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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
`
`90/013,016
`
`10/07/2013
`
`7647633
`
`FINREXM0005
`
`9521
`
`Bey & Cotropia PLLC (Finjan Inc.)
`Dawn-Marie Bey
`213 Bayly Court
`Richmond, VA 23229
`
`BASEHOAR, ADAM L
`
`ART UNIT
`3992
`
`MAIL DATE
`
`12/18/2015
`
`PAPER NUIVIBER
`
`DELIVERY MODE
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL—90A (Rev. 04/07)
`
`Patent Owner Finjan, Inc. - Ex. 2001, p. 1
`
`

`
` IJNI TED S '.['ATE'.~'_-I PATEN T AND TRADEE-‘IARK QFFI CE
`
`Cornrnis-sinner for Patents
`United States Patent and Tradernark Office
`F'.O. Elu;~c145I:i
`Alexaridria, VA 2231 3-1 450
`vuvu-wuspfo.gmr
`
`DO NOT USE IN PALM PRINTER
`
`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
`
`Jeffrey R. Cole, DLA Piper LLP (US)
`
`401 Congress Avenue
`
`Suite 2500
`
`Austin, TX 78701
`
`EX PARTE REEXAMINATION COMMUNICATION TRANSMI'I'I'AL 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.07—04)
`
`Patent Owner Finjan, Inc. - Ex. 2001, p. 2
`
`

`
`
`
`Commissioner for Patents
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`www.uspio.gov
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Application Number: 90/013,016
`Filing Date: October 07, 2013
`Appellant(s): 7647633
`
`Dawn—Marie Bey (Reg. No. 44,442)
`For Appellant
`
`EXAMINER’S ANSWER
`
`This is in response to the Appeal Brief filed 08/24/2015.
`
`Patent Owner Finjan, Inc. - Ex. 2001, p. 3
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`

`
`Control Number: 90/013,016
`
`Art Unit: 3992
`
`Page 2
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`(1) Grounds of Rejection to be Reviewed on Appeal
`
`Every ground of rejection set forth in the Office action dated 05/22/2015 (hereafter the
`
`“Final Action”) from which the appeal is taken is being maintained by the Examiner except for
`
`the grounds of rejection (if any) listed under the subheading “WITHDRAWN REJECTIONS.”
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`New grounds of rejection (if any) are provided under the subheading “NEW GROUNDS OF
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`REJECTION.”
`
`(2) Response to Argument
`
`Appellant’s arguments filed 08/24/2015 have been fully considered but they are not
`
`persuasive.
`
`A.
`
`Substantial New Question of Patentability (SNQ) Determination
`
`Appellant generally argues (Appeal Brief: pp. 11-13) that both Ji and Golan, among other
`
`references, were either explicitly or inherently considered by Primary Examiner Revak during
`
`the prosecution of the Edery ‘633 patent. Appellant argues that both Ji and Golan are not new
`
`and are the exact same references that were differentiated in the background of the Edery ‘633
`
`specification and considered and cited by the Office during the examination of the Edery '633
`
`patent. Thus, Appellant alleges there is strong evidence against the finding of a SNQ in light of
`
`the Ji and Golan references.
`
`The Examiner respectfully disagrees with the Appellant and notes that the Appeal Brief
`
`does not “clearly present the issue and arguments regarding the examiner’s SNQ determination
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`Ex Parte Reexamination — Examiner's Answer
`
`Patent Owner Finjan, Inc. - Ex. 2001, p. 4
`
`

`
`Control Number: 90/013,016
`
`Art Unit: 3992
`
`Page 3
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`under a separate heading and identify the communication in which the patent owner first
`
`requested reconsideration before the examiner” as suggested by MPEP §2274(VI). Additionally,
`
`the SNQ Determinations are not listed in Section IV of the Appeal Brief. However, if the SNQ
`
`Determinations are in fact appealed to the Board, Appellant’s arguments are not found to be
`
`persuasive for the reasons stated in the Final Action. Said reasons are reproduced below:
`
`As noted in the Order (see: Order, pp. 10-13), “The existence of a substantially new
`
`question of patentability is not specifically precluded by the fact that a patent or printed
`
`publication was previously cited by or to the Office or considered by the Office.” Similarly, in
`
`relation to the use of the same or substantially identical prior art previously cited/considered
`
`during prior examination, MPEP §2242(II)(A) states that “Determinations on whether a
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`substantial new question of patentability exists in such an instance shall be based upon a fact-
`
`specific inquiry done on a case—by—case basis. For example, a substantial new question of
`
`patentability may be based solely on old art where the old art is being presented/viewed in a new
`
`light, or in a different way, as compared with its use in the earlier examination(s), in view of a
`
`material new argument or interpretation presented in the request. Such material new argument or
`
`interpretation may be based solely on claim scope of the patent being reexamined.” In the
`
`instant case, the Order specifically determined that Ji and Golan in combination with Ji each
`
`presented substantial nel questions of patentability in light of the prosecution history of the
`
`Edery ‘633 patent.
`
`Regarding the Ji reference, it was noted in the Order that Ji was cited by the prior
`
`examiner and was generally described in the “Background Of The Invention” section of the
`
`Edery ‘633 patent (see: Order, p. 3). However, it was further noted that the prosecution history
`
`Ex Parte Reexamination — Examiner's Answer
`
`Patent Owner Finjan, Inc. - Ex. 2001, p. 5
`
`

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`Control Number: 90/013,016
`
`Art Unit: 3992
`
`Page 4
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`of Edery ‘633 patent showed that the Ji reference was never discussed by the prior examiner or
`
`applied in a rejection to any of the claims (see: Order, pp. 3 & 11). The part of the specification
`
`in the Edery ‘633 patent (see: Edery ‘633, column 1, line 67—column 2, line 10) that describes Ji,
`
`only characterizes Ji as providing protection only against Java applets or ActiveX controls, as
`
`being resource intensive, and as failing to detect against additional program code. The features
`
`of Ji that helped raise a substantial new question (e. g., “transmitting from the computer mobile
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`protection code to at least one information—destination of the downloadable—information, if the
`
`downloadable—inforrnation is determined to include executable code” and “receiving a sandboxed
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`package that includes mobile protection code (“MPC”) and a Downloadable and one or more
`
`protection policies at a computer at a Downloadable—destination") were not described and
`
`therefore were never substantively considered by the Office. Accordingly, the Order correctly
`
`finds that the Ji reference raises a substantial nel question of patentability.
`
`Regarding Golan in combination with Ji, it was noted in the Order that this combination
`
`had never been considered during the prosecution history of the Edery ‘633 patent (see: Order, p.
`
`13: “However, Golan was not considered in combination with the prior art Ji reference as
`
`cited/described in the Request. Thus Golan is being presented/viewed in a different way as
`
`compared with the earlier examination”). The Patent Owner makes no attempt to argue
`
`otherwise. Accordingly, the Order correctly finds that Golan in combination with Ji raises a
`
`substantial new question of patentability.
`
`B.
`
`Anticipation Rejection: Ji
`
`Ji anticipates claims 1-3, 28-33, and 44 under 35 U.S.C § 102(e)
`
`Ex Parte Reexamination — Examiner's Answer
`
`Patent Owner Finjan, Inc. - Ex. 2001, p. 6
`
`

`
`Control Number: 90/013,016
`
`Art Unit: 3992
`
`Claim 1
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`Page 5
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`Appellant argues (Appeal Brief: pp. 13-15) that Ji does not disclose, either expressly or
`
`inherently, the limitation requiring “determining, by the computer, whether the downloadable-
`
`information includes executable code.” Appellant further argues that there is no teaching or
`
`enablement in Ji for “discriminating Java applets from non-applets” and more importantly that
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`the requirement of “determining, by the computer, whether the downloadable—information
`
`includes executable code” is completely missing. Appellant argues that J i only scans received
`
`applets to look for malicious applet instructions; not to determine if the downloaded applet
`
`contains executable code.
`
`The Examiner respectfully disagrees with the Appellant. As noted by Appellant,
`
`independent claim 1 requires “determining, by the computer, whether the downloadable-
`
`inforrnation includes executable code.” Specifically, it is noted by the Examiner that
`
`independent claim 1 does not specify how the determining is done and certainly does not require
`
`finding multiple forms of executable code or what types of executable code could be found. As
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`shown in the incorporated claim charts and further explained in the Final Action, the Ji reference
`
`specifically teaches determining whether downloadable-inforrnation includes executable code by
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`discriminating Java applets from non—applets (see: Ji, column 18-21: “dynamic scanning for
`
`application programs, e. g. Java applets or ActiveX controls”; column 4, line 66—column 5, line 4:
`
`“server. . .scans the applet. . .Downloaded non—applets are not scanned”). As noted by the
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`specifications of the Edery ‘633 patent (see: Edery ‘633, column 1, lines 60-63: “Java applets”;
`
`column 2, lines 28-33: “remotely operable code. . .such as Java applets, ActiveX
`
`Ex Parte Reexamination — Examiner's Answer
`
`Patent Owner Finjan, Inc. - Ex. 2001, p. 7
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`

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`Control Number: 90/013,016
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`Art Unit: 3992
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`Page 6
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`controls. . .among others”) and Ji reference (see: Ji, column 3, lines 31-40: “applet code. . .begins
`
`to be executed. . .applet code is executed”), downloadable—information comprising executable
`
`code could include Java applets. Therefore, by Ji scanning every Java applet and only Java
`
`applets for malicious instructions, Ji anticipates the claim language at issue. Since Ji’s system
`
`takes a first action for downloadable—information including executable code (i.e., scanning Java
`
`applets presumed to be executable code) and takes a different action for other downloadable—
`
`information (i.e., not scanning non—applet downloadable—inforrnation), Ji’s system determines
`
`“whether the downloadable—inforrnation includes executable code.”
`
`Appellant next argues (Appeal Brief: pp. 15-17), with regard to Ji’s teaching of looking
`
`for particular instructions, that Ji’s scanner cannot and does not make the binary executable code
`
`vs. no—executable code determination as required. Appellant argues that Ji’s applet scanner can
`
`only look for a predefined set of suspicious functions within a known type of code (i.e., Java
`
`applet byte code). Appellant further argues that Ji also does not teach the step of “based upon
`
`the determination, transmitting from the computer mobile protection code to at least one
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`information—destination of the downloadable—information, if the downloadable—inforrnation is
`
`determined to include executable code.” Appellant notes that since Ji never makes the claimed
`
`determination in the first instance, the follow—on element cannot be triggered by Ji.
`
`The Examiner respectfully disagrees with the Appellant. Additionally, as shown in the
`
`incorporated claim charts and further explained in the Final Action, the Ji reference also
`
`specifically teaches determining whether downloadable—inforrnation includes executable code by
`
`Ex Parte Reexamination — Examiner's Answer
`
`Patent Owner Finjan, Inc. - Ex. 2001, p. 8
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`

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`Control Number: 90/013,016
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`Art Unit: 3992
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`Page 7
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`scanning downloadable information for particular executable instructions (see: Ji, column 3,
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`lines 22-31: “applets are statically scanned. . .looking for particular instructions”; column 5, lines
`
`16-44: “If an instruction. . .that calls an insecure function. . .is found”). Thus Ji discloses a
`
`specific embodiment within the scope of a broadly claimed feature and therefore meets the
`
`claimed requirement. This position is further buttressed by new independent claim 48 which
`
`states that “determining, by the computer, whether downloadable—information includes
`
`executable code” could be performed by “analyzing the downloadable information for operations
`
`to be executed on a computer.” Clearly Ji’s teaching of searching for and identifying “particular
`
`instructions” (i.e., operations to be executed) that are to be executed at a client device meets the
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`claimed limitation of “determining, by the computer, whether downloadable-inforrnation
`
`includes executable code.”
`
`Regarding the “based upon the determination step”, as shown above, Ji clearly discloses
`
`determining if downloadable-inforrnation includes executable code. Ji further teaches
`
`transmitting mobile protection code only if the downloadable-inforrnation is determined to
`
`include said executable code (see: Ji, column 3, lines 32-50: “scanning for application programs,
`
`e.g. Java applets. . .looking for particular instructions. . .delivering...a security monitoring
`
`package”; column 4, line 66—column 5, line 27: “scans the applet and instruments it...scanning is
`
`performed on the applet by the scanner 26. If an instruction...is found during this static
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`scanning”; column 6, lines 38-42: “pre and post filter and monitoring package security policy
`
`functions) are combined with the instrumented applet code in a single JAR. . .f1le. . .at the server
`
`32, and downloaded to the web browser 22 of the client machine”). Therefore, the mobile
`
`protection code is sent to a client computer based on the determination. Ji also teaches wherein
`
`Ex Parte Reexamination — Examiner's Answer
`
`Patent Owner Finjan, Inc. - Ex. 2001, p. 9
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`

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`Control Number: 90/013,016
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`Art Unit: 3992
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`Page 8
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`downloaded non—applets are not scanned and thus are not transmitted with mobile protection
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`code.
`
`Therefore, Appellant’s arguments regarding claim 1 are not persuasive.
`
`Claim 28
`
`Appellant argues (Appeal Brief: pp. 17-20) that sandboxing is not mentioned in Ji and
`
`that Ji does not describe that the JAR file it sends implements a sandbox. Appellant argues that a
`
`JAR archive file is not a sandboxed package. Appellant further argues that the concept of a
`
`“sandbox” is a term of art and that the contents of a sandbox package cannot be divorced from
`
`the way it is executed. Appellant argues that the sandbox concept requires receiving the sandbox
`
`package as a single Downloadable and execution thereof results in a predetermined ordering of
`
`un—packaging so as to control the attempted Downloadable execution in a restricted environment.
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`Thus, Appellant argues that Ji’s JAR file fails to anticipate claim 28 because it’s without any
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`particular structure, let alone a structure that allows mobile protection code to be executed prior
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`to initiating the downloadable. Finally, Appellant argues that Ji requires the instrumented applet
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`to be already executing in the client web browser in order for Ji’s monitor package to be invoked.
`
`The Examiner respectfully disagrees with the Appellant. First it is noted that the features
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`upon which Appellant relies (i.e., “the sandbox concept requires that the receiving computer
`
`treats the sandbox package as a single Downloadable and execution thereof results in a
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`predetermined ordering of un—packaging, i.e., MPC, then Downloadable, then protection policies,
`
`Ex Parte Reexamination — Examiner's Answer
`
`Patent Owner Finjan, Inc. - Ex. 2001, p. 10
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`

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`Control Number: 90/013,016
`
`Art Unit: 3992
`
`Page 9
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`with the MPC creating the initial protected sandbox. . .controlling the attempted Downloadable
`
`execution therein”) are not recited in the rejected claim(s). Although the claims are interpreted
`
`in light of the specification, limitations from the specification are not read into the claims. See In
`
`re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). This position is further
`
`buttressed by dependent claim 29 which appears to specifically claim some of the features
`
`Appellant argues as necessary/inherent to a “sandboxed package.” As previously noted in the
`
`Final Action, the claims only require receiving a sandboxed package wherein the sandboxed
`
`package includes mobile protection code (“MPC”), a Downloadable, and one or more protection
`
`policies. Therefore, a “sandboxed package” is not merely an ordinary term of art, but instead a
`
`“sandboxed package” is defined by the claim language and supported by the specification of the
`
`Edery ‘633 patent. The discussion of what is included in a “sandboxed package” in the
`
`specification of the Edery ‘633 patent (see: Edery ‘633, column 3, lines 7-16) requires nothing
`
`more than is already stated in the claim.
`
`Second, Ji clearly teaches wherein the JAR (Java archive) file downloaded to the client
`
`machine anticipates the claimed “sandbox package” by including pre and post filter and
`
`monitoring package security policy functions and instrumented applet code (see: Ji, column 6,
`
`lines 38-42; column 7, lines 41-64). Ji further taught that once the JAR file was downloaded, the
`
`downloaded applet executed in a sandbox inside the web browser (see: Ji, column 5, lines 6-13:
`
`“its instructions are executed. . .monitored by the monitoring package software, also downloaded
`
`from the scanner”). Ji taught that all “monitoring and applet code is executed in the web
`
`browser” (see: Ji, column 6, lines 43-45) and that execution of the applet code is “monitored by
`
`the monitor package software” (see: Ji, column 5, lines 6-13). The monitoring package further
`
`Ex Parte Reexamination — Examiner's Answer
`
`Patent Owner Finjan, Inc. - Ex. 2001, p. 11
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`

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`Control Number: 90/013,016
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`Art Unit: 3992
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`Page 10
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`contains monitoring functions that are “invoked by the instrumentation code in the applet” (see:
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`Ji, column 7, lines 41-49), wherein the monitoring package is considered a “live agent” intended
`
`to prevent execution of the suspicious instructions (see: Ji, column 3, lines 45-50). Therefore,
`
`since “monitoring” is a function performed by the monitor package software during execution,
`
`and Ji discloses that the monitoring package software monitors the execution of the applet, the
`
`monitoring package software of Ji will be executed before the applet (i.e., the “downloadable-
`
`information”).
`
`Therefore, Appellant’s arguments regarding claim 28 are not persuasive.
`
`Claim 29
`
`Appellant argues (Appeal Brief: p. 20) that Ji does not teach the additional elements of
`
`dependent claim 29, because Ji requires the instrumented applet to be already executing in the
`
`client browser in order for Ji's monitor package to be invoked. Thus, Appellant argues that Ji
`
`executes the applet instructions first which invoke the monitoring instructions, which is the
`
`opposite of the claimed process.
`
`The Examiner respectfully disagrees with the Appellant. As noted above with regard to
`
`independent claim 28, Ji taught that once the JAR file was downloaded, the downloaded applet
`
`executed in a sandbox inside the web browser (see: Ji, column 5, lines 6-13: “its instructions are
`
`executed. . .monitored by the monitoring package software, also downloaded from the scanner”).
`
`Ji taught that all “monitoring and applet code is executed in the web browser” (see: Ji, column 6,
`
`Ex Parte Reexamination — Examiner's Answer
`
`Patent Owner Finjan, Inc. - Ex. 2001, p. 12
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`

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`Control Number: 90/013,016
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`Art Unit: 3992
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`Page 11
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`lines 43-45) and that execution of the applet code is “monitored by the monitor package
`
`software” (see: Ji, column 5, lines 6-13). The monitoring package further contains monitoring
`
`functions that are “invoked by the instrumentation code in the applet” (see: Ji, column 7, lines
`
`41-49), wherein the monitoring package is considered a “live agent” intended to prevent
`
`execution of the suspicious instructions (see: Ji, column 3, lines 45-50). Therefore, since
`
`“monitoring” is a function performed by the monitor package software during execution, and Ji
`
`discloses that the monitoring package software monitors the execution of the applet, the
`
`monitoring package software of Ji will be executed before the applet (i.e., the “downloadable-
`
`information”).
`
`Therefore, Appellant’s arguments regarding claim 29 are not persuasive.
`
`Claim 30
`
`Appellant argues (Appeal Brief: pp. 20-21) that the steps of claim 30 are being performed
`
`at the Ji reference equivalent of the client web browser 22, not at the server 32 of Ji. Appellant
`
`argues that the elements of claim 28 would have to occur at the receiving computer.
`
`The Examiner respectfully disagrees with the Appellant. Ji does disclose that the scanner
`
`26 at the server instruments an identified instruction by placing pre and post filter code around
`
`said instruction (see: Ji, column 3, lines 25-31; column 5, lines 16-27). However, as noted
`
`above, Ji specifically teaches that the applet and its instructions along with the monitoring
`
`package are executed at the client. Therefore, when the applet is conventionally interpreted by a
`
`Ex Parte Reexamination — Examiner's Answer
`
`Patent Owner Finjan, Inc. - Ex. 2001, p. 13
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`

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`Control Number: 90/013,016
`
`Art Unit: 3992
`
`Page 12
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`client web browser, the mobile protection code actively modifies the interfaces of the
`
`downloadable to resources at the destination (see: Ji, column 3, lines 38-44: “Upon, execution
`
`each instrumented instruction is subject to a security check”; column 5, line 28-column 6, line
`
`37: “first instruction sequence generates a call to a pre—filter function...is to be invoked...disallow
`
`any directory listing access. . .protect files under c:\temp”; column 7, lines 37-53: “also contains a
`
`security policy checker. . .to determine whether the applet being scanned violates a security
`
`policy”). The Examiner notes that the method by which the MPC modifies the interfaces is not
`
`clearly defined in the claims.
`
`Therefore, Appellant’s arguments regarding claim 30 are not persuasive.
`
`Claim 31
`
`Appellant argues (Appeal Brief: p. 21), as similarly discussed above with regard to claim
`
`30, that Ji does not disclose the modifying element in the first instance. Appellant argues that the
`
`portions of Ji cited in the Request for this element occur at the server 32, not at the client web
`
`browser 22.
`
`The Examiner respectfully disagrees with the Appellant. As similarly discussed above
`
`with regard to claim 30, the Examiner acknowledges that the scanner 26 at the server instruments
`
`identified instructions by placing pre and post filter code around said instructions (see: Ji,
`
`column 3, lines 25-31; column 5, lines 16-27). However, as further explained above, Ji
`
`specifically teaches that the client performs the function required by claim 31 when the applet
`
`Ex Parte Reexamination — Examiner's Answer
`
`Patent Owner Finjan, Inc. - Ex. 2001, p. 14
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`

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`Control Number: 90/013,016
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`Art Unit: 3992
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`Page 13
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`and monitoring code are actually executed at the client. Thus, Appellant’s argument that the
`
`portions of Ji cited in the Request (e.g., “after receiving the downloadable, executes the
`
`instructions, intercepting (diverting) calls to operating system resources attempted by the
`
`Downloadable. . .monitor package also creates a unique session upon instantiation. . .to determine
`
`whether the applet being scanned violates the security policy”) occur at the server are not
`
`persuasive.
`
`Therefore, Appellant’s arguments regarding claim 31 are not persuasive.
`
`Claim 32
`
`Appellant argues (Appeal Brief: p. 21), as similarly discussed above with regard to claim
`
`30, that Ji does not disclose the modifying element in the first instance. Appellant further argues
`
`that the Request does not even attempt to point to any portion of Ji for teaching the import
`
`address table (“IAT”) element.
`
`The Examiner respectfully disagrees with the Appellant. Appellant’s arguments are not
`
`persuasive for the same reasons given above with regard to claim 30. Additionally, the
`
`Examiner notes that the cited portions of the Request point to Ji’s JAR (Java archive) file for the
`
`clamed functionality of the import address table. Said JAR file containing all the necessary Java
`
`classes required by the applet for execution at the client browser, wherein each fetched Java class
`
`file is individually instrumented, then packed together and delivered to be executed by the client
`
`Ex Parte Reexamination — Examiner's Answer
`
`Patent Owner Finjan, Inc. - Ex. 2001, p. 15
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`

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`Control Number: 90/013,016
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`Art Unit: 3992
`
`Page 14
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`(e. g., see: Ji, column 7, lines 32-40: “extracts the class files from the JAR file. . .instruments the
`
`Java class files, e. g. by inserting monitoring instructions after each suspicious instruction”).
`
`Therefore, Appellant’s arguments regarding claim 32 are not persuasive.
`
`Claim 33
`
`Appellant argues (Appeal Brief: p. 22), as similarly discussed above with regard to claim
`
`30, that Ji does not disclose the modifying element in the first instance. Appellant argues that the
`
`portions of Ji cited in the Request for this element occur at the server 32, not at the client web
`
`browser 22.
`
`The Examiner respectfully disagrees with the Appellant. As similarly discussed above
`
`with regard to claim 30, the Examiner acknowledges that the scanner 26 at the server instruments
`
`identified instructions by placing pre and post filter code around said instructions (see: Ji,
`
`column 3, lines 25-31; column 5, lines 16-27). However, as further explained above, Ji
`
`specifically teaches that the client performs the function required by claim 33 when the applet
`
`and monitoring code are actually executed at the client. Thus, Appellant’s argument that the
`
`portions of Ji cited in the Request (e. g., “modification of the interfaces installs the monitoring
`
`package (to act as a filter-driver)....accessible to the web browser...first instruction...provided by
`
`the scanner...checks the security policy associated with the scanner. . .Both the pre- and post-filter
`
`functions update the session state”) occur at the server are not persuasive.
`
`Ex Parte Reexamination — Examiner's Answer
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`Patent Owner Finjan, Inc. - Ex. 2001, p. 16
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`

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`Control Number: 90/013,016
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`Art Unit: 3992
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`Page 15
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`Therefore, Appellant’s arguments regarding claim 33 are not persuasive.
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`Claim 44
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`Appellant argues (Appeal Brief: pp. 22-23) that Ji does not teach the additional
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`limitation, “and transmitting the downloadable—information without the mobile protection code if
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`the downloadable—information is determined not to include executable code.” Appellant further
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`argues that Ji only scans Java applets and it doesn’t scan non—applets, and most certainly does not
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`disclose claim elements pertaining to taking different actions based on a determination of
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`whether a downloadable contains or does not include executable code.
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`The Examiner respectfully disagrees with the Appellant. The Examiner first notes, as
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`discussed above, that Ji teaches all the limitations with respect to independent claim 1.
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`Additionally, as noted in the rejection set forth the in the Final Action, Ji specifically teaches
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`transmitting downloadable—information (i.e., non—applets) without mobile protection code if the
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`downloadable—information is determined not to include executable code (see: Ji, column 4, line
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`66—column 5, lines 5: “proxy server 32...Downloaded non—applets are not scanned”). As noted
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`above with regard to independent claim 1, Ji’s system takes a first action for downloadable-
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`inforrnation including executable code (i.e., scanning Java applets presumed to be executable
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`code) and takes a different action for other downloadable—information (i.e., not scanning non-
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`applet downloadable—information). In both cases the scanned applets and un—scanned non-
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`applets are then conventionally downloaded from the server to the client (local computer),
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`wherein only the scanned applets are transmitted with the claimed mobile protection code.
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`Ex Parte Reexamination — Examiner's Answer
`
`Patent Owner Finjan, Inc. - Ex. 2001, p. 17
`
`

`
`Control Number: 90/013,016
`
`Art Unit: 3992
`
`Page 16
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`Therefore, Appellant’s arguments regarding claim 44 are not persuasive.
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`C.
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`Anticipation Rejection: Ji
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`Ji anticipates claims 4-7, 48, and 49 under 35 U.S.C § 102(b)
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`Claim 4
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`Appellant argues (Appeal Brief: pp. 23-24) that the processes disclosed in Ji operate on a
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`single type (i.e., a Java applet), and are directed to scanning of this known type. Thus, Appellant
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`argues that it is common sense to conclude that Ji does not perform the claimed determination by
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`analyzing for a type indicator. Appellant notes that Ji is completely silent as to how Ji identifies
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`Java applets versus non—applets.
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`The Examiner respectfully disagrees with the Appellant. First, the Examiner notes that Ji
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`generally provides scanning for application programs such Java applets or ActiveX controls (see:
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`Ji, column 3, lines 16-21: “scanning for application programs, e. g. Java applets or ActiveX
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`contro1s...col1ectively referred to as applets”). In the fully disclosed embodiment, the Examiner
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`agrees that Ji shows scanning Java applets while non—applets are not scanned. Thus, as shown in
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`the Final Action, Ji at least specifically teaches determining if the type of file is a Java applet and
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`therefore reads on the claimed invention. The Examiner notes that the claims do not define what
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`the file type indicator comprises or that the downloadable is analyzed for multiple different type
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`indicators.
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`Ex Parte Reexamination — Examiner's Answer
`
`Patent Owner Finjan, Inc. - Ex. 2001, p. 18
`
`

`
`Control Number: 90/013,016
`
`Art Unit: 3992
`
`Page 17
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`Therefore, Appellant’s arguments regarding claim 4 are not persuasive.
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`Claim 5
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`Appellant argues (Appeal Brief: pp. 24-25), as similarly discussed above with regard to
`
`claim 4, that the processes disclosed in Ji operate on a single type (i.e., a Java applet), and are
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`directed to scanning of this known type. Appellant argues that portion of the Request cited is
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`simply fetching the class files for inclusion in the known JAR file, and thus there is no
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`“determining” by “analyzing for an included type detector” as required by the claim.
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`The Examiner respectfully disagrees with the Appellant. As similarly discussed above
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`with regard to dependent claim 4, the Examiner notes that the claims do not define what the type
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`detector comprises or that the downloadable is analyzed for multiple different types. As shown
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`in the Final Action, Ji specifically teaches wherein the dependency class files are extracted from
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`a detected JAR (Java archive) file, instrumented once, packed together, and delivered to the
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`client (see: Ji, column 7, lines 8-33: “pre—fetches the dependency class files...instrumented once,
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`packed together, and delivered...extracts the class files from the JAR file”). Thus, the teachings
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`described in Ji read on the claimed invention.
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`Therefore, Appellant’s arguments regarding claim 5 are not persuasive.
`
`Claim 6
`
`Ex Parte Reexamination — Examiner's Answer
`
`Patent Owner Finjan, Inc. - Ex. 2001, p. 19
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`

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`Control Number: 90/013,016
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`Art Unit: 3992
`
`Page 18
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`Appellant argues (Appeal Brief: pp. 25-27) that Ji does not perform the required
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`analyzing of downloadable—information for an included file type indicator. Appellant argues that
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`the cited portion of Ji is directed to retrieving all class files for a known Java applet and packing
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`into a JAR prior to delivering to a client. Appellant notes that this portion of Ji is simply
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`fetching what is already known to be associated with the known Java applet and thus there is no
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`analysis for both file type indicators and information patterns as required by the claim.
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`The Examiner respectfully disagrees with the Appellant. As similarly discussed above
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`with regard to dependent claim 4, the Examiner notes that the claims do not define what the file
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`type indicator or the information patterns comprise. As discussed above with regard to claim 4,
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`Ji specifically analyzing the downloadable—information for an included file type indicator (i.e., a
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`Java applet). As shown in the Final Action, Ji teaches two components that read on the claimed
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`“information pattern.” Ji specifically teaches scanning for known suspicious instructions (e.g.,
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`“java.io.File.list”) as well as identifying Java class files within a JAR (Java archive) file. Thus,
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`the teachings described in Ji read on the claimed invention.
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`Therefore, Appellant’s arguments regarding claim 6 are not persuasive.
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`Claim 7
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`Appellant argues (Appeal Brief: p. 27) that Ji does not make the claimed determination.
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`Accordingly, Appellant argues that the additional elements of claim 7, which furth