UNITED STATES pATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www .uspto.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
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`90/013,016
`
`10/07/2013
`
`7647633
`
`FINREXM0005
`
`9521
`
`05/22/2015
`7590
`115222
`Bey & Cotropia PLLC (Fin jan Inc.)
`Dawn-Marie Bey
`213 Bayly Court
`Richmond, VA 23229
`
`EXAMINER
`
`BASEHOAR, ADAM L
`
`ART UNIT
`
`PAPER NUMBER
`
`3992
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`MAIL DATE
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`DELIVERY MODE
`
`05/22/2015
`
`PAPER
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
`
`PTOL-90A (Rev. 04/07)
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`Blue Coat Systems - Exhibit 1061 Page 1
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`

`
`Commissioner for Patents
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-·1450
`W"aAA"I.IJ:.'=ptO.QOV
`
`DO NOT USE IN PALM PRINTER
`
`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
`
`RYAN W. COBB, DLA PIPER LLP (US)
`
`2000 University Avenue
`
`East Palo Alto, CA 94303-2215
`
`EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO. 901013,016.
`
`PATENT NO. 7647633.
`
`ART UN IT 3992.
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the above identified ex parte reexamination proceeding (37 CFR 1.550(f)).
`
`Where this copy is supplied after the reply by requester, 37 CFR 1.535, or the time for filing a
`reply has passed, no submission on behalf of the ex parte reexamination requester will be
`acknowledged or considered (37 CFR 1.550(g)).
`
`PTOL-465 (Rev.0?-04)
`
`Blue Coat Systems - Exhibit 1061 Page 2
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`

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`Application/Control Number: 90/013,016
`Art Unit: 3992
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`Page 2
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`The present application is being examined under the pre-AlA first to invent provisions.
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`DETAILED ACTION
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`1.
`
`This Office action addresses original claims 1-7 and 28-33 as well as newly presented
`
`claims 42-52 of United States Patent Number 7,647,633 B2 (Edery et al.), for which it has been
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`determined in the Order Granting Ex Parte Reexamination (hereafter the "Order") mailed
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`11119/2013 that a substantial new question of patentability was raised in the Request for Ex
`
`Parte reexamination filed on 10/07/2013 (hereafter the "Request"). Claims 8-27 and 34-41 of
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`the Edery '633 patent are not subject to this reexamination proceeding. A Non-Final Action was
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`mailed on 11119/2013 rejecting claims 1-7 and 28-33.
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`2.
`
`This is a Final Action in response to the Patent Owner's (PO) Response to Non-Final
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`Office Action (hereafter the "PO Response") filed 02119/2014. The PO Response included claim
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`amendments to present new claims 42-52. The claim amendments have been entered and made
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`of record. Thus, claims 1-7, 28-33, and 42-52 are currently pending and subject to
`
`reexamination.
`
`3.
`
`Patent Owner filed a Petition to Accept Unintentionally Delayed Priority Claim under 37
`
`C.P.R.§ 1.78 on 02/19/2014. The Petition was accompanied by an Amendment to the
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`Specification to correct the language of the benefit claim recited in the first paragraph of the
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`specification. On 07/25/2014 the Office mailed a Petition Decision that dismissed said Petition.
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`Therefore, the Amendment to the Specification filed on 02119/2014 has not been entered.
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`Blue Coat Systems - Exhibit 1061 Page 3
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`

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`Application/Control Number: 90/013,016
`Art Unit: 3992
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`Page 3
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`Subsequently, Patent Owner filed a Renewed Petition to Accept Unintentionally Delayed Priority
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`Claim under 37 C.P.R.§ 1.78 on 08/25/2014. The Renewed Petition was accompanied by a
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`Supplemental Amendment to the Specification to correct the language of the benefit claim
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`recited in the first paragraph of the specification. On 01/23/2015 the Office mailed a Petition
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`Decision that granted the Renewed Petition. Therefore, the Supplemental Amendment to the
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`Specification filed on 08/25/2014 has been entered and made of record.
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`4.
`
`PO's Response filed 02119/2014 further included Declarations, pursuant to 37 C.P.R. §
`
`1.132, of Dr. Nenad Medvidovic (hereafter the "Medvidovic Declaration") and of Phil Harstein
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`(hereafter the "Harstein Declaration"). Both the Medvidovic Declaration and the Harstein
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`Declaration, including their accompanying Exhibits, have been entered and made of record as
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`discussed below.
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`5.
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`It is noted that Patent Owner has provided notice that the related co-pending litigation
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`proceeding Case No: 13-03133 SBA (Pinjan Inc. vs. Pireeye, Inc.) was STAYED pending
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`reexamination on 05/30/2014.
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`Reexamination
`
`6.
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`The Patent Owner is reminded of the continuing responsibility under 37 CPR 1.565( a) to
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`apprise the Office of any litigation activity, or other prior or concurrent proceeding, involving
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`Patent No. 7,647,633 B2 throughout the course of this reexamination proceeding. The third party
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`requester is also reminded of the ability to similarly apprise the Office of any such activity or
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`Blue Coat Systems - Exhibit 1061 Page 4
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`

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`Application/Control Number: 90/013,016
`Art Unit: 3992
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`Page 4
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`proceeding throughout the course of this reexamination proceeding. See MPEP §§ 2207, 2282
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`and 2286.
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`Information Disclosure Statement
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`7.
`
`Regarding Information Disclosure Statement (IDS) submissions, MPEP 2256 recites the
`
`following: "Where patents, publications, and other such items of information are submitted by a
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`party (patent owner or requester) in compliance with the requirements of the rules, the requisite
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`degree of consideration to be given to such information will be normally limited by the degree to
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`which the party filing the information citation has explained the content and relevance of the
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`information. The initials of the examiner placed adjacent to the citations on the form
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`PTO/SB/08A and 08B or its equivalent, without an indication to the contrary in the record, do
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`not signify that the information has been considered by the examiner any further than to the
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`extent noted above."
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`Accordingly, the IDS submissions filed by Patent Owner on 12/20/2013, 02/18/2014,
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`02119/2014, 03/28/2014, 06/05/2014, 06110/2014, 06/24/2014, 10/01/2014, 11/19/2014,
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`02/25/2015, and 04/01/2015 have been considered by the Examiner only with the scope required
`
`by MPEP 2256, unless otherwise noted.
`
`References Discussed in This Final Action
`
`• Ji- (U.S. Patent No. 5,983,348, filed 0911011997, published 11/0911999)
`
`• Liu- (U.S. Patent No. 6,058,482, filed 05/2211998, published 05/02/2000)
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`Blue Coat Systems - Exhibit 1061 Page 5
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`

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`Application/Control Number: 90/013,016
`Art Unit: 3992
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`Page 5
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`• Golan- (U.S. Patent No. 5,974,549, filed 03/2711997, published 10/2611999)
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`Priority Determination
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`8.
`
`As noted above, Patent Owner filed a Renewed Petition to Accept Unintentionally
`
`Delayed Priority Claim under 37 C.P.R.§ 1.78 on 08/25/2014. The Renewed Petition having
`
`been granted by the Office on 01/23/2015. As a result, the Edery '633 patent newly claims
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`priority (via the intermediate '032 and '667 CIP applications) to U.S. Patent No. 6,092,194 (filed
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`11/0611997) and U.S. Patent No. 6,167,520 (filed 01/2911997).
`
`Independent claims 1 and 28 as well as dependent claims 2-7 and 29-33 (via dependency)
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`are considered to not be adequately supported by the disclosure of the 6,092,194 and 6,167,520
`
`patents for the same reasons set for in the Order (see: Order, pp. 6-8) regarding the '302 and '667
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`CIP applications. The disclosures of the 6,092,194 and 6,167,520 patents appear to be
`
`completely silent on teaching or suggesting the transmission of mobile protection code from a
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`server computer to a client computer when it is determined that downloadable-information
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`includes executable code. The 6,092,194 and 6,167,520 patents also appear to be completely
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`silent on teaching or suggesting a client computer receiving a sandboxed package that includes
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`mobile protection code, a Downloadable, and one or more protection policies.
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`New independent claims 42-47 and 50-52 detail method and system claims generally in
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`the form of independent claim 1 (see: PO's Response, p. 13: "Claims 42-47 are method claims
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`generally in the form of claim 1 ... claims 49-52 are system claims for implementing the methods
`
`of claims 45-47"). Therefore, new claims 42-47 and 50-52 are considered to not be adequately
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`Blue Coat Systems - Exhibit 1061 Page 6
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`

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`Application/Control Number: 90/013,016
`Art Unit: 3992
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`Page 6
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`supported by the disclosure of the 6,092,194 and 6,167,520 patents for the same rationale as
`
`given above. New independent claim 48 as well as dependent claim 49 (at least via dependency)
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`are also considered to not be adequately supported by the disclosure of the 6,092,194 and
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`6,167,520 patents for the same rationale as given above.
`
`Further, new independent claims 42-46, 50, and 51 appear to be fully supported by the
`
`parent '299 continuation application as well as the '591 provisional application for similar
`
`rationale as disclosed in the Order for original claims 1-3 and 28-33 (see: Order, p. 7-8).
`
`However, while new claims 47-49 and 52 also appear to be fully supported by the parent '299
`
`continuation application, the '591 provisional application does not appear to provided sufficient
`
`support for new claims 47-49 and 52. Similar to dependent claims 4-7 noted in the Order (see:
`
`Order, p. 8), the '591 provisional application appears to be completely silent on how the server
`
`computer detects whether downloadable-information includes executable code. More
`
`specifically the '591 provisional application is silent on the specific detection process requiring,
`
`for example, "analyzing downloadable-information for operations to be executed on a computer"
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`and "analyzed for. .. binary information and a pattern" as required by new claims 47-49 and 52
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`(see: '591 provisional application, pp. 1 and 4: "Static scanning at the network server
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`level.. .identifies application programs"; "the server detects an executable being downloaded or
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`received").
`
`Therefore, claims 1-7, 28-33, and 42-52 of the Edery '633 patent are considered to have
`
`the following effective filing dates:
`
`a.
`
`Claims 1-3,28-33,42-46, 50, and 51 are considered to have an effective filing
`
`date of 05/17/2000, the filing date of the 60/205,591 provisional application.
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`Blue Coat Systems - Exhibit 1061 Page 7
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`

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`Application/Control Number: 90/013,016
`Art Unit: 3992
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`Page 7
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`b.
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`Claims 4-7,47-49, and 52 are considered to have an effective filing date of
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`05/17/2001, the filing date of the parent 09/861,229 continuation application.
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`Claim Rejections
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`Claim Rejections - 35 USC § 102
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`9.
`
`The following is a quotation of the appropriate paragraphs of pre-AlA 35 U.S.C. 102 that
`
`form the basis for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless -
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`(b) the invention was patented or described in a printed publication in this or a foreign country or in
`public use or on sale in this country, more than one year prior to the date of application for patent in the
`United States.
`
`(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed
`in the United States before the invention by the applicant for patent or (2) a patent granted on an application for
`patent by another filed in the United States before the invention by the applicant for patent, except that an
`international application filed under the treaty defined in section 351(a) shall 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.
`
`10.
`
`Claims 1-3,28-33, and 44 are rejected under pre-AlA 35 U.S.C. 102(e) as being
`
`anticipated by Ji (U.S. Patent No. 5,983,348, filed 0911011997, published 11/0911999).
`
`-Regarding claims 1-3 and 28-33, Ji teaches each and every limitation of the claims (see
`
`the claim charts on pages 14-16 and 19-26 of the Request, which are hereby incorporated by
`
`reference).
`
`-In regard to independent claim 44, Ji teaches each and every limitation of the claim
`
`(see the claim charts on pages 14-16 of the Request, which are hereby incorporated by
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`Blue Coat Systems - Exhibit 1061 Page 8
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`

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`Application/Control Number: 90/013,016
`Art Unit: 3992
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`Page 8
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`reference). Additionally, Ji teaches based upon the determination transmitting the
`
`downloadable-information to at least one information-destination of the downloadable-
`
`information, if the downloadable-information is determined to include executable code (see: Ji,
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`column 3, lines 16-34: "scanning for application programs, e.g., Java applets or ActiveX
`
`controls .. .looking for particular instructions ... The instrumented applet is then downloaded from
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`the server to the client"; column 4, line 66-column 5, line 10: "scans the applet and instruments
`
`it.. .is then downloaded to the web browser") and transmitting the downloadable-information
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`without the mobile protection code if the downloadable-information is determined not to include
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`executable code (see: Ji, column 4, line 66-column 5, lines 5: "proxy server 32 ... Downloaded
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`non-applets are not scanned").
`
`11.
`
`Claims 4-7, 48, and 49 are rejected under pre-AlA 35 U.S.C. 102(b) as being anticipated
`
`by Ji (U.S. Patent No. 5,983,348, filed 0911011997, published 11/0911999).
`
`-Regarding dependent claims 4-7, Ji teaches each and every limitation of the claims
`
`(see the claim charts on pages 16-19 of the Request, which are hereby incorporated by
`
`reference).
`
`-In regard to independent claim 48, Ji teaches a computer processor-based system for
`
`computer security, the system comprising:
`
`an information monitor for receiving downloadable-information by a computer (see: Ji,
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`column 3, lines 7-23: "a scanner...provides both static and dynamic scanning for application
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`Blue Coat Systems - Exhibit 1061 Page 9
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`

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`Application/Control Number: 90/013,016
`Art Unit: 3992
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`Page 9
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`programs, e.g., Java applets or ActiveX controls ... conventionally received from .. .Internet or an
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`Intranet at a conventional server");
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`a content inspection engine communicatively coupled to the information monitor for
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`determining, by the computer, whether the downloadable-information includes executable code
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`(see: Ji, column 3, lines 23-25 & 34-36: "applets are statically scanned at server by the scanner
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`looking for particular instructions ... applet code is executed"; column 4, line 66-column 5, line 4:
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`"receipt of a particular Java applet ... scans the applet ... Downloaded non-applets are not
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`scanned"), wherein determining if downloadable information includes executable code includes
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`analyzing the downloadable information for operations to be executed on a computer (see: Ji,
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`column 3, lines 25-35: "instructions which may be problematic"; column 5, lines 16-42: "applet
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`scanner thus uses applet instrumentation technology .. .If an instruction ... that calls an insecure
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`function .. .is found"); and
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`a protection agent engine communicatively coupled to the content inspection engine for
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`causing mobile protection code ("MPC") to be communicated by the computer to at least one
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`information-destination of the downloadable-information, if the downloadable-information is
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`determined to include executable code (see: Ji, column 3, lines 32-50; column 6, lines 38-42:
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`"The pre and post filter and monitoring package security policy functions) are combined with the
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`instrumented applet code in a single JAR (Java archive) file format at the server 32, and
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`downloaded to the ... client"; column 7, lines 41-49).
`
`-In regard to dependent claim 49, Ji teaches wherein the content of the downloadable
`
`information is analyzed for one or more of binary information and a pattern indicative of
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`Blue Coat Systems - Exhibit 1061 Page 10
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`Application/Control Number: 90/013,016
`Art Unit: 3992
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`Page 10
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`executable code (see: Ji, column 3, lines 23-25: "scanner looking for particular instructions";
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`column 5, lines 15-43: "applet instrumentation technology ... determined by a predefined set of
`
`such functions) is found").
`
`12.
`
`Claims 1-3 and 44 are rejected under pre-AlA 35 U.S.C. 102(e) as being anticipated by
`
`Liu (U.S. Patent No. 6,058,482, filed 05/2211998, published 05/02/2000).
`
`-In regard to independent claim 1, Liu teaches a computer processor-based method,
`
`compnsmg:
`
`receiving, by a computer, downloadable-information (Liu, column 4, line 64-column 5,
`
`line 2: "request for network information ... is received by the remote server 110"; column 8, lines
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`8-15: "typically through remote server 110, the method determines whether the requested web
`
`page has ... one or more Java applet tags or other keywords designed to invoke or call executable
`
`code")(Fig. 3: 205 & 210);
`
`determining, by the computer, whether the downloadable-information includes
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`executable code (Liu, column 4, line 66-column 5, line 16: "remote server 110 then determines
`
`whether the requested network information should have .. .invoke executable code"; column 6,
`
`lines 14-40; column 8, lines 8-15: "typically through remote server 110, the method determines
`
`whether the requested web page has ... one or more Java applet tags or other keywords designed to
`
`invoke or call executable code" ; column 9, lines 39-60: "providing additional security
`
`functionality for executable code which may be downloaded ... for any and all types of
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`downloadable, executable code")(Fig. 3: 210); and
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`Blue Coat Systems - Exhibit 1061 Page 11
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`

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`Application/Control Number: 90/013,016
`Art Unit: 3992
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`Page 11
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`based upon the determination, transmitting from the computer mobile protection code to
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`at least one information-destination of the downloadable-information, if the downloadable-
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`information is determined to include executable code (Liu, column 5, lines 2-16: "When the
`
`network information should have such keywords ... the remote server 110 then generates the
`
`requested network information with each included keyword having a distinctive reference ... and
`
`transmits the network information to the local end system"; column 8, lines 16-37: "generates an
`
`applet tag having a new, distinctive or unique class name as the reference attribute ... generates
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`and provides the requested web page with all of its applet tags having their respective new,
`
`distinct (or unique) class names"; column 9, line 63-column 10, line 24)(Fig. 3: 220 & 235).
`
`-In regard to dependent claim 2, Liu teaches wherein the receiving includes monitoring
`
`received information of an information re-communicator (Liu, column 4, line 51-column 5, line
`
`2: "remote server 11 O")(Fig. 1: 65 & 11 0).
`
`-In regard to dependent claim 3, Liu teaches wherein the information re-communicator
`
`is a network server (Liu, column 4, line 51-column 5, line 2: "remote server 110 is typically part
`
`of a remote server system").
`
`-In regard to independent claim 44, Liu teaches each and every limitation of the claim
`
`as noted above with regard to independent claim 1. Additionally, Liu teaches based upon the
`
`determination transmitting the downloadable-information to at least one information-destination
`
`of the downloadable-information if the downloadable-information is determined to include
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`Blue Coat Systems - Exhibit 1061 Page 12
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`Application/Control Number: 90/013,016
`Art Unit: 3992
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`Page 12
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`executable code (see: Liu, column 8, lines 34-36: "provides the requested web page"; Fig. 1: 40;
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`Fig. 3: 235) 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 (see: Liu, column 8,
`
`lines 10-15: "When the requested web page does not require such applet tags, the requested web
`
`page may be provided"; Fig. 3: 215).
`
`13.
`
`Claims 4 and 7 are rejected under pre-AlA 35 U.S.C. 102(b) as being anticipated by Liu
`
`(U.S. Patent No. 6,058,482, filed 05/2211998, published 05/02/2000).
`
`-In regard to dependent claim 4, Liu teaches wherein the determining comprises
`
`analyzing the downloadable-information for an included type indicator indicating an executable
`
`file type (Liu, column 4, line 65-column 5, line 4: "determines whether the requested network
`
`information should have one or more keywords ... to invoke executable code"; column 6, lines
`
`19-57: "web page may include special or designated keywords which are designed to invoice,
`
`call or specify a network programming language ... an "applet" tag ... an object tag"; column 9,
`
`lines 39-60: "context for any and all types of downloadable, executable code").
`
`-In regard to dependent claim 7, Liu teaches further comprising receiving, by the
`
`computer, one or more executable code characteristics of executable code that is capable of
`
`being executed by the information-destination, and wherein the determining is conducted in
`
`accordance with the executable code characteristics (Liu, column 4, line 65-column 5, line 4:
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`"determines whether the requested network information should have one or more keywords ... to
`
`invoke executable code"; column 6, lines 19-57: "web page may include special or designated
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`Blue Coat Systems - Exhibit 1061 Page 13
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`

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`Application/Control Number: 90/013,016
`Art Unit: 3992
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`Page 13
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`keywords which are designed to invoice, call or specify a network programming language ... an
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`"applet" tag ... an object tag ... typically has required or desirable attributes"; column 9, lines 39-
`
`60: "context for any and all types of downloadable, executable code").
`
`Claim Rejections - 35 USC § 103
`
`14.
`
`The following is a quotation of pre-AlA 35 U.S.C. 103(a) which forms the basis for all
`
`obviousness rejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in
`section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are
`such that the subject matter as a whole would have been obvious at the time the invention was made to a person
`having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the
`manner in which the invention was made.
`
`15.
`
`Claims 28-33 are rejected under pre-AlA 35 U.S.C. 103(a) as being unpatentable over Ji
`
`(U.S. Patent No. 5,983,348, filed 0911011997, published 11/0911999) in view of Golan (U.S.
`
`Patent No. 5,974,549, filed 03/2711997, published 10/2611999).
`
`-Regarding claims 28-33, the combination of Ji in view of Golan teaches each and every
`
`limitation of the claims (see the claim charts on pages 41-46 (claim 28) and 22-26 (claims 29-33)
`
`of the Request, which are hereby incorporated by reference). Regarding independent claim 28,
`
`the Examiner further notes that it would have been obvious to one of ordinary skill in the art at
`
`the time of the invention to modify the received single JAR archive file of Ji (Ji, column 6, lines
`
`38-51) to implement the security monitor that executes the downloaded software component
`
`(e.g., Java applet or ActiveX control) in a secure sandbox at the client location as taught in
`
`Golan, because Golan taught that said described features provided the benefit for securing
`
`untrusted and/or unknown software downloaded from an external source to a client (Golan,
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`Blue Coat Systems - Exhibit 1061 Page 14
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`Application/Control Number: 90/013,016
`Art Unit: 3992
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`Page 14
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`column 1, lines 4-7: "securing untrusted and/or unknown software"; column 4, lines 58-61;
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`column 5, lines 14-25: "secure sandbox enables untrusted ActiveX controls downloaded from the
`
`Internet to run within security limitations"). The Ji reference further buttresses the combination
`
`by recognizing that the location of the static scanning and run-time monitoring distribution
`
`would be obvious to one of ordinary skill in the art based on the well-known benefits of client-
`
`server processing load distribution (Ji, column 3, lines 1-15: "does not cause heavy load on the
`
`server. .. does not introduce significant performance overheard during the execution of the
`
`applets").
`
`Further regarding dependent claim 32, the Examiner notes that the Golan reference also
`
`specifically teaches wherein modifying interfaces includes modifying interfaces of an import
`
`address table ("IAT") of a native code executable downloadable (Golan, column 6, lines 13-30:
`
`"security monitor, in its initialization code, functions to modify the import tables of all the
`
`modules within the monitored application's address space"). As similarly discussed in Ji (Ji,
`
`column 7, lines 32-40: "extracts the class files from the JAR file .. .instruments the Java class
`
`files, e.g. by inserting monitoring instructions after each suspicious instruction"), Golan teaches
`
`that modifying the lA T provides the benefit of allowing the interception of a specific set of API
`
`calls (Golan, column 5, line 62-column 6, line 25: "can detect and prevent any attempt by the
`
`software component to breach security ... monitoring all calls issued by the
`
`downloadable ... component is permitted to execute freely while enforcing compliance with a
`
`predefined set of security rules"). Therefore, it would have been obvious to one of ordinary skill
`
`in the art at the time of the invention for the interfaces of the import table of Ji to have been
`
`modified as specifically taught in Golan, because Golan taught said modification provided the
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`Blue Coat Systems - Exhibit 1061 Page 15
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`

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`Application/Control Number: 90/013,016
`Art Unit: 3992
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`Page 15
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`benefit of being able to detect and prevent any attempt by the downloaded software component
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`to breach security (Golan, column 5, line 62-column 6, line 25: "can detect and prevent any
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`attempt by the software component to breach security").
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`16.
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`Claim 42 is rejected under pre-AlA 35 U.S.C. 103(a) as being unpatentable over Ji (U.S.
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`Patent No. 5,983,348, filed 0911011997, published 11/0911999) in view of Liu (U.S. Patent No.
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`6,058,482, filed 05/2211998, published 05/02/2000).
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`-Regarding independent claim 42, Ji teaches a computer processor-based method
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`compnsmg,
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`receiving, by a computer, multiple instances of downloadable-information, wherein at
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`least one of the multiple instances of downloadable-information includes non-executable
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`information (see: Ji, column 4, line 66-column 5, lines 5: "proxy server 32 ... Downloaded non-
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`applets are not scanned") and at least one of the multiple instances of downloadable-information
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`includes executable information (see: Ji, column 3, lines 7-23: "a scanner. .. provides both static
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`and dynamic scanning for application programs, e.g., Java applets or ActiveX
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`controls ... conventionally received from .. .Internet or an Intranet at a conventional server"; column
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`4, line 66-column 5, line 3: "Upon receipt of a particular Java applet");
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`determining, by the computer, whether each of the multiple instances of downloadable-
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`information includes executable code (see: Ji, column 3, lines 23-25 & 34-36: "applets are
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`statically scanned at server by the scanner looking for particular instructions ... applet code is
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`executed"; column 4, line 66-column 5, line 4: "receipt of a particular Java applet. .. scans the
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`applet ... Downloaded non-applets are not scanned"; column 5, lines 15-27); and
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`Blue Coat Systems - Exhibit 1061 Page 16
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`

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`Application/Control Number: 90/013,016
`Art Unit: 3992
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`Page 16
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`based upon the determination, transmitting from the computer mobile protection code to
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`at least one information-destination of each instance of downloadable-information that is
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`determined to include executable information (see: Ji, column 3, lines 32-50; column 5, lines 1-
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`27: "scans the applet and instruments it .. .If an instruction .. .is found"; column 6, lines 38-42:
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`"The pre and post filter and monitoring package security policy functions) are combined with the
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`instrumented applet code in a single JAR (Java archive) file format at the server 32, and
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`downloaded to the ... client"; column 7, lines 41-49).
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`Ji does not specifically teach a situation wherein one of the instances of downloadable-
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`information includes a combination of non-executable and executable code portions. Ji further
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`does not teach transmitting mobile protection code to at least one information-destination when
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`the downloadable information is determined to include a combination of non-executable and
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`executable code portions. Liu specifically teaches wherein downloadable-information (i.e., web
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`pages) could include a combination of both non-executable and executable code portions (see:
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`Liu, column 6, lines 3-62: "web page may be ... any another equivalent language ... which provide
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`for downloadable and executable code ... typically contains text (formatted utilizing HTML),
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`scripting, and network language keywords such as applet tags"). Liu further taught determining
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`and transmitting mobile protection code to at least one information-destination when the
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`downloadable information is determined to include a combination of non-executable and
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`executable code portions (see: Liu, column 5, lines 2-16: "When the network information should
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`have such keywords ... the remote server 110 then generates the requested network information
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`with each included keyword having a distinctive reference ... and transmits the network
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`information to the local end system"; column 8, lines 16-37: "When the requested web page does
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`Blue Coat Systems - Exhibit 1061 Page 17
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`

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`Application/Control Number: 90/013,016
`Art Unit: 3992
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`Page 17
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`require one or more applet tags ... generates an applet tag having a new, distinctive or unique
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`class name as the reference attribute ... generates and provides the requested web page with all of
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`its applet tags having their respective new, distinct (or unique) class names"; column 9, line 63-
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`column 10, line 24; Fig. 3: 220 & 235). It would have been obvious to one of ordinary skill in
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`the art at the time of the invention for the proxy server scanner system of Ji to have explicitly
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`included the functionality of scanning downloadable information for executable code that
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`includes a combination of non-executable and executable code portions as taught by the remote
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`server of Liu, because Liu taught that said functionality provided the well-known benefits of
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`ensuring that all such executable code, downloaded from a network, was properly identified and
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`thus a user's network security is preserved (see: Liu, column 3, lines 55-61: "user's network
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`security is preserved"; column 13, lines 1-28: "Numerous advantages"). Thus the system of Ji
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`would have been provided the benefit of increased security by being able to actively scan more
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`than just executable application programs (e.g., Java applets or ActiveX controls) for particular
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`instructions which may be problematic for system security (see: Ji, column 3, lines 15-25).
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`Claim Rejections - 35 USC§ 305
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`17.
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`The following is a quotation of the appropriate paragraph of 35 U.S .C. 305 that forms the
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`basis for the rejections under this section made in this Office action:
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`In any reexamination proceeding under this chapter, the patent owner will be permitted to
`propose any amendment to his patent and a new claim or claims thereto, in order to
`distinguish the invention as claimed from the prior art cited under the provisions of section
`301 of this title, or in response to a decision adverse to the patentability of a claim of a
`patent. No proposed amended or new claim enlarging the scope of a claim of the patent
`will be permitted in a reexamination proceeding under this chapter.
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`Blue Coat Systems - Exhibit 1061 Page 18
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`

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`Application/Control Number: 90/013,016
`Art Unit: 3992
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`Page 18
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`18.
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`Claims 43, 45, 46, 47, and 50-52 are rejected under 35 U.S.C. 305 as enlarging the scope
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`of the claim(s) of the patent being reexamined. In 35 U.S.C. 305, it is stated that "[n]o proposed
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`amended or new claim enlarging the scope of a claim of the patent will be permitted in a
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`reexamination proceeding .... " A claim presented in a reexamination "enlarges the scope" of the
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`patent claim(s) where the claim is broader than any claim of the patent. A claim is broader in
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`scope than the original claims if it contains within its scope any c