknowledged or considered (37 CFR 1.550(g)).
`
`PTOL-465 (Rev.0?-04)
`
`Blue Coat Systems - Exhibit 1027 Page 2
`
`

`
`Office Action in Ex Parte Reexamination
`
`Control No.
`90/013,016
`
`Examiner
`ADAM BASEHOAR
`
`Patent Under Reexamination
`7647633
`
`Art Unit
`
`3992
`
`AlA (First Inventor to
`File) Status
`No
`
`-- The MAILING DATE of this communication appears on the cover sheet with the correspondence address -(cid:173)
`
`a.[8J Responsive to the communication(s) filed on 10/07/2013 and 1012212013.
`D A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on __ .
`
`b. D This action is made FINAL.
`
`c. [8J A statement under 37 CFR 1.530 has not been received from the patent owner.
`
`A shortened statutory period for response to this action is set to expire?. month(s) from the mailing date of this letter.
`Failure to respond within the period for response will result in termination of the proceeding and issuance of an ex parte reexamination
`certificate in accordance with this action. 37 CFR 1.550(d). EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.550(c).
`If the period for response specified above is less than thirty (30) days, a response within the statutory minimum of thirty (30) days
`will be considered timely.
`
`Part I
`
`1.
`
`2.
`
`THE FOLLOWING ATTACHMENT(S) ARE PART OF THIS ACTION:
`D Notice of References Cited by Examiner, PT0-892.
`D Interview Summary, PT0-474.
`D Information Disclosure Statement, PTO/SB/08.
`D
`
`3.
`
`4.
`
`Part II SUMMARY OF ACTION
`
`1 a.
`
`[8J Claims 1-7 and 28-33 are subject to reexamination.
`
`1 b.
`[8J Claims 8-27 and 34-41 are not subject to reexamination.
`2. D Claims __ have been canceled in the present reexamination proceeding.
`3. D Claims __ are patentable and/or confirmed.
`4.
`[8J Claims 1-7 and 28-33 are rejected.
`5. D Claims __ are objected to.
`6. D The drawings, filed on __ are acceptable.
`7. D The proposed drawing correction, filed on __ has been (7a) D approved (7b)0 disapproved.
`8. D Acknowledgment is made of the priority claim under 35 U.S.C. § 119(a)-(d) or (f).
`a) D All b) D Some* c) D None
`of the certified copies have
`1 D been received.
`2 D not been received.
`3 D been filed in Application No. __ .
`4 D been filed in reexamination Control No. __
`5 D been received by the International Bureau in PCT application No. __ .
`* See the attached detailed Office action for a list of the certified copies not received.
`9. D Since the proceeding appears to be in condition for issuance of an ex parte reexamination certificate except for formal
`matters, prosecution as to the merits is closed in accordance with the practice under Ex parte Quayle, 1935 C. D.
`11, 453 O.G. 213.
`1 0. D Other: __
`
`cc: Requester (if third party requester)
`U.S. Patent and Trademark Off1ce
`PTOL-466 (Rev. 08-13)
`
`Office Action in Ex Parte Reexamination
`
`Part of Paper No. 20131 025
`
`Blue Coat Systems - Exhibit 1027 Page 3
`
`

`
`Application/Control Number: 90/013,016
`Art Unit: 3992
`
`Page 2
`
`The present application is being examined under the pre-AlA first to invent provisions.
`
`DETAILED ACTION
`
`1.
`
`This Office action addresses claims 1-7 and 28-33 of United States Patent Number
`
`7,647,633 B2 (Edery et al), for which it has been determined in the Order Granting Ex Parte
`
`Reexamination (hereafter the "Order") mailed concurrently with this Office Action, that a
`
`substantial new question of patentability was raised in the Request for Ex Parte reexamination
`
`filed on 10/07/2013 (hereafter the "Request"). Claims 8-27 and 34-41 of the Edery '633 patent
`
`are not subject to reexamination. This is a Non-Final Action.
`
`Reexamination
`
`2.
`
`The patent owner is reminded of the continuing responsibility under 37 CPR 1.565(a) to
`
`apprise the Office of any litigation activity, or other prior or concurrent proceeding, involving
`
`Patent No. 7,647,633 B2 throughout the course of this reexamination proceeding. The third
`
`party requester is also reminded of the ability to similarly apprise the Office of any such activity
`
`or proceeding throughout the course of this reexamination proceeding. See MPEP § § 2207, 2282
`
`and 2286.
`
`3.
`
`Extensions of time under 37 CPR 1.136(a) will not be permitted in these proceedings
`
`because the provisions of 37 CPR 1.136 apply only to "an applicant" and not to parties in a
`
`reexamination proceeding. Additionally, 35 U.S.C. 305 requires that reexamination proceedings
`
`Blue Coat Systems - Exhibit 1027 Page 4
`
`

`
`Application/Control Number: 90/013,016
`Art Unit: 3992
`
`Page 3
`
`"will be conducted with special dispatch" (37 CPR 1.550(a)). Extension of time in ex parte
`
`reexamination proceedings are provided for in 37 CPR 1.550(c).
`
`4.
`
`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 a final
`
`action, will be governed by the requirements of 37 CPR 1.116, after final rejection and 37 CPR
`
`41.33 after appeal, which will be strictly enforced.
`
`References Submitted by Requester
`
`5.
`
`The following three references have been cited as establishing a substantial new question
`
`of patentability. See Order, mailed concurrently with this Non-Final Action.
`
`• Ji- (U.S. Patent No. 5,983,348, filed 0911011997, published 11/0911999)
`
`• Liu- (U.S. Patent No. 6,058,482, filed 05/2211998, published 05/02/2000)
`
`• Golan- (U.S. Patent No. 5,974,549, filed 03/2711997, published 10/2611999)
`
`Priority Determination
`
`6.
`
`For purposes of this reexamination, as described in more detail in the Order (see: Order,
`
`pp. 6-8), claims 1-7 and 28-33 of the Edery '633 patent are considered to have the following
`
`effective filing dates:
`
`Blue Coat Systems - Exhibit 1027 Page 5
`
`

`
`Application/Control Number: 90/013,016
`Art Unit: 3992
`
`Page 4
`
`a. Claims 1-3 and 28-33 are considered to have an effective filing date of 05/17/2000, the
`
`filing date of the 60/205,591 provisional application.
`
`b. Claims 4-7 are considered to have an effective filing date of 05/17/2001, the filing date of
`
`the parent 09/861,229 continuation application.
`
`Claim Rejections
`
`7.
`
`The rejections below are confined to what has been deemed to be the best available art
`
`from the Request. However, prior to conclusion of this reexamination proceeding, claims must
`
`be patentable over all prior art cited in the Order granting reexamination in order to be
`
`considered patentable or confirmed on the reexamination certificate. Certain combinations of the
`
`references cited in the Request but not utilized in the current Office Action appear to be largely
`
`cumulative to the teachings in the references as applied below.
`
`Claim Rejections- 35 USC§ 102
`
`8.
`
`The following is a quotation of the appropriate paragraphs of pre-AlA 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
`
`Blue Coat Systems - Exhibit 1027 Page 6
`
`

`
`Application/Control Number: 90/013,016
`Art Unit: 3992
`
`Page 5
`
`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.
`
`9.
`
`Claims 1-3 and 28-33 are rejected under pre-AlA 35 U.S.C. 102(e) as being anticipated
`
`by Ji (U.S. Patent No. 5,983,348, filed 0911011997, published 11/0911999).
`
`-Regarding claims 1-3 and 28-33, Ji teaches each and every limitation of the claims (see
`
`the claim charts on pages 14-16 and 19-26 of the Request, which are hereby incorporated by
`
`reference).
`
`10.
`
`Claims 4-7 are rejected under pre-AlA 35 U.S.C. 102(b) as being anticipated by Ji (U.S.
`
`Patent No. 5,983,348, filed 0911011997, published 11/0911999).
`
`-Regarding claims 4-7, Ji teaches each and every limitation of the claims (see the claim
`
`charts on pages 16-19 of the Request, which are hereby incorporated by reference).
`
`11.
`
`Claims 1-3 are rejected under pre-AlA 35 U.S.C. 102(e) as being anticipated by Liu
`
`(U.S. Patent No. 6,058,482, filed 05/2211998, published 05/02/2000).
`
`-In regard to independent claim 1, Liu teaches a computer processor-based method,
`
`compnsmg:
`
`receiving, by a computer, downloadable-information (Liu, column 4, line 64-column 5,
`
`line 2: "request for network information ... is received by the remote server 110 "; column 8, lines
`
`8-15: "typically through remote server 110, the method determines whether the requested web
`
`page has ... one or more Java applet tags or other keywords designed to invoke or call executable
`
`code")(Fig. 3: 205 & 210);
`
`Blue Coat Systems - Exhibit 1027 Page 7
`
`

`
`Application/Control Number: 90/013,016
`Art Unit: 3992
`
`Page 6
`
`determining, by the computer, whether the downloadable-information includes
`
`executable code (Liu, column 4, line 66-column 5, line 16: "remote server 110 then determines
`
`whether the requested network information should have ... invoke executable code"; column 6,
`
`lines 14-40; column 8, lines 8-15: "typically through remote server 110, the method determines
`
`whether the requested web page has ... one or more Java applet tags or other keywords designed
`
`to invoke or call executable code" ; column 9, lines 39-60: "providing additional security
`
`functionality for executable code which may be downloaded .. .for any and all types of
`
`downloadable, executable code ")(Fig. 3: 21 0); and
`
`based upon the determination, transmitting from the computer mobile protection code to
`
`at least one information-destination of the downloadable-information, if the downloadable-
`
`information is determined to include executable code (Liu, column 5, lines 2-16: "When the
`
`network information should have such keywords ... the remote server 110 then generates the
`
`requested network information with each included keyword having a distinctive reference ... and
`
`transmits the network information to the local end system"; column 8, lines 16-37: "generates an
`
`applet tag having a new, distinctive or unique class name as the reference attribute ... generates
`
`and provides the requested web page with all of its applet tags having their respective new,
`
`distinct (or unique) class names"; column 9, line 63-column 10, line 24)(Fig. 3: 220 & 235).
`
`-In regard to dependent claim 2, Liu teaches wherein the receiving includes monitoring
`
`received information of an information re-communicator (Liu, column 4, line 51-column 5, line
`
`2: "remote server 11 O")(Fig. 1: 65 & 11 0).
`
`Blue Coat Systems - Exhibit 1027 Page 8
`
`

`
`Application/Control Number: 90/013,016
`Art Unit: 3992
`
`Page 7
`
`-In regard to dependent claim 3, Liu teaches wherein the information re-communicator
`
`is a network server (Liu, column 4, line 51-column 5, line 2: "remote server 110 is typically part
`
`of a remote server system").
`
`12.
`
`Claims 4 and 7 are rejected under pre-AlA 35 U.S.C. 102(b) as being anticipated by Liu
`
`(U.S. Patent No. 6,058,482, filed 05/2211998, published 05/02/2000).
`
`-In regard to dependent claim 4, Liu teaches wherein the determining comprises
`
`analyzing the downloadable-information for an included type indicator indicating an executable
`
`file type (Liu, column 4, line 65-column 5, line 4: "determines whether the requested network
`
`information should have one or more keywords ... to invoke executable code"; column 6, lines 19-
`
`57: "web page may include special or designated keywords which are designed to invoice, call
`
`or specify a network programming language ... an "applet" tag ... an object tag"; column 9, lines
`
`39-60: "context for any and all types of downloadable, executable code").
`
`-In regard to dependent claim 7, Liu teaches further comprising receiving, by the
`
`computer, one or more executable code characteristics of executable code that is capable of
`
`being executed by the information-destination, and wherein the determining is conducted in
`
`accordance with the executable code characteristics (Liu, column 4, line 65-column 5, line 4:
`
`"determines whether the requested network information should have one or more keywords ... to
`
`invoke executable code"; column 6, lines 19-57: "web page may include special or designated
`
`keywords which are designed to invoice, call or specify a network programming language ... an
`
`Blue Coat Systems - Exhibit 1027 Page 9
`
`

`
`Application/Control Number: 90/013,016
`Art Unit: 3992
`
`Page 8
`
`"applet" tag ... an object tag ... typically has required or desirable attributes"; column 9, lines 39-
`
`60: "context for any and all types of downloadable, executable code").
`
`Alternate Rejections
`
`Claim Rejections- 35 USC§ 103
`
`13.
`
`The following is a quotation of pre-AlA 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.
`
`14.
`
`Claims 28-33 are rejected under pre-AlA 35 U.S.C. 103(a) as being unpatentable over Ji
`
`(U.S. Patent No. 5,983,348, filed 0911011997, published 11/0911999) in view of Golan (U.S.
`
`Patent No. 5,974,549, filed 03/2711997, published 10/2611999).
`
`-Regarding claims 28-33, the combination of Ji in view of Golan teaches each and every
`
`limitation of the claims (see the claim charts on pages 41-46 (claim 28) and 22-26 (claims 29-33)
`
`of the Request, which are hereby incorporated by reference). Regarding independent claim 28,
`
`the Examiner further notes that it would have been obvious to one of ordinary skill in the art at
`
`the time of the invention to modify the received single JAR archive file of Ji (Ji, column 6, lines
`
`38-51) to implement the security monitor that executes the downloaded software component
`
`(e.g., Java applet or ActiveX control) in a secure sandbox at the client location as taught in
`
`Golan, because Golan taught that said described features provided the benefit for securing
`
`Blue Coat Systems - Exhibit 1027 Page 10
`
`

`
`Application/Control Number: 90/013,016
`Art Unit: 3992
`
`Page 9
`
`untrusted and/or unknown software downloaded from an external source to a client (Golan,
`
`column 1, lines 4-7: "securing untrusted and/or unknown software"; column 4, lines 58-61;
`
`column 5, lines 14-25: "secure sandbox enables untrustedActiveX controls downloadedfrom the
`
`Internet to run within security limitations"). The Ji reference further buttresses the combination
`
`by recognizing that the location of the static scanning and run-time monitoring distribution
`
`would be obvious to one of ordinary skill in the art based on the well-known benefits of client-
`
`server processing load distribution (Ji, column 3, lines 1-15: "does not cause heavy load on the
`
`server ... does not introduce significant performance overheard during the execution of the
`
`applets").
`
`Further regarding dependent claim 32, the Examiner notes that the Golan reference also
`
`specifically teaches wherein modifying interfaces includes modifying interfaces of an import
`
`address table ("IAT") of a native code executable downloadable (Golan, column 6, lines 13-30:
`
`"security monitor, in its initialization code, functions to modify the import tables of all the
`
`modules within the monitored application's address space"). As similarly discussed in Ji (Ji,
`
`column 7, lines 32-40: "extracts the classfilesfrom theJARfile ... instruments the Java class
`
`files, e.g. by inserting monitoring instructions after each suspicious instruction"), Golan teaches
`
`that modifying the lA T provides the benefit of allowing the interception of a specific set of API
`
`calls (Golan, column 5, line 62-column 6, line 25: "can detect and prevent any attempt by the
`
`software component to breach security ... monitoring all calls issued by the
`
`downloadable ... component is permitted to execute freely while enforcing compliance with a
`
`predefined set of security rules"). Therefore, it would have been obvious to one of ordinary skill
`
`in the art at the time of the invention for the interfaces of the import table of Ji to have been
`
`Blue Coat Systems - Exhibit 1027 Page 11
`
`

`
`Application/Control Number: 90/013,016
`Art Unit: 3992
`
`Page 10
`
`modified as specifically taught in Golan, because Golan taught said modification provided the
`
`benefit of being able to detect and prevent any attempt by the downloaded software component
`
`to breach security (Golan, column 5, line 62-column 6, line 25: "can detect and prevent any
`
`attempt by the software component to breach security").
`
`Blue Coat Systems - Exhibit 1027 Page 12
`
`

`
`Application/Control Number: 90/013,016
`Art Unit: 3992
`
`Page 11
`
`15.
`
`All correspondence relating to this ex parte reexamination proceeding should be directed
`
`Conclusion
`
`as follows:
`
`By U.S. Postal Service Mail to:
`
`Mail Stop Ex Parte Reexam
`ATTN: Central Reexamination Unit
`Commissioner for Patents
`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 St.
`Alexandria, VA 22314
`
`ByEFS-Web:
`
`Registered users ofEFS-Web may alternatively submit such correspondence via the
`electronic filing system EFS-Web, at
`
`httgs://efs.uspto.gov/efile/m,ygortal/efs-re_gistered
`
`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.
`
`Blue Coat Systems - Exhibit 1027 Page 13
`
`

`
`Application/Control Number: 90/013,016
`Art Unit: 3992
`
`Page 12
`
`Any inquiry concerning this communication or earlier communications from the
`
`Reexamination Legal Advisor or Examiner, or as to the status of this proceeding, should be
`
`directed to the Central Reexamination Unit at telephone number (571) 272-7705.
`
`I Adam L Basehoar/
`
`Primary Examiner, Art Unit 3992
`
`Conferees:
`
`/JSP/
`
`I Alexander J Kosowski/
`
`Supervisory Patent Examiner, Art Unit 3992
`
`Blue Coat Systems - Exhibit 1027 Page 14
`
`

`
`Search Notes
`
`Application/Control No.
`
`Applicant( s )/Patent Under
`Reexamination
`
`90013016
`
`Examiner
`
`ADAM BASEHOAR
`
`7647633
`
`Art Unit
`
`3992
`
`CPC-SEARCHED
`
`Symbol
`
`Date
`
`Examiner
`
`CPC COMBINATION SETS -SEARCHED
`
`Symbol
`
`Date
`
`I
`I
`
`I Examiner
`I
`
`US CLASSIFICATION SEARCHED
`
`Class
`
`I
`I
`
`Subclass
`
`Date
`
`I
`I
`
`I Examiner
`I
`
`SEARCH NOTES
`
`Search Notes
`Reviewed Patented File's Prosecution History
`Reviewed Proposed Prior Art
`
`Date
`10/23/2013
`10/28/2013
`
`Examiner
`ALB
`ALB
`
`INTERFERENCE SEARCH
`
`US Class/
`CPC Symbol
`
`US Subclass I CPC Group
`
`Date
`
`Examiner
`
`U.S. Patent and Trademark Office
`
`Part of Paper No.: 20t3t025
`
`Blue Coat Systems - Exhibit 1027 Page 15
`
`

`
`Reexamination
`
`Application/Control No.
`
`90013016
`Certificate Date
`
`Applicant(s)/Patent Under
`Reexamination
`7647633
`Certificate Number
`
`Requester Correspondence Address:
`
`D Patent Owner
`
`~ Third Party
`
`RYAN W. COBB, DLA PIPER LLP (US)
`401 B STREET
`SUITE 1700
`SAN DIEGO, CA 92101
`
`LITIGATION REVIEW ~
`
`ALB
`(examiner initials)
`
`Case Name
`
`11/04/2013
`(date)
`Director Initials
`
`3:13-cv-3999 (Open) - Finjan, Inc. v. Blue Coat Systems, Inc
`
`3:13-cv-4398 (Open) - Finjan, Inc. v. Websense, Inc.
`
`4:13-cv-3133 (Open) - Finjan, Inc. v. Fireeye, Inc.
`
`4:13-cv-3999 (Open) - Finjan, Inc. v. Blue Coat Systems, Inc
`
`5:13-cv-4398 (Open) - Finjan, Inc. v. Websense, Inc.
`
`COPENDING OFFICE PROCEEDINGS
`
`TYPE OF PROCEEDING
`
`NUMBER
`
`1 . None Found
`
`U.S. Patent and Trademark Office
`
`DOC. CODE RXFILJKT
`
`Blue Coat Systems - Exhibit 1027 Page 16
`
`

`
`UNITED STA 1ES p A 1ENT 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.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`90/013,016
`
`10/07/2013
`
`7647633
`
`382984-000006
`
`9521
`
`11119/2013
`7590
`115222
`Bey & Cotropia PLLC (Fin jan Inc.)
`213 Bayly Court
`Richmond, VA 23229
`
`EXAMINER
`
`BASEHOAR, ADAM L
`
`ART UNIT
`
`PAPER NUMBER
`
`3992
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`MAIL DATE
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`DELIVERY MODE
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`11/19/2013
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`PAPER
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`PTOL-90A (Rev. 04/07)
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`Blue Coat Systems - Exhibit 1027 Page 17
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`

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`Commissioner for Patents
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-·1450
`W"aAA"I.IJ:.'=ptO.QOV
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`DO NOT USE IN PALM PRINTER
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`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
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`RYAN W. COBB, DLA PIPER LLP (US)
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`401 B STREET
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`SUITE 1700
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`SAN DIEGO, CA 92101
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`EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
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`REEXAMINATION CONTROL NO. 90/013,016.
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`PATENT NO. 7647633.
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`ART UNIT 3992.
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`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the above identified ex parte reexamination proceeding (37 CFR 1 .550(f)).
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`Where this copy is supplied after the reply by requester, 37 CFR 1.535, or the time for filing a
`reply has passed, no submission on behalf of the ex parte reexamination requester will be
`acknowledged or considered (37 CFR 1.550(g)).
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`PTOL-465 (Rev.0?-04)
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`Blue Coat Systems - Exhibit 1027 Page 18
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`

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`Application/Control Number: 90/013,016
`Art Unit: 3992
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`Page 2
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`The present application is being examined under the pre-AlA first to invent provisions.
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`DECISION
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`1.
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`A substantial new question of patentability (SNQ) affecting claims 1-7 and 28-33 of
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`United States Patent Number 7,647,633 B2 (Edery et al) is raised by the Request for ex parte
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`reexamination filed 10/07/2013. Claims 8-27 and 34-41 of the Edery '633 patent are not subject
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`to reexamination.
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`Waiver of Patent Owner's Statement
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`2.
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`During an interview on 10/22/2013, Patent Owner (PO) agreed to waive its right to file a
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`patent owner's statement under 35 U.S.C. 304 in the event reexamination was ordered.
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`Therefore, a first Office Action (see: Non-Final Action) on the merits accompanies this Order for
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`ex parte reexamination.
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`References Cited in the Request
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`3.
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`A total of three references in various combinations have been asserted in the Request as
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`providing teachings relevant to the claims of the Edery '633 patent. The proposed references
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`which make up the combinations are as follows:
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`• Ji- (U.S. Patent No. 5,983,348, filed 0911011997, published 11/0911999)
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`• Liu- (U.S. Patent No. 6,058,482, filed 05/2211998, published 05/02/2000)
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`Blue Coat Systems - Exhibit 1027 Page 19
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`Application/Control Number: 90/013,016
`Art Unit: 3992
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`Page 3
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`• Golan- (U.S. Patent No. 5,974,549, filed 03/2711997, published 10/2611999)
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`Of the three references in the current filed Request, the Golan reference was cited and
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`actively applied in a rejection (see: Non-Final Rejection mailed 02/25/2009) during the prior
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`examination of the Edery '633 patent. The Ji reference was cited by the examiner (see: Notice of
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`References Cited mailed 02/25/2009) but was not discussed by the examiner or applied to any of
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`the claims in the prosecution history of the Edery '633 patent. The Liu reference was not
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`previously cited/discussed by the examiner or applied to any of the claims in the prosecution
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`history of the Edery '633 patent. Additionally, it is noted that both the Ji and Golan references
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`were referenced and generally described in the "Background of the Invention" section of the
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`Edery '633 patent (see: column 1, line 67-column 2, line 10).
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`Identification of Every Claim for Which Reexamination is Requested
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`4.
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`The three references cited above are discussed in the Request regarding claims 1-7 and
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`28-33 of the Edery '633 patent. Pages 2-12 of the Request details out proposed substantial new
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`questions of patentability in light of the various combinations of the three references cited above.
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`Prosecution History
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`5.
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`The Edery '633 patent was originally assigned serial number 111159,455 and was filed on
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`06/22/2005 with pending numbered claims 1-7, 16-20,28-34,43,46-51, 58-61, and 63-76. On
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`Blue Coat Systems - Exhibit 1027 Page 20
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`Application/Control Number: 90/013,016
`Art Unit: 3992
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`Page 4
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`10117/2005 a preliminary amendment was filed making amendments to the specification and
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`drawings of the Edery '455 application.
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`A Non-Final Action was mailed 02/25/2009 rejecting all pending claims 1-7, 16-20,28-
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`34, 43,46-51, 58-61, and 63-76. Claims 1-7, 16-20,28-34,43,46-51, 58-61, and 63-76 were
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`rejected on the ground of nonstatutory obviousness-type double patenting over claims 1-35 of
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`U.S. Patent No. 7,058,822. Claims 1, 2, 4-7, 16, 17, 19, 20, 28, 30-34, 46-51, 59, 61, and 63-76
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`were rejected under 35 U.S.C. 101 for being directed toward non-statutory subject matter that did
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`notfall within one of the four statutory categories of invention. Claims 1-7, 16-20, 28-34, 43,
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`46-51, 58-61, and 63-76 were also rejected under 35 U.S.C. 102(e) as being anticipated by Golan
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`(U.S. Patent No. 5,974,549).
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`In response to the Non-Final Action, Applicant filed arguments with accompanying
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`amendments on 05/26/2009 amending claims 1, 7, 16, 28, 30, 47, 61, 68, 69, and 75 as well as
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`cancelling claims 29, 60, and 76. Additionally, a Terminal Disclaimer (TD) was concurrently
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`filed with said arguments/amendments disclaiming the terminal part of the statutory term of any
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`patent granted on the Edery '455 application which would extend beyond the expiration date of
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`the full statutory term of 7,058,822 patent. With regard to rejection under 35 U.S.C. 102(e) in
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`view of the Golan patent, Applicant's arguments generally stated:
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`a. "In distinction with the claimed invention, Golan does not describe the packaging of protection
`code. Instead, Golan discusses a situation whereby a security monitor is already resident on a
`client computer, as illustrated in FIGS. 2, 5 and 9 of Golan, without concerning itself as to how
`the security monitor was installed. In fact, prima facie the methodology of the claimed invention,
`of packaging mobile protection code with downloadable information, seems wasteful and
`counter-intuitive, since such protection code is typically re-transmitted to the client computer
`many times - in particular, each time a downloadable with executable code is downloaded.
`However, the advantage of this methodology is control over the ability to customize the mobile
`protection code and to update it as necessary, thus obviating the need for a user to be responsible
`for ensuring that his security code be appropriate to his computer and up to date."; (see:
`Remarks, p. 15)(emphasis added)
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`Blue Coat Systems - Exhibit 1027 Page 21
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`Application/Control Number: 90/013,016
`Art Unit: 3992
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`Page 5
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`b. "Applicants respectfully submit that Golan does not describe causing mobile protection
`code, which corresponds to Golan's security monitor, to be communicated ... 'based upon
`the determination, transmitting from the computer mobile protection code to at least one
`information-destination of the downloadable-information, if the downloadable(cid:173)
`information is determined to include executable code' is neither shown nor suggested in
`Golan, as explained hereinabove." (see: Remarks, p. 16)(emphasis added); and
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`c. "'receiving a sandboxed package that includes mobile protection code ("MPC") and a
`Downloadable and one or more protection policies at a computer at a Downloadable(cid:173)
`destination' is neither shown nor suggested in Golan ... Applicants respectfully submit
`that, although Golan does describe a sandbox, the limitation of a sandboxed package that
`includes mobile protection code and a Downloadable and one or more protection policies
`does not appear at the locations cited." (see: Remarks, pp. 18-19)(emphasis added)
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`In response to the arguments, amendments, and the approved Terminal Disclaimer, the
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`examiner then mailed a Notice of Allowability on 06/26/2009. The Notice of Allowability
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`indicating that all pending claims 1-7, 16-20,28, 30-34,43,46-51, 58, 59, 61, and 63-75
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`(renumbered claims 1-41) were allowed. However, the Notice of Allowability did not include a
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`specific examiner's statement of reasons for allowance. On 07/02/2009, Applicant filed a
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`Request for Continued Examination (RCE) which included an Information Disclosure Statement
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`(IDS) for consideration by the Office. On 07/23/2009 the examiner mailed a subsequent Notice
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`of Allowability which indicated that the IDS had been considered as well as again indicating that
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`all pending claims 1-7, 16-20,28, 30-34,43,46-51, 58, 59, 61, and 63-75 were allowed.
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`While no specific reasons for allowance was given by the examiner, the prosecution
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`history appears to indicate at least the following limitations to have been considered the
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`allowable features:
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`(1) Limitations directed toward a computer (e.g., a server) transmitting mobile protection
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`code to an information-destination (e.g., a client computer) of the downloadable-information.
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`Blue Coat Systems - Exhibit 1027 Page 22
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`Application/Control Number: 90/013,016
`Art Unit: 3992
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`Page 6
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`(2) Limitations directed toward receiving a sandboxed package which includes mobile
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`protection code, a Downloadable, and one or more protection policies at a computer at a
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`Downloadable-destination.
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`Priority Determination
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`6.
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`The Edery '633 patent is a continuation of application 09/861,229 (now U.S. Patent No.
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`7 ,058,822), filed 05/17/2001, which claims benefit to provisional application 60/205,591, filed
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`on 05/17/2000. The Edery '633 patent a