REEXAMINATION CONTROL NO.: 90/013,016
`ATTORNEYDOCKETNO.: FINREXM0005
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Ex Parte Reexamination of U.S. Patent No.
`7,647,633 to Edery, et al.
`
`: Confirmation No.:
`
`9521
`
`Group Art Unit:
`
`3992
`
`Examiner:
`
`Adam L. Basehoar
`
`:Attorney Docket No.: FINREXM0005
`
`Control Number: 90/013,016
`
`Patent No.:
`
`7,647,633
`
`Inventors:
`
`Edery et al.
`
`Issued:
`
`Title:
`
`January 12, 2010
`
`MALICIOUS MOBILE
`CODE RUNTIME
`MONITORING SYSTEM
`AND METHODS
`
`Mail Stop PETITION
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-14 50
`
`RENEWED PETITION TO ACCEPT UNINTENTIONALLY DELAYED PRIORITY
`CLAIM UNDER37 C.F.R. § 1.78
`
`Dear Sir:
`
`Patent Owner hereby submits this renewed petition under 37 C.P.R. § 1.78(e) to request
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`acceptance of an unintentionally delayed corrected benefit claim under 35 U.S.C. § 120 for the
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`benefit of prior-filed nonprovisional applications, for a utility patent application filed after
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`November 29, 2000. U.S. Patent No. 7,647,633 ("the '633 patent") is presently the subject of Ex
`
`Parte Reexamination, Ser. No. 90/013,016, filed October 7, 2013.
`
`This petition is responsive to the Petitions Branch's dismissal mailed on July 25th, 2014
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`of the Patent Owners's original petition filed February 19, 2014. In the original petition, there
`
`was a typographical error in the listing of priority applications; specifically, the amendment to
`
`the Specification listed Application No. 09/551,302 as 90/551,302. The correction has been
`
`1
`
`0001
`
`Blue Coat Systems - Exhibit 1081
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`

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`made herein and in a supplemental amendment filed herewith. The other required sections of a
`
`REEXAMINATION CONTROL NO.: 90/013,016
`ATTORNEYDOCKETNO.: FINREXM0005
`
`complete petition are addressed herein.
`
`I. Authority
`
`37 C.P.R. § 1.78( e) (previously 37 CFR § 1.78(a)(3)) allow for the filing of a petition to
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`correct a failure to adequately claim the benefit under 35 U.S.C. § 120. A petition to accept the
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`priority claim and reference required under 35 U.S.C. § 120 and 37 C.P.R. §§ 1.78(d) and (e)
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`(previously 37 C.P.R. § 1.78(a)(2) and (a)(3)) made after four months from the filing date or
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`sixteen months from the filing date of the priority application may be accepted if the reference
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`was unintentionally delayed. Furthermore, a petition to accept an unintentionally delayed claim
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`under 35 U.S.C. § 120 for the benefit of a prior filed application must be accompanied by:
`
`(1)
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`the reference required by 35 U.S.C. § 120 and 37 C.P.R. § 1.78(d)(2) (previously
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`37 C.P.R. § 1.78(a)(2));
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`(2)
`
`(3)
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`a surcharge payment as set forth in 37 C.P.R. § 117(t); and
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`a statement that the entire delay between the date the reference was due under 37
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`C.P.R. § 1.78(d)(3) (previously 37 C.P.R. § 1.78(a)(2)(ii)) and the date the claim
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`was filed was unintentional.
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`II. Reference
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`The present petition is accompanied by a Supplemental Amendment to correct the language
`
`of the benefit claim recited in the first paragraph of the specification. For the Petitions Office's
`
`convenience the amendment is reproduced below:
`
`This application is a continuation of and incorporates by reference patent application Ser.
`
`No. 09/861,229, filed May 17, 2001 now U.S. Pat. No. 7,058,822, which claims benefit
`
`ofreference to provisional application Ser. No. 60/205,591 entitled "Computer Network
`
`Malicious Code Runtime Monitoring," filed on May 17, 2000 by inventors Nimrod
`
`Itzhak V ered, et al. This application also incorporates by reference the provisional
`
`application Ser. No. 60/205,591. This application is also a Continuation-In-Part of and
`
`2
`
`0002
`
`

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`REEXAMINATION CONTROL NO.: 90/013,016
`ATTORNEYDOCKETNO.: FINREXM0005
`
`hereby incorporates by reference patent application Ser. No. 09/539,667, now U.S. Pat.
`
`No. 6,804,780, entitled "System and Method for Protecting a Computer and Network
`
`from Hostile Downloadables" filed on Mar. 30, 2000 by inventor Shlomo Touboul,
`
`which is a continuation of U.S. patent application Ser. No. 08/964,388, now U.S. Patent
`
`No. 6,092,194, entitled "System and Method for Protecting a Computer and a Network
`
`from Hostile Downloadables" filed on November 6, 1997 by inventor Shlomo Touboul.
`
`This application is also a Continuation-In-Part of and hereby incorporates by reference
`
`patent application Ser. No. 09/551,302 now U.S. Pat. No. 6,480,962, entitled "System
`
`and Method for Protecting a Client During Runtime From Hostile Downloadables", filed
`
`on Apr. 18, 2000 by inventor Shlomo Touboul, which is a continuation ofU.S.
`
`application Ser. No. 08/790,097, now U.S. Patent No. 6,167,520 entitled "System and
`
`Method For Protecting a Client From Hostile Downloadables", filed January 29, 1997 by
`
`inventor Shlomo Touboul.
`
`III.
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`Surcharge
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`The original petition was accompanied by authorization to charge the requisite fee under 3 7
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`C.P.R. § 1.17(t). No additional fees are believe to be due, but authorization is hereby given to
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`charge deposit account number 50-6099.
`
`IV. Unintentional Delay
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`The entire delay between the date the claim was due under 37 C.P.R. § 1.78(d)(3) (previously
`
`37 C.P.R. § 1.78(a)(2)(ii)) and the date this claim was first filed was unintentional.
`
`Dated: August 25, 2014
`
`Bey & Cotropia PLLC
`213 Bayly Court
`Richmond, VA 23229
`(850) 441-8530
`Attorneys for Finjan, Inc.
`
`Respectfully submitted,
`
`/Dawn-Marie Bev- 44,442/
`Dawn-Marie Bey
`Registration No.: 44,442
`
`3
`
`0003
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Control Number
`Patent No.
`Inventors
`Issued
`Title
`
`Confirmation No.:
`
`90/013,016
`7,647,633
`Edery et al.
`January 12, 2010
`MALICIOUS MOBILE CODE RUNTIME MONITORING
`SYSTEM AND METHODS
`
`9521
`
`TC/Art Unit
`Examiner:
`Attorney Dckt No.
`
`3992
`Adam L. Basehoar
`FINREXM0005
`
`Mail Stop Ex Parte Reexam
`Central Reexamination Unit
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-14 50
`
`SUPPLEMENTAL AMENDMENT TO CORRECT PRIORITY PARAGRAPH AS
`REQUIRED BY 37 CFR §§ 1. 78
`
`Sir:
`
`Included with the response to non-final Office Action filed February 19, 2014, was an
`
`amendment to the priority paragraph in the Specification in accordance with the requirement
`
`under 37 CFR § 1.78(e)(1) (previously 37 CFR § 1.78(a)(3)). A petition to accept
`
`unintentionally delayed priority claim was filed on that same date, February 19, 2014, requiring
`
`the amendment. On July 25, 2014, the petitions branch dismissed the petition" ... for the sole
`
`reason that [the amendment to the specification] contains a typographical error. The amendment
`
`lists Application No. 90/551,302, rather than Application No. 09/551 ,302." (emphasis in
`
`original). Accordingly, the undersigned hereby submits a correct amendment to the
`
`Specification beginning on Page 2.
`
`0004
`
`

`
`AMENDMENT TO THE SPECIFICATION
`
`Kindly replace the first paragraph of the specification on page 2 with the following:
`
`This application is a continuation of and incorporates by reference patent application Ser.
`
`No. 09/861,229, filed May 17, 2001 now U.S. Pat. No. 7,058,822, which claims benefit
`
`ofreference to provisional application Ser. No. 60/205,591 entitled "Computer Network
`
`Malicious Code Runtime Monitoring," filed on May 17, 2000 by inventors Nimrod
`
`Itzhak V ered, et al. This application also incorporates by reference the provisional
`
`application Ser. No. 60/205,591. This application is also a Continuation-In-Part of and
`
`hereby incorporates by reference patent application Ser. No. 09/539,667, now U.S. Pat.
`
`No. 6,804,780, entitled "System and Method for Protecting a Computer and Network
`
`from Hostile Downloadables" filed on Mar. 30, 2000 by inventor Shlomo Touboul,
`
`which is a continuation of U.S. patent application Ser. No. 08/964,388, now U.S. Patent
`
`No. 6,092,194, entitled "System and Method for Protecting a Computer and a Network
`
`from Hostile Downloadables" filed on November 6, 1997 by inventor Shlomo Touboul.
`
`This application is also a Continuation-In-Part of and hereby incorporates by reference
`
`patent application Ser. No. 09/551,302 now U.S. Pat. No. 6,480,962, entitled "System
`
`and Method for Protecting a Client During Runtime From Hostile Downloadables", filed
`
`on Apr. 18, 2000 by inventor Shlomo Touboul, which is a continuation ofU.S.
`
`application Ser. No. 08/790,097, now U.S. Patent No. 6,167,520 entitled "System and
`
`Method For Protecting a Client From Hostile Downloadables", filed January 29, 1997 by
`
`inventor Shlomo Touboul.
`
`2
`
`0005
`
`

`
`REMARKS
`
`This supplement amendment to the specification is submitted in conjunction with Patent
`
`Owner's Renewed Petition to Accept Unintentionally Delayed Priority Claims pursuant to 37
`
`C.P.R. § 1.78 filed herewith and directed to the Petitions Branch. Upon entrance of the
`
`amendment to the priority paragraph, the undersigned respectfully requests issuance of a
`
`corrected filing receipt to reflect changes.
`
`No fees are believed to be due, but please charge any shortage in fees due in connection
`
`with the filing of this communication to Deposit Account No. 50-6099.
`
`Respectfully submitted,
`
`/Dawn-Marie Bev- 44,442/
`Dawn-Marie Bey
`Registration No.: 44,442
`
`Dated: August 25, 2014
`
`Bey & Cotropia PLLC
`213 Bayly Court
`Richmond, VA 23229
`(850) 441-8530
`
`Attorneys for Finjan, Inc.
`
`3
`
`0006
`
`

`
`Attorney Docket No. FINREXMOOOS
`
`PATENT
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Ex Parte Reexamination of
`U.S. Patent No. 7,647,633 to Edery, et al.
`
`Technology Center: 3992
`
`Application No.: 90/013,016
`
`Group Art Unit:
`
`3992
`
`Filed: October 7, 2013
`
`Confirmation No.:
`
`9521
`
`Patent Owner: Finjan, Inc.
`
`CRU Examiner:
`
`Adam L. Basehoar
`
`For U.S. Patent No. 7,647,633- MALICIOUS MOBILE CODE RUNTIME MONITORING
`SYSTEM AND METHODS.
`
`Submitted Electronically
`
`United States Patent and Trademark Office
`Customer Service Window, Mail Stop Ex Parte Reexamination
`Randolph Building
`401 Dulany Street
`Alexandria, VA 22314
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing RENEWED PETITION TO
`ACCEPT UNINTENTIONALLY DELAYED PRIORITY CLAIM UNDER 37 C.P.R.§ 1.78
`and SUPPLEMENTAL AMENDMENT TO CORRECT PRIORITY PARAGRAPH AS
`REQUIRED BY 37 CFR §§ 1.78(a)(2) and (a)(3) filed on August 25, 2014 is to be served by
`first class United States mail on the 25th day of August, 2014 to:
`
`Ryan W. Cobb
`DLA Piper LLP
`2000 University Avenue
`East Palo Alto, CA 94303-2215
`Tel.: (650) 833-2235
`Attorney of Record for Third-Party Requester
`
`Respectfully submitted,
`
`Date: August 25, 2014
`
`By:
`
`/Dawn-Marie Bev- 44.4421
`Dawn-Marie Bey
`Reg. No. 44,442
`Bey & Cotropia PLLC
`213 Bayly Court
`Richmond, VA 23229
`Attorneys for Patent Owner
`
`1
`
`0007
`
`

`
`Electronic Acknowledgement Receipt
`
`EFSID:
`
`Application Number:
`
`19951552
`
`90013016
`
`International Application Number:
`
`Confirmation Number:
`
`9521
`
`Title of Invention:
`
`MALICIOUS MOBILE CODE RUNTIME MONITORING SYSTEM AND METHODS
`
`First Named Inventor/Applicant Name:
`
`7647633
`
`Customer Number:
`
`115222
`
`Filer:
`
`Dawn-Marie Bey./Jeanne Paolella-Bald
`
`Filer Authorized By:
`
`Dawn-Marie Bey.
`
`Attorney Docket Number:
`
`FINREXM0005
`
`Receipt Date:
`
`Filing Date:
`
`TimeStamp:
`
`25-AUG-2014
`
`07-0CT-2013
`
`12:41:42
`
`Application Type:
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`Reexam (Patent Owner)
`
`Payment information:
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`Submitted with Payment
`
`I no
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`File Listing:
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`Document
`Number
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`Document Description
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`File Name
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`File Size( Bytes)/
`Message Digest
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`Multi
`Part /.zip
`
`Pages
`(ifappl.)
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`1
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`Petition for review by the Office of
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`90013016_renewedpetitiontoa
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`142605
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`2ce69818f1270626b768e689c00c5efbea84
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`Warnings:
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`Information:
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`0008
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`

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`2
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`Supplemental Response or
`Supplemental Amendment
`
`90013016_supplementalamen
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`Reexam Certificate of Service
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`90013016_certofservice_renew
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`Total Files Size (in bytes)
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`404326
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`This Acknowledgement Receipt evidences receipt on the noted date by the USPTO of the indicated documents,
`characterized by the applicant, and including page counts, where applicable. It serves as evidence of receipt similar to a
`Post Card, as described in MPEP 503.
`
`New A~~lications Under 35 U.S.C. 111
`If a new application is being filed and the application includes the necessary components for a filing date (see 37 CFR
`1.53(b)-(d) and MPEP 506), a Filing Receipt (37 CFR 1.54) will be issued in due course and the date shown on this
`Acknowledgement Receipt will establish the filing date of the application.
`
`National Stage of an International A~~lication under 35 U.S.C. 371
`If a timely submission to enter the national stage of an international application is compliant with the conditions of 35
`U.S.C. 371 and other applicable requirements a Form PCT/DO/E0/903 indicating acceptance of the application as a
`national stage submission under 35 U.S.C. 371 will be issued in addition to the Filing Receipt, in due course.
`
`New International A~~lication Filed with the USPTO as a Receiving Office
`If a new international application is being filed and the international application includes the necessary components for
`an international filing date (see PCT Article 11 and MPEP 181 0), a Notification of the International Application Number
`and of the International Filing Date (Form PCT/R0/1 OS) will be issued in due course, subject to prescriptions concerning
`national security, and the date shown on this Acknowledgement Receipt will establish the international filing date of
`the application.
`
`0009