VirnetX Exhibit 2001
`Black Swamp IP, LLC v. VirnetX Inc.
`IPR2016-00693
`Trial PGR2016-00007
`
`Page 1 of 144
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`

`
`Transmittal of Communication to
`
`
`
`Third Party Requester
`.
`.
`
`Control No.
`
`95/001,851
`E
`'
`
`Patent Under Reexamination
`
`7418504
`A t U "I
`
`ROLAND FOSTER
`
`3992
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address. --
`
`Ij (THIRD PARTY REQUESTER‘S CORRESPONDENCE ADDRESS) 3'
`
`David L. McCombs
`HAYNES AND BOONE, LLP, IP SECTION
`2323 Victory Ave., Suite 700
`Dallas, TX 75219
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark Office
`in the above-identified reexamination prceeding. 37 CFR 1.903.
`
`Prior to the filing of a Notice of Appeal, each time the patent owner responds to this communication,
`the third party requester of the inter partes reexamination may once file written comments within a
`period of 30 days from the date of service of the patent owner's response. This 30-day time period is
`statutory (35 U.S.C. 314(b)(2)), and, as such, it cannot be extended. See also 37 CFR 1.947.
`
`If an ex parte reexamination has been merged with the interpartes reexamination, no responsive
`submission by any ex parte third party requester is permitted.
`
`All correspondence relating to this inter partes reexamination proceeding should be directed to the
`Central Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end of the
`communication enclosed with this transmittal.
`
`U.S. Patent and Trademark Office
`PTOL-2070 (Rev. 07-04)
`
`Page 2 of 144
`
`Paper No. 20140930
`
`Page 2 of 144
`
`

`
`Right of Appeal Notice
`
`95/001,851
`
`7418504
`
`Control No.
`
`Patent Under Reexamination
`
`‘3’
`
`
`
`ROLAND FOSTER
`
`3992
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address. --
`
`Responsive to the communication(s) filed by:
`Patent Owner on 30 July, 2014
`Third Party(ies) on 29 August, 2014
`
`Patent owner and/or third party requester(s) may file a notice of appeal with respect to any adverse decision
`with payment of the fee set forth in 37 CFR 41 .20(b)(1) within one-month or thirty-days (whichever is
`longer). See MPEP 2671. In addition, a party may file a notice of cross appeal and pay the 37 CFR
`41 .20(b)(1) fee within fourteen days of service of an opposing party's timely filed notice of appeal. See
`MPEP 2672.
`
`All correspondence relating to this inter partes reexamination proceeding should be directed to the Central
`Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end of this Office action.
`
`If no party timely files a notice of appeal, prosecution on the merits of this reexamination proceeding will be
`concluded, and the Director of the USPTO will proceed to issue and publish a certificate under 37 CFR 1.997 in
`accordance with this Office action.
`
`The proposed amendment filed
`
`|:I will be entered
`
`I:I will not be entered*
`
`*Reasons for non-entry are given in the body of this notice.
`
`1a. IX] Claims 1-35 and 60 are subject to reexamination.
`1b. IX] Claims J are not subject to reexamination.
`2. El Claims j have been cancelled.
`
` $°.°°.\‘.°7.0":'>.°°
`
`are confirmed. [Unamended patent claims].
`|:I Claims
`IX] Claims u are patentable. [Amended or new claims].
`IX] Claims 1-10 12-35 and 60 are rejected.
`|:I Claims j are objected to.
`I:I are not acceptable.
`I:I are acceptable.
`|:I The drawings filed on
`|:I The drawing correction request filed on
`is I:| approved. I:| disapproved.
`I:I Acknowledgment is made of the claim for priority under 35 U.S.C. 119 (a)-(d) or (f). The certified copy
`has:
`
`I:I been received.
`10. D Other
`
`Attachments
`
`I:I not been received.
`
`I:I been filed in Application/Control No.
`
`1. El Notice of References Cited by Examiner, PTO-892
`2.
`IX] Information Disclosure Citation, PTO/SB/08
`3.I:I
`
`U.S. Patent and Trademark Office
`PTOL-2066 (08-06)
`
`Page 3 of 144
`
`Right of Appeal Notice (37 CFR 1.953)
`
`Part of Paper No. 20140930
`
`Page 3 of 144
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`

`
`Application/Control Number: 95/001,851
`
`Page 2
`
`Art Unit: 3992
`
`RIGHT OF APPEAL NOTICE
`
`1.
`
`Procedural History
`
`Prosecution after the ACP
`
`This Office action addresses claims 1-35 and 60 of United States Patent No. 7,418,504
`
`B2 (the "Larson" patent), for which reeXan1ination was granted in the Order Granting Inter
`
`Partes ReeXan1ination (hereafter the "Order"), mailed March 1, 2012, in response to a Request
`
`for Inter Partes Reexamination, filed December 13, 2011 (the "Request").
`
`An Action Closing Prosecution ("ACP") mailed May 30, 2014 rejecting original claims
`
`1-10 and 12-16 of the Larson patent. Original claim 11 was found patentable. The patent owner
`
`also filed a supplemental declaration of Angelos D. Keromytis, Ph.D., on January 2, 2013 (the
`
`"Supplemental Keromytis Declaration"), which is entered into the record and considered in the
`
`ACP in accordance with the Petition Decision mailed December 12, 2013.
`
`The patent owner responded by filing arguments and associated evidence on July 30,
`
`2014 (the "Response").
`
`The third party requester responded by filing Comments on the Patent Owner's Response
`
`on August 29, 2014 (the "Comments").
`
`Prosecution of Claims 36-59 Is Terminated.
`
`In the decision mailed September 17, 2014, the Office determined that the estoppel
`
`provisions of pre-AlA 35 U.S.C. 317(b) apply to any rejection of claims 36-59 in this
`
`proceeding. Accordingly, the estoppel provisions of pre-AIA 35 U.S.C. 317(b) apply to all
`
`rejections of claims 36-59 of the Larson patent which were applied in the May 30, 2014 Action
`
`Page 4 of 144
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`Page 4 of 144
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`

`
`Application/Control Number: 95/001,851
`
`Page 3
`
`Art Unit: 3992
`
`Closing Prosecution. Pursuant to the September 17, 2014 decision, these rejections will not be
`
`further maintained by the Office, and have been withdrawn. No further rejection of claims 36-59
`
`of the Larson patent will be made in the present reexamination proceeding.
`
`Because all rejections of claims 36-59 of the Larson patent have been withdrawn
`
`pursuant to the estoppel provisions of pre-AIA 35 U.S.C. 317(b), the Withdrawal of these
`
`rejections is not a “non-adoption of” or a “determination not to make” these rejections within the
`
`meaning of 37 CFR 41.61. Any notice of appeal or cross—appeal of the present determination
`
`not to make or maintain a rejection of claims 36-59 of the Larson patent will be held to be
`
`defective.
`
`Prosecution of the Remaining Claims 1-35 and 60 Will Continue.
`
`The Larson patent under reexamination (the '504 patent) was the subject of a Federal
`
`Circuit decision holding the claims were not proved invalid. See Virnetx, Inc. v. Cisco Systems,
`
`Inc., 767 F.3d 1308 (Fed. Circ. 2014). The parties in that litigation are parties to this
`
`proceeding. However, the VimetX decision remanded the case back to the district court for
`
`further proceedings on other grounds. The patent owner has not provided any evidence that this
`
`decision is a final decision that the subject claims are not invalid. MPEP § 2686.04.IV.
`
`Prosecution of the remaining claims 1-35 and 60 will continue.
`
`Page 5 of 144
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`Page 5 of 144
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`

`
`Application/Control Number: 95/001,851
`
`Page 4
`
`Art Unit: 3992
`
`Submissions of Evidence after the Action Closing Prosecution
`
`The patent owner also filed a declaration of Fabian Monrose, Ph.D., on July 30, 2014 (the
`
`"Monrose Declaration"). The Patent Owner asserts the ACP "advances new grounds of rejection
`
`and new positions," thus satisfying the 37 C.F.R. § l.ll6(e) requirement to make "a showing of
`
`good and sufficient reasons" why the Monrose Declaration is "necessary and was not earlier
`
`presented." (Response at 1). However, the ACP does not advance any new grounds of rejection
`
`nor adopt new positions, see the Petition Decision mailed September 26, 2014. Thus, the Patent
`
`Owner's asserted basis for the "showing of good and sufficient reasons" to enter the Monrose
`
`Declaration is incorrect. Accordingly, no showing has been made and the Monrose Declaration
`
`will not be entered.
`
`After an ACP in an inter partes reexamination, the patent owner may once file comments
`
`lin1ited to the issues raised in the Office action closing prosecution. 37 CFR § 1.951 (a). Thus,
`
`the patent owner may not file additional comments showing why the Monrose Declaration
`
`should be entered.
`
`The Monrose Declaration is not of record in this proceeding. The examiner however has
`
`briefly reviewed the Monrose Declaration, but it does not persuade the examiner to withdraw any
`
`rejection.
`
`2.
`
`Decisions Unfavorable to Patentability
`
`2.A.
`
`Prior Art
`
`A total of four principal references, in certain combinations, have been asserted in the
`
`Request as providing teachings relevant to the claims of the Larson patent.
`
`Page 6 of 144
`
`Page 6 of 144
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`

`
`Application/Control Number: 95/001,851
`
`Page 5
`
`Art Unit: 3992
`
`Rolf Lendenmann, Understanding OSF DCE 1.1 for AIX and OS/2, IBM International Technical
`Support Organization (Oct. 1995) (“Lendenmann”), attached as Exhibit D—1 (parts 1 and 2) to
`the Request.
`
`U.S. Patent No. 6,119,234 (“Aziz”), attached as Exhibit D—2 to the Request.
`
`Takahiro Kiuchi and Shigekoto Kaihara, “C—HTTP—The Development of a Secure, Closed HTTP-
`based Network on the Internet,” Proceedings of the Symposium on Network and Distributed
`System Security, 1996 (“Kiuchi”), attached as Exhibit D—16 to the Request.
`
`Bryan Pfaffenberger, Netscape Navigator 3.0: Surfing the Web and Exploring the Internet,
`Academic Press (1996) (“Pfaffenberger”), attached as Exhibit D—17 to the Request.
`
`The request also asserts additional references to explain features in the principal
`
`references or as secondary teaching references.
`
`Information Sciences Institute, “Transmission Control Protocol,” DARPA Internet Program
`Protocol Specification Request for Comments 793 (Sept. 1981) (“RFC 793”), attached as Exhibit
`D—3.
`
`D. Eastlake and C. Kaufman, Network Working Group, Information Sciences Institute, “Domain
`Name System Security Extensions,” Request for Comments 2065 (Jan. 1997) (“RFC 2065”),
`attached as Exhibit D—4.
`
`U.S. Patent No. 5,898,830 (“Wesinger”), attached as Exhibit D—5 to the Request.
`
`U.S. Patent No. 5,689,641 (“Ludwig”), attached as Exhibit D—6 to the Request.
`
`David M. Martin, “A Framework for Local Anonymity in the Internet,” Technical Report.
`Boston University, Boston, MA, USA (Feb. 21, 1998) (“Martin”), attached as Exhibit D—7.
`
`Bruce Schneier, Applied Cryptography (1996) (“Schneier”), attached as Exhibit D—8.
`
`Lawton, George, “New top—level domains promise descriptive names,” Sunworld Online,
`September 1996 (“Lawton”), attached as Exhibit D—9.
`
`Gaspoz, Jean—Paul, “VPN on DCE: From Reference Configuration to Implementation,” Bringing
`Telecommunication Services to the People — IS&N ’95, Third International Conference on
`Intelligence in Broadband Services and Networks, October 1995 Proceedings (“Gaspoz”),
`attached as Exhibit D—10.
`
`U.S. Patent No. 6,269,099 (“Borella”), attached as Exhibit D—11 to the Request.
`
`Page 7 of 144
`
`Page 7 of 144
`
`

`
`Application/Control Number: 95/001,851
`
`Page 6
`
`Art Unit: 3992
`
`U.S. Patent No. 6,560,634 (“Broadhurst”), attached as Exhibit D-12 to the Request.
`
`Mark Pallen, “The World Wide Web,” British Medical Journal, vol. 311 at 1554 (Dec. 9, 1995)
`(“Pallen”), attached as Exhibit D-13.
`
`R.L. Rivest et al., “A Method for Obtaining Digital Signatures and Public—Key Cryptosystems,”
`Communications of the ACM, vol. 21, no. 2, pp. 120-126 (Feb. 1978) (“Rivest”), attached as
`Exhibit D-14.
`
`U.S. Patent No. 4,952,930 (“Franaszek”), attached as Exhibit D-15 to the Request.
`
`Frederic Gittler et al., “The DCE Security Service,” Hewlett-Packard Journal, pp. 41-48, (Dec.
`1995) (“Gittler”), attached as Exhibit D-18 .
`
`2.B.
`
`Summary Regarding Those Proposed Rejections Adopted and Not Adopted
`by the Examiner
`
`As will be explained in Section 3 (Response to Arguments), the rejections identified in
`
`Issues 1, 3-5, 7, 8, 11-13, 15, 17, 18, 20 and 21 (Request, pp. 31-34) remain adopted. The
`
`rejections identified in Issues 9 and 16 remain adopted except for the rejections of claims 5, 23,
`
`27 and 50 (Issue 9) and 10-13 (Issue 16), which are withdrawn. All rejections identified in
`
`Issues 2, 6, 10, 14 and 19 are Withdrawn. Claims 1-10, 12-35 and 60 however remain rejected
`
`under at least one grounds of rejection. The withdraw of rejections related to claims 36-59 is not
`
`a “non-adoption of” or a “determination not to make” these rejections within the meaning of 37
`
`CFR 41.61. See Section 1 for further details.
`
`2.C.
`
`Entitlement to the Benefit of an Earlier Filing Date
`
`Requestor asserts that the instant claims are not entitled to the earliest filing date of
`
`October 30, 1998, the filing date of the oldest parent, provisional application. None of the
`
`principal references asserted by the third party requester appear to be intervening references nor
`
`Page 8 of 144
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`Page 8 of 144
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`

`
`Application/Control Number: 95/001,851
`
`Page 7
`
`Art Unit: 3992
`
`does the statutory basis of rejections based upon the principal reference appear to be affected by
`
`the entitlement question. Nonetheless, the examiner agrees with the third party requester. Each
`
`of the independent claims recite a "domain name service" and a "domain name service system"
`
`limitation. A continuation—in—part application (“CIP”) 09/558,210, filed April 26, 2000, includes
`
`a section entitled “Continuation-in-Part Improvements” on page 56 specifically discussing secure
`
`domain name service queries on pages 81-88. The parent applications prior to this date do not
`
`appear to even be directed to services similar to domain name lookup. Thus, the applications
`
`filed prior to April 26, 2000 fail to provide written description support nor enable the subject
`
`matter recited in claims 1-60 of the Larson patent. Accordingly, the effective filing date for
`
`claims 1-35 and 60 is no earlier than the April 26, 2000 filing date of CIP application
`
`09/558,210.
`
`2.D.
`
`Rejections Based upon Lendenmann (Issues 1, 3-5, 7 and 8)
`
`Claim Rejections - 35 USC § 102
`
`The following is a quotation of pre-AIA 35 U.S.C. 102 which forms the basis for all
`
`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.
`
`(Issue 1) Claims 1-3, 5, 6, 14-30, 33-35, and 60 are rejected under 35 U.S.C. 102(b) as
`
`being anticipated by Lendenmann.
`
`Page 9 of 144
`
`Page 9 of 144
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`

`
`Application/Control Number: 95/001,851
`
`Page 8
`
`Art Unit: 3992
`
`Claim Rejections - 35 USC § 103
`
`The following is a quotation of pre—AIA 35 U.S.C. l03(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.
`
`(Issue 3) Claim 7 is rejected under 35 U.S.C. l03(a) as being unpatentable over
`
`Lendenmann as applied to the respective, parent claims above, and further in view of Wesinger.
`
`(Issue 4) Claims 8 and 9 are rejected under 35 U.S.C. l03(a) as being unpatentable over
`
`Lendenmann as applied to the respective, parent claims above, and further in view of Gaspoz.
`
`(Issue 5) Claim 10 is rejected under 35 U.S.C. l03(a) as being unpatentable over
`
`Lendenmann in view of Gaspoz, as applied to the respective, parent claims above, and further in
`
`view of Schneier.
`
`(Issue 7) Claims 12 and 13 are rejected under 35 U.S.C. l03(a) as being unpatentable
`
`over Lendenmann in view of Gaspoz, as applied to the respective, parent claims above, and
`
`further in view of RFC 793.
`
`(Issue 8) Claims 31 and 32 are rejected under 35 U.S.C. l03(a) as being unpatentable
`
`over Lendenmann in view of Ludwig, as applied to the respective, parent claims above, and
`
`further in view of RFC 793.
`
`Page 10 of 144
`
`Page 10 of 144
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`

`
`Application/Control Number: 95/001,851
`
`Page 9
`
`Art Unit: 3992
`
`Summary
`
`Independent claim 1 is representative of all independent claims. Independent claim 1
`
`recites:
`
`1. A system for providing a domain name service for establishing a secure communication
`link, the system comprising:
`
`a domain name service system configured to be connected to a communication network, to
`store a plurality of domain names and corresponding network addresses, to receive a query
`for a network address, and to comprise an indication that the domain name service system
`supports establishing a secure communication link.
`
`Regarding the specification of the Larson patent for which reexamination is requested,
`
`Fig. 25 (reproduced below) is labeled “prior art."
`
`
`
` .4‘
`
`
`ttlttttlttltllllllllll/I
`
`444444444444, §’
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`E§‘§S $8523‘
`
`—
`
`Page 11 of 144
`
`Page 11 of 144
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`

`
`Application/Control Number: 95/001,851
`
`Page 10
`
`Art Unit: 3992
`
`Fig. 25 (prior art) discloses: (1) a domain name service system configured to be
`
`connected to a communication network, (2) storing a plurality of domain names and
`
`corresponding network addresses, and (3) receiving a query for a network address. Thus, all
`
`limitations in claim 1 are admitted prior art except the final limitation “to comprise an indication
`
`that the domain name service system supports establishing a secure communication link.”
`
`Nonetheless Lendenmann teaches all the limitations in representative claim 1.
`
`Lendenmann describes a Distributed Computing Environment ("DCE") providing a directory
`
`service specifically including a Cell Directory Service (CDS).
`
`(P. 10, section 1.4.4 DCE
`
`Directory Service).
`
`Regarding the limitation “domain name service configured for connection to a
`
`communication network,” Lendenmann teaches that the CDS (domain name service) is
`
`connected to a communication network, as illustrated in Fig. 15, which is reproduced below:
`
`
`
`¥f*k§§i§§% ii
`
`s
`
`‘
`
`....\
` \_
`
`
`
`
`
`in
`
`
`
`
`
`Page 12 of 144
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`Page 12 of 144
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`

`
`Application/Control Number: 95/001,851
`
`Page 11
`
`Art Unit: 3992
`
`Regarding the limitation “to store a plurality of domain names and corresponding
`
`network addresses” then “to receive a query for a network address,” Lendenmann teaches
`
`regarding the CDS (domain name service) at p. 21, section 2.2:
`
`The directory service component that controls names inside a cell is called the Cell Directory
`Service (CDS). The CDS stores names of resources in that cell so that when given a name, CDS
`returns the network address of the named resource.
`
`See also the CDS lookup process described on pages 29-34.
`
`Regarding the limitation to provide an “indication that the domain name service supports
`
`establishing a secure communications link,” a query from a client to a directory service (CDS)
`
`server via a network is made by a remote procedure call, as illustrated in Fig. 15, which is
`
`reproduced below. See also pp. 9 and 173.
`
`Page 13 of 144
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`Page 13 of 144
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`

`
`Application/Control Number: 95/001,851
`
`Page 12
`
`Art Unit: 3992
`
`.}\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\.\:
`
`»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»»xx
`
`
`
`».‘2§'§'v§.:§*2$k
`
`
`-‘nanyanyanyanyanyanyanyanynnnnnznnnn.
`
`
`Lendenmann further teaches that RCP calls relies upon well—known authentication
`
`algorithms, such as shared—secret key and public key (p. 192, section 10.4.1) including supplying
`
`the requesting client with a session key and a service ticket encrypted with server’s session key
`
`(i.e., digitally signed certificate) (p. 194). The client encrypts the RPC call with the session key,
`
`which the "server immediately challenges...by sending it a randomly generated number which
`
`the client has to encrypt with the session key and return to the server." (P. 194, section 10.4.4).
`
`The client transmits the encrypted response, which the server decrypts using the server's session
`
`key obtained from the decrypted service ticket. If the decrypted random number matches, then
`
`the "session key is used in further communication over the binding." Id. Thus, the sending of
`
`the "randomly generated number" is an indication that the domain name service (CDS reached
`
`Page 14 of 144
`
`Page 14 of 144
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`

`
`Application/Control Number: 95/001,851
`
`Page 13
`
`Art Unit: 3992
`
`via a RCP call via the network) supports the establishment of subsequent, secure communication
`
`link using a shared secret key (the session key) for encryption/decryption.
`
`By returning the network address corresponding to a secure domain name, the Cell
`
`Directory Service (CDS) also provides "an indication...." as recited in the claim. (Request,
`
`Exhibit F—l, claim chart, p. 13). Similarly, by only performing operations for users authorized
`
`using access control lists (ACLs), the CDS provides an indication that supports establishing a
`
`secure communication link. (Id at 14).
`
`Incorporation by Reference
`
`Thus, the third party requester proposed rejection of claims identified above as set forth
`
`on pages 11-17, 31, 32 and Exhibit F—1 (claim chart), are adopted and incorporated by reference.
`
`2.E.
`
`Rejections Based upon Aziz (Issues 9, 11-13, 15)
`
`Claim Rejections - 35 USC § 102
`
`The following is a quotation of pre—AIA 35 U.S.C. l02(e) which forms the basis for all
`
`obviousness rejections set forth in this Office action:
`
`A person shall be entitled to a patent unless —
`
`(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 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.
`
`Page 15 of 144
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`Page 15 of 144
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`

`
`Application/Control Number: 95/001,851
`
`Page 14
`
`Art Unit: 3992
`
`(Issue 9) Claims 1, 2, 6-9, 14-22, 24, 25, 28, 33-35, and 60 are rejected under 35
`
`U.S.C. l02(e) as being anticipated by Aziz.
`
`Claim Rejections - 35 USC § 103
`
`(Issue 11) Claim 3, 4, and 26 are rejected under 35 U.S.C. 103(a) as being unpatentable
`
`over Aziz as applied to the respective, parent claims above, and further in View of Lawton.
`
`(Issue 12) Claim 9 is rejected under 35 U.S.C. 103(a) as being unpatentable over Aziz as
`
`applied to the respective, parent claims above, and further in view of Franaszek.
`
`(Issue 13) Claim 10 is rejected under 35 U.S.C. 103(a) as being unpatentable over Aziz
`
`as applied to the respective, parent claims above, and further in view of Schneier.
`
`(Issue 15) Claims 29-32 are rejected under 35 U.S.C. 103(a) as being unpatentable over
`
`Aziz, as applied to the respective, parent claims above, and further in view of Ludwig.
`
`Summary
`
`Independent claim 1 is representative of all independent claims, as discussed above.
`
`Sin1ilarly, the features of independent claim 1 have been discussed.
`
`Also as discussed, all limitations in claim 1 are admitted prior art except the final
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`limitation “to comprise an indication that the domain name service system supports establishing
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`a secure communication link.”
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`Nonetheless Aziz teaches all the limitations in representative claim 1. Aziz describes a
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`"secure domain name server for a computer network,” where the “domain name database stores
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`secure computer network addresses for the computer network." (Abstract).
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`Page 16 of 144
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`Page 16 of 144
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`Application/Control Number: 95/001,851
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`Page 15
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`Art Unit: 3992
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`Regarding the limitation “domain name service configured for connection to a
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`communication network,” see the Aziz abstract, as discussed above. See also Fig. 1, reproduced
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`below, which illustrates the outside name server 120 (NDS) connected to public network 190.
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`Pm. *5
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`/IIIIIItItlttlttlttlttlttttttlttlI.....
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`
`
`
`
`
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` 4"““4““““““4““‘““'““———‘-'~H"v1-rI9r—‘H-V115-.~1-.Vvv1'vvar-navvvvlvlr-«-rn-nu.-n
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`////(/1///(1
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`Regarding the limitation “to store a plurality of domain names and corresponding
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`network addresses” then “to receive a query for a network address,” Aziz teaches at col. 1, ll. 26-
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`38:
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`In the Internet world, the names and addresses of hosts are stored in databases on computers
`located throughout the world. A computer that has one of these databases, and responds to
`queries for a host's address, is known by various names, including "Domain Name Server" or
`simply "name server." Because so many host computers have Internet addresses, it is not practical
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`Page 17 of 144
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`Page 17 of 144
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`Application/Control Number: 95/001,851
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`Page 16
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`Art Unit: 3992
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`to maintain the name and address information for all hosts in one database. Instead, such
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`information is distributed among the Internet Domain Name Servers throughout the world.
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`Domain Name Servers and their associated name and address databases are just one system used
`to respond to address queries (also referred to as "resolving addresses").
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`Regarding the limitation to provide an “indication that the domain name service supports
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`establishing a secure communications link,” Aziz describes configuring the DNS to respond to
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`requests with a special record that includes information needed for secure communications:
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`The registered name server for a domain is configured to return a new resource
`record type, herein called an SX record, in response to requests for information needed for secure
`communications with protected hosts in that domain. The resolver on (or otherwise associated
`with) the authorized client is configured to use the data in the SX record to dynamically update
`the information used by the client to handle secure communications.
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`(Col. 4, ll. 8-16).
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`Alternatively, a name server can be configured to return an SX record in the response that
`includes the answer to a query for some other record. For example, if the client queries for a host
`address, a name server might send a response with the host address in the answer section and the
`SX record in the additional section.
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`(Col. 4, ll. 44-49).
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`Thus, the presence of SX records in the response from the DNS (NS 120) provides an
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`indication that the DNS establishing a secure communication link.
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`Aziz describes automatically adding the KEY and SIG records, which also provides "an
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`indication...." as recited in the claim. (Request at 19).
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`Page 18 of 144
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`Application/Control Number: 95/001,851
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`Page 17
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`Art Unit: 3992
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`Incorporation by Reference
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`Thus, the third party requester proposed rejection of the claims identified above on pages
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`11, 12, 17-20, 32, 33 and Exhibit F—2 (claim chart), are adopted and incorporated by reference.
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`2.F.
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`Rejections Based upon Kiuchi and Pfaffenberger (Issues 16-18, 20, 21)
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`Claim Rejections - 35 USC § 103
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`(Issue 16) Claims 1-4, 6, 8, 9, 14-19, 22, 24-30, 33, 34, and 60 are rejected under 35
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`U.S.C. l03(a) as being unpatentable over Kiuchi in View of Pfaffenberger.
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`(Issue 17) Claims 5 and 23 are rejected under 35 U.S.C. l03(a) as being unpatentable
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`over Kiuchi in View of Pfaffenberger as applied to the respective, parent claims above and
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`further in view of Rivest.
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`(Issue 18) Claim 7 is rejected under 35 U.S.C. l03(a) as being unpatentable over Kiuchi
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`in view of Pfaffenberger as applied to the respective, parent claims above and further in view of
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`Borella.
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`(Issue 20) Claims 20, 21, and 35 are rejected under 35 U.S.C. l03(a) as being
`
`unpatentable over Kiuchi in view of Pfaffenberger as applied to the respective, parent claims
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`above and further in view of Broadhurst.
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`(Issue 21) Claims 31, 33, and 35 are rejected under 35 U.S.C. l03(a) as being
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`unpatentable over Kiuchi in view of Pfaffenberger as applied to the respective, parent claims
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`above and further in view of Ludwig.
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`Page 19 of 144
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`Page 19 of 144
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`Application/Control Number: 95/001,851
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`Page 18
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`Art Unit: 3992
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`Summary
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`Independent claim 1 is representative of all independent claims, as discussed above.
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`Sin1ilarly, the features of independent claim 1 have been discussed.
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`Also as discussed, all lin1itations in claim 1 are admitted prior art except the final
`
`limitation “to comprise an indication that the domain name service system supports establishing
`
`a secure communication link.”
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`Nonetheless, Kiuchi in View of Pfaffenberger teaches all the limitations in representative
`
`claim 1. Kiuchi describes a "closed HTTP—based network" ("C—HTTP”) on the lntemet that
`
`relies in part upon a "C—HTTP name server." Abstract.
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`Regarding the limitations directed to a domain name service configured for connection to
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`a communication network, storing a plurality of domain names and corresponding network
`
`addresses, then receiving a query for a network address, Kiuchi states at p. 65, section 2.3,
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`subsections (2) and (3):
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`A c1ient—side proxy asks the C—HTTP name server whether it can communicate with the host
`specified in a given URL. If the name server confirms that the query is legitimate, it examines
`whether the requested server—side proxy is registered in the closed network and is permitted to
`accept the connection form the c1ient—side proxy. If the connection is permitted, the C—HTTP
`name server sends the IP address and public key of the server—side proxy and both request and
`response Nonce values. If it is not permitted, it sends a status code which indicates an
`error. . .When the C—HTTP name server confirms that the specified server—side proxy is an
`appropriate closed network member, a client side proxy sends a request for connection to the
`server—side proxy, which is encrypted using the server—side proxy’s public key....
`
`The same section of Kiuchi cited above also teaches providing an indication that the
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`domain name service supports establishing a secure communications link. Specifically, the
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`sending of the "public key" is an indication that the domain name service (C—HTTP name server)
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`Page 20 of 144
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`Page 20 of 144
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`Application/Control Number: 95/00l,85l
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`Page 19
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`Art Unit: 3992
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`supports the establishment of subsequent, secure communication link using a shared public key
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`for encryption/decryption.
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`Pfaffenberger also describes indicating support for a secure communication link by
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`providing a visible icon on an http browser (Request at 22-24) and that the addition of an http
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`browser to the C—http system of Kiuchi would have been obvious ( 22).
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`Incorporation by Reference
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`Thus, the third party requester proposed rejection of claims identified above on pages ll,
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`12, 20-24, 33, 34 and Exhibit F—3 (claim chart), are adopted and incorporated by reference.
`
`3.
`
`Response to Arguments
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`The examiner has considered the arguments and evidence of record provided in both the
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`patent owner's Response, the third party requester's Comments, and the Supplemental Keromytis
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`Declaration. Based on consideration of the entire record, the third party requester's arguments
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`and evidence are deemed more persuasive.
`
`The patent owner appears to have presented new arguments in the Response while
`
`dropping other arguments presented in the prior ACP(s) mailed May 30, 2014 and October l,
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`2012; and the RAN mailed June 25, 2013. The reader of this RAN is requested to consult the
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`prosecution history, including prior Office actions, for rebuttals to “older” arguments should they
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`be re—presented upon appeal.
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`Page 21 of 144
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`Page 21 of 144
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`Application/Control Number: 95/001,851
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`Page 20
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`Art Unit: 3992
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`3.1.
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`Claim Interpretation
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`Claim 1, which is representative, broadly recites (emphasis added):
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`A system for providing a domain name service for establishing a secure
`communication link, the system comprising:
`
`a domain name service system configured to be connected to a communication network, to store
`a plurality of domain names and corresponding network addresses, to receive a query for a
`network address, and to comprise an indication that the domain name service system
`supports establishing a secure communication link.
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`Domain Name Service (DNS) System
`
`66
`Thus, claim 1 recites a domain name service (“DNS”) system” and not a particular
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`computer device or structur