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`UNITED STATES DEPARTMENT OF COMMERCE
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`United States Patent and Trademark Office
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`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
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`www .uspto.gov
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`APPLICATION NO.
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`FILING DATE
`
`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO. CONFIRMATION NO.
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`95/001,851
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`12/13/2011
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`7418504
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`43614.101
`
`1688
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`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
`
`22852
`7590
`02/26/2015
`
`
`LLP
`901 NEW YORK A VENUE, NW
`
`
`WASHINGTON, DC 20001-4413
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`EXAMINER
`
`FOSTER, ROLAND G
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`ART UNIT
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`PAPER NUMBER
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`3992
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`MAILDATE
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`DELIVERY MODE
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`02/26/2015
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`PAPER
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`
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`PTOL-90A (Rev. 04/07)
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`
`
`Control No.
`Transmittal of Communication to
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`95/001,851
`Third Party Requester
`Examiner
`Inter Partes Reexamination
`ROLAND FOSTER
`
`
`
`Patent Under Reexamination
`
`7418504
`Art Unit
`
`3992
`
`
`
`
`
`
`
`--The MAILING DA TE of this communication appears on the cover sheet with the correspondence address. --
`
`r-1 --
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`
`
`
`
`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS) ----.I
`
`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,
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`
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`inter partes reexamination may once file
`written comments within a
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`the third party requester of the
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`period of 30 days from the date of service of the patent owner's response. This 30-day time period is
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`statutory (35 U.S.C. 314(b)(2)), and, as such, it cannot be extended. See also 37 CFR 1.947.
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`If an ex parte reexamination has been merged with the inter partes reexamination,
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`no responsive
`by any ex parte third party
`submission
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`requester is permitted.
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`All correspondence
`relating to this inter partes reexamination proceeding should be directed to the
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`
`
`
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`Central Reexamination Unit at the mail, FAX, or
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`hand-carry addresses given at the end of the
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`communication enclosed with this transmittal.
`
`U.S. Patent and Trademark Office
`PTOL-2070 (Rev. 07·04)
`
`PaperNo.20140930
`
`
`
`Control No.
`
`Patent Under Reexamination
`
`Right of Appeal Notice
`
`(37 CFR 1.953)
`
`95/001,851
`Examiner
`
`7418504
`Art Unit
`
`ROLAND FOSTER
`
`
`
`3992
`--The MAILING DA TE of this communication appears on the cover sheet with the correspondence address. --
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`
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`Responsive to the communication(s) filed by:
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`Patent Owner on 30 July, 2014
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`Third Party(ies) on 29 August, 2014
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`Patent owner and/or third party requester(s) may file a notice of appeal with respect to any adverse decision
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`with payment of the fee set forth in 37 CFR 41.20(b)(1) within one-month or thirty-days (whichever is
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`longer). See MPEP 2671. In addition, a party may file a notice of cross appeal and pay the 37 CFR
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`
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`timely filed notice of appeal. See 41.20(b)(1) fee within fourteen days of service of an opposing party's
`MPEP 2672.
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`relating to this inter partes reexamination proceeding should be directed to the Central
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`All correspondence
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`
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`Office action. hand-carry addresses given at the end of this Reexamination Unit at the mail, FAX, or
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`If no party timely files a notice of appeal, prosecution on the merits of this reexamination proceeding will be
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`concluded, and the Director of the USPTO will proceed to issue and publish a certificate under 37 CFR 1.997 in
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`accordance with this Office action.
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`The proposed amendment filed
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`__
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`D will be entered D will not be entered*
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`*Reasons for non-entry are given in the body of this notice.
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`
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`1 a. [8J Claims 1-35 and 60 are subject
`to reexamination.
`1 b. [8J Claims 36-59 are not subject to
`reexamination.
`2. D Claims __
`have been cancelled.
`3. D Claims __
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`are confirmed. [Unamended patent claims].
`4. [8J Claims 11 are patentable.
`[Amended or new claims].
`5. [8J Claims 1-10, 12-35 and 60 are rejected.
`6. D Claims __
`are objected to.
`7. D The drawings
`D are acceptable. D are not acceptable.
`filed on
`is D approved. D disapproved.
`8. D The drawing correction
`request filed on
`9. D Acknowledgment
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`
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`
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`has:
`D been received. D not been received. D been filed in
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`10. D Other __
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`__
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`is made of the claim for priority under 35 U.S.C. 119 (a)-(d) or (f). The certified copy
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`
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`Application/Control No. __ .
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`Attachments
`1. D Notice of
`References Cited by Examiner, PT0-892
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`2. [8J Information
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`Disclosure Citation, PTO/SB/08
`3. o __
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`U.S. Patent and Trademark Office
`
`
`PTOL-2066 (08·06)
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`
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`Right of Appeal Notice (37 CFR 1.953)
`
`Part of Paper
`No. 20140930
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`
`
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`Application/Control Number: 95/001,851
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`Page 2
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`Art Unit: 3992
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`RIGHT OF APPEAL NOTICE
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`1.
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`Procedural History
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`Prosecution after the ACP
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`This Office action addresses claims 1-35 and 60 of United States Patent No. 7,418,504
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`B2 (the "Larson" patent), for which reexamination was granted in the Order Granting Inter
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`Partes Reexamination (hereafter the "Order"), mailed March 1, 2012, in response to a Request
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`for Inter Partes Reexamination, filed December 13, 2011 (the "Request").
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`An Action Closing Prosecution ("ACP") mailed May 30, 2014 rejecting original claims
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`1-10 and 12-16 of the Larson patent. Original claim 11 was found patentable. The patent owner
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`also filed a supplemental declaration of Angelos D. Keromytis, Ph.D., on January 2, 2013 (the
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`"Supplemental Keromytis Declaration"), which is entered into the record and considered in the
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`ACP in accordance with the Petition Decision mailed December 12, 2013.
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`The patent owner responded by filing arguments and associated evidence on July 30,
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`2014 (the "Response").
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`The third party requester responded by filing Comments on the Patent Owner's Response
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`on August 29, 2014 (the "Comments").
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`Prosecution of Claims 36-59 Is Terminated.
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`In the decision mailed September 17, 2014, the Office determined that the estoppel
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`provisions of pre-AIA 35 U.S.C. 317(b) apply to any rejection of claims 36-59 in this
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`proceeding. Accordingly, the estoppel provisions of pre-AIA 35 U.S.C. 317(b) apply to all
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`rejections of claims 36-59 of the Larson patent which were applied in the May 30, 2014 Action
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`Application/Control Number: 95/001,851
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`Page 3
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`Art Unit: 3992
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`Closing Prosecution. Pursuant to the September 17, 2014 decision, these rejections will not be
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`further maintained by the Office, and have been withdrawn. No further rejection of claims 36-59
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`of the Larson patent will be made in the present reexamination proceeding.
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`Because all rejections of claims 36-59 of the Larson patent have been withdrawn
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`pursuant to the estoppel provisions of pre-AIA 35 U.S.C. 317(b), the withdrawal of these
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`rejections is not a "non-adoption of' or a "determination not to make" these rejections within the
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`meaning of 37 CPR 41.61. Any notice of appeal or cross-appeal of the present determination
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`not to make or maintain a rejection of claims 36-59 of the Larson patent will be held to be
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`defective.
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`Prosecution of the Remaining Claims 1-35 and 60 Will Continue.
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`The Larson patent under reexamination (the '504 patent) was the subject of a Federal
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`Circuit decision holding the claims were not proved invalid. See Virnetx,
`Inc. v. Cisco Systems,
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`
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`are parties to this Inc., 767 F.3d 1308 (Fed. Circ. 2014). The parties in that litigation
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`proceeding. However, the VimetX decision remanded the case back to the district court for
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`further proceedings on other grounds. The patent owner has not provided any evidence that this
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`decision is a final decision that the subject claims are not invalid. MPEP § 2686.04.IV.
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`Prosecution of the remaining claims 1-35 and 60 will continue.
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`Application/Control Number: 95/001,851
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`Page 4
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`Art Unit: 3992
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`Submissions of Evidence after the Action Closing Prosecution
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`The patent owner also filed a declaration of Fabian Monrose, Ph.D., on July 30, 2014 (the
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`"Monrose Declaration"). The Patent Owner asserts the ACP "advances new grounds of rejection
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`and new positions," thus satisfying the 37 C.F.R. § l .116(e) requirement to make "a showing of
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`good and sufficient reasons" why the Monrose Declaration is "necessary and was not earlier
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`presented." (Response at 1). However, the ACP does not advance any new grounds of rejection
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`nor adopt new positions, see the Petition Decision mailed September 26, 2014. Thus, the Patent
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`Owner's asserted basis for the "showing of good and sufficient reasons" to enter the Monrose
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`Declaration is incorrect. Accordingly, no showing has been made and the Monrose Declaration
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`will not be entered.
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`inter partes
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`After an ACP in an reexamination, the patent owner may once file comments
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`limited to the issues raised in the Office action closing prosecution. 37 CPR§ 1.951 (a). Thus,
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`the patent owner may not file additional comments showing why the Monrose Declaration
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`should be entered.
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`The Monrose Declaration is not of record in this proceeding. The examiner however has
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`briefly reviewed the Monrose Declaration, but it does not persuade the examiner to withdraw any
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`rejection.
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`2. Decisions Unfavorable to Patentability
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`2.A. Prior Art
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`A total of four principal references, in certain combinations, have been asserted in the
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`Request as providing teachings relevant to the claims of the Larson patent.
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`Application/Control Number: 95/001,851
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`Page 5
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`Art Unit: 3992
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`Technical Understanding OSF DCE I.I for AIX and OS/2, IBM International
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`Rolf Lendenmann,
`Support Organization
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`
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`(Oct. 1995) ("Lendenmann"), attached as Exhibit D-1 (parts 1 and 2) to
`the Request.
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`("Aziz"),
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`U.S. Patent No. 6,119,234 attached as Exhibit D-2 to the Request.
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`Takahiro Kiuchi and Shigekoto Kaihara, "C-HTTP-The Development of a Secure, Closed HTTP
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`
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`based Network on the Internet," Proceedings of the Symposium on Network and Distributed
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`System Security, 1996 ("Kiuchi"), attached as Exhibit D-16 to the Request.
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`Bryan Pfaffenberger, Netscape Navigator 3.0: Surfing the Web and Exploring the Internet,
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`Academic Press (1996) ("Pfaffenberger"), attached as Exhibit D-17 to the Request.
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`The request also asserts additional references to explain features in the principal
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`references or as secondary teaching references.
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`Information Sciences Institute, "Transmission Control Protocol," DARPA Internet Program
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`Protocol Specification Request for Comments 793 (Sept. 1981) ("RFC 793"), attached as Exhibit
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`D-3.
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`D. Eastlake and C. Kaufman, Network Working Group, Information Sciences Institute, "Domain
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`Name System Security Extensions," Request for Comments 2065 (Jan. 1997) ("RFC 2065"),
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`attached as Exhibit D-4.
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`U.S. Patent No. 5,898,830
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`("Wesinger"),
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`attached as Exhibit D-5 to the Request.
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`U.S. Patent No. 5,689,641
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`("Ludwig"),
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`attached as Exhibit D-6 to the Request.
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`David M. Martin, "A Framework for Local Anonymity in the Internet," Technical Report.
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`Boston University, Boston, MA, USA (Feb. 21, 1998) ("Martin"), attached as Exhibit D-7.
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`Bruce Schneier,
`Applied Cryptography
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`(1996) ("Schneier"), attached as Exhibit D-8.
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`Lawton, George, "New top-level domains promise descriptive names," Sunworld Online,
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`September 1996 ("Lawton"), attached as Exhibit D-9.
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`Gaspoz, Jean-Paul, "VPN on DCE: From Reference Configuration to Implementation," Bringing
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`Telecommunication Services to the People - IS&N '95, Third International Conference on
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`Intelligence in Broadband Services and Networks, October 1995 Proceedings
`("Gaspoz"),
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`attached as Exhibit D-10.
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`U.S. Patent No. 6,269,099
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`("Borella"),
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`attached as Exhibit D-11 to the Request.
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`Application/Control Number: 95/001,851
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`Page 6
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`Art Unit: 3992
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`U.S. Patent No. 6,560,634 ("Broadhurst"), attached as Exhibit D-12 to the Request.
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`Mark Pallen, "The World Wide Web," British Medical Journal, vol. 311at1554 (Dec. 9, 1995)
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`("Pallen"),
`attached as Exhibit D-13.
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`R.L. Rivest et al., "A Method for Obtaining Digital Signatures and Public-Key Cryptosystems,"
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`Communications of the ACM, vol. 21, no. 2, pp. 120-126 (Feb. 1978) ("Rivest"), attached as
`Exhibit D-14.
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`U.S. Patent No. 4,952,930 ("Franaszek"), attached as Exhibit D-15 to the Request.
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`Frederic Gittler et al., "The DCE Security Service," Hewlett-Packard Journal, pp. 41-48, (Dec.
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`1995) ("Gittler"), attached as Exhibit D-18 .
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`2.B.
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`Summary Regarding Those Proposed Rejections Adopted and Not Adopted
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`by the Examiner
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`As will be explained in Section 3 (Response to Arguments), the rejections identified in
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`Issues 1, 3-5, 7, 8, 11-13, 15, 17, 18, 20 and 21 (Request, pp. 31-34) remain adopted. The
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`rejections identified in Issues 9 and 16 remain adopted except for the rejections of claims 5, 23,
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`27 and 50 (Issue 9) and 10-13 (Issue 16), which are withdrawn. All rejections identified in
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`Issues 2, 6, 10, 14 and 19 are withdrawn. Claims 1-10, 12-35 and 60 however remain rejected
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`under at least one grounds of rejection. The withdraw of rejections related to claims 36-59 is not
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`a "non-adoption of' or a "determination not to make" these rejections within the meaning of 37
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`CPR 41.61. See Section 1 for further details.
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`2.C.
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`Entitlement to the Benefit of an Earlier Filing Date
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`Requestor asserts that the instant claims are not entitled to the earliest filing date of
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`October 30, 1998, the filing date of the oldest parent, provisional application. None of the
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`principal references asserted by the third party requester appear to be intervening references nor
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`Application/Control Number: 95/001,851
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`Page 7
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`Art Unit: 3992
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`does the statutory basis of rejections based upon the principal reference appear to be affected by
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`the entitlement question. Nonetheless, the examiner agrees with the third party requester. Each
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`of the independent claims recite a "domain name service" and a "domain name service system"
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`limitation. A continuation-in-part application ("CIP") 09/558,210, filed April 26, 2000, includes
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`a section entitled "Continuation-in-Part Improvements" on page 56 specifically discussing secure
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`domain name service queries on pages 81-88. The parent applications prior to this date do not
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`appear to even be directed to services similar to domain name lookup. Thus, the applications
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`filed prior to April 26, 2000 fail to provide written description support nor enable the subject
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`matter recited in claims 1-60 of the Larson patent. Accordingly, the effective filing date for
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`claims 1-35 and 60 is no earlier than the April 26, 2000 filing date of CIP application
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`09/558,210.
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`2.D.
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`Rejections Based upon Lendenmann (Issues 1, 3-5, 7 and 8)
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`Claim Rejections -35 USC § 102
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`The following is a quotation of pre-AIA 35 U.S.C. 102 which forms the basis for all
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`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
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`on sale in this country, more than one year prior to the date of application for patent in the United States.
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`(Issue 1) Claims 1-3, 5, 6, 14-30, 33-35, and 60 are rejected under 35 U.S.C. 102(b) as
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`being anticipated by Lendenmann.
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`Application/Control Number: 95/001,851
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`Page 8
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`Art Unit: 3992
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`Claim Rejections - 35 USC § 103
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`The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all
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`obviousness rejections set forth in this Office action:
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`(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in
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`section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are
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`such that the subject matter as a whole would have been obvious at the time the invention was made to a person
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`having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the
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`manner in which the invention was made.
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`(Issue 3) Claim 7 is rejected under 35 U.S.C. 103(a) as being unpatentable over
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`Lendenmann as applied to the respective, parent claims above, and further in view of Wesinger.
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`(Issue 4) Claims 8 and 9 are rejected under 35 U.S.C. 103(a) as being unpatentable over
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`Lendenmann as applied to the respective, parent claims above, and further in view of Gaspoz.
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`(Issue 5) Claim 10 is rejected under 35 U.S.C. 103(a) as being unpatentable over
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`Lendenmann in view of Gaspoz, as applied to the respective, parent claims above, and further in
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`view of Schneier.
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`(Issue 7) Claims 12 and 13 are rejected under 35 U.S.C. 103(a) as being unpatentable
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`over Lendenmann in view of Gaspoz, as applied to the respective, parent claims above, and
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`further in view of RFC 793.
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`(Issue 8) Claims 31and32 are rejected under 35 U.S.C. 103(a) as being unpatentable
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`over Lendenmann in view of Ludwig, as applied to the respective, parent claims above, and
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`further in view of RFC 793.
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`Application/Control Number: 95/001,851
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`Page 9
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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. Independent claim 1
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`recites:
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`1. A system for providing a domain name service for establishing a secure communication
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`link, the system comprising:
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`a domain name service system configured to be connected to a communication network, to
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`store a plurality of domain names and corresponding network addresses, to receive a query
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`for a network address, and to comprise an indication that the domain name service system
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`supports establishing a secure communication link.
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`Regarding the specification of the Larson patent for which reexamination is requested,
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`Fig. 25 (reproduced below) is labeled "prior art."
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`Application/Control Number: 95/001,851
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`Page 10
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`Art Unit: 3992
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`Fig. 25 (prior art) discloses: (1) a domain name service system configured to be
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`connected to a communication network, (2) storing a plurality of domain names and
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`corresponding network addresses, and (3) receiving a query for a network address. Thus, all
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`limitations in claim 1 are admitted prior art except the final limitation "to comprise an indication
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`that the domain name service system supports establishing a secure communication link."
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`Nonetheless Lendenmann teaches all the limitations in representative claim 1.
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`Lendenmann describes a Distributed Computing Environment ("DCE") providing a directory
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`service specifically including a Cell Directory Service (CDS). (P. 10, section 1.4.4 DCE
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`Directory Service).
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`Regarding the limitation "domain name service configured for connection to a
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`communication network," Lendenmann teaches that the CDS (domain name service) is
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`connected to a communication network, as illustrated in Fig. 15, which is reproduced below:
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`Application/Control Number: 95/001,851
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`Page 11
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`Art Unit: 3992
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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," Lendenmann teaches
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`regarding the CDS (domain name service) at p. 21, section 2.2:
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`The directory service component that controls names inside a cell is called the Cell Directory
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`Service (CDS). The CDS stores names of resources in that cell so that when given a name, CDS
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`returns the network address of the named resource.
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`See also the CDS lookup process described on pages 29-34.
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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," a query from a client to a directory service (CDS)
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`server via a network is made by a remote procedure call, as illustrated in Fig. 15, which is
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`reproduced below. See also pp. 9 and 173.
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`Application/Control Number: 95/001,851
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`Page 12
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`Art Unit: 3992
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`Lendenmann further teaches that RCP calls relies upon well-known authentication
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`algorithms, such as shared-secret key and public key (p. 192, section 10.4.1) including supplying
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`the requesting client with a session key and a service ticket encrypted with server's session key
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`(i.e., digitally signed certificate) (p. 194). The client encrypts the RPC call with the session key,
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`which the "server immediately challenges ... by sending it a randomly generated number which
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`the client has to encrypt with the session key and return to the server." (P. 194, section 10.4.4).
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`The client transmits the encrypted response, which the server decrypts using the server's session
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`key obtained from the decrypted service ticket. If the decrypted random number matches, then
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`the "session key is used in further communication over the binding." Id. Thus, the sending of
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`the "randomly generated number" is an indication that the domain name service (CDS reached
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`Application/Control Number: 95/001,851
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`Page 13
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`Art Unit: 3992
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`via a RCP call via the network) supports the establishment of subsequent, secure communication
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`link using a shared secret key (the session key) for encryption/decryption.
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`By returning the network address corresponding to a secure domain name, the Cell
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`Directory Service (CDS) also provides "an indication .... " as recited in the claim. (Request,
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`Exhibit F-1, claim chart, p. 13). Similarly, by only performing operations for users authorized
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`using access control lists (ACLs), the CDS provides an indication that supports establishing a
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`secure communication link. (Id at 14).
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`Incorporation by Reference
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`Thus, the third party requester proposed rejection of claims identified above as set forth
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`on pages 11-17, 31, 32 and Exhibit F-1 (claim chart), are adopted and incorporated by reference.
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`2.E.
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`Rejections Based upon Aziz (Issues 9, 11-13, 15)
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`Claim Rejections - 35 USC § 102
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`The following is a quotation of pre-AIA 35 U.S.C. 102(e) which forms the basis for all
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`obviousness rejections set forth in this Office action:
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`A person shall be entitled to a patent unless -
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`(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed
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`in the United States before the invention by the applicant for patent or (2) a patent granted on an application for
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`patent by another filed in the United States before the invention by the applicant for patent, except that an
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`international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this
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`subsection of an application filed in the United States only if the international application designated the United
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`States and was published under Article 21(2) of such treaty in the English language.
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`Application/Control Number: 95/001,851
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`Page 14
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`Art Unit: 3992
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`60 are rejected under 35
`(Issue 9) Claims 1, 2, 6-9, 14-22, 24, 25, 28, 33-35, and
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`U.S.C. 102(e) as being anticipated by Aziz.
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`Claim Rejections -35 USC § 103
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`(Issue 11) Claim 3, 4,
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`and 26 are rejected under 35 U.S.C. 103(a) as being unpatentable
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`over Aziz as applied to the respective, parent claims above, and further in view of Lawton.
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`(Issue 12) Claim 9
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`is rejected under 35 U.S.C. 103(a) as being unpatentable over Aziz as
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`applied to the respective, parent claims above, and further in view of Franaszek.
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`(Issue 13) Claim 10
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`is rejected under 35 U.S.C. 103(a) as being unpatentable over Aziz
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`as applied to the respective, parent claims above, and further in view of Schneier.
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`(Issue 15) Claims 29-32
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`are rejected under 35 U.S.C. 103(a) as being unpatentable over
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`Aziz, as applied to the respective, parent claims above, and further in view of Ludwig.
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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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`Similarly, the features of independent claim 1 have been discussed.
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`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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`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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`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, 11. 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
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`located throughout the world. A computer that has one of these databases, and responds to
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`queries for a host's address, is known by various names, including "Domain Name Server" or
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`simply "name server." Because so many host computers have Internet addresses, it is not practical
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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
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`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
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`record type, herein called an SX record, in response to requests for information needed for secure
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`communications with protected hosts in that domain. The resolver on (or otherwise associated
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`with) the authorized client is configured to use the data in the SX record to dynamically update
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`the information used by the client to handle secure communications.
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`(Col. 4, 11. 8-16).
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`Alternatively, a name server can be configured to return an SX record in the response that
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`includes the answer to a query for some other record. For example, if the client queries for a host
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`address, a name server might send a response with the host address in the answer section and the
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`SX record in the additional section.
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`(Col. 4, 11. 4 4-49).
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`Thus, the presence of SX records in the response from the DNS (NS 1 20) 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 1 9).
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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. Rejections Based upon Kiuchi and Pfaffenberger (Issues 16-18, 20, 21)
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`-35 USC § 103
`Claim Rejections
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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. 103(a) as being unpatentable over Kiuchi in view of Pfaffenberger.
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`(Issue 17) Claims 5 and 23
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`are rejected under 35 U.S.C. 103(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. 103(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
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`are rejected under 35 U.S.C. 103(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 Broadhurst.
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`(Issue 21) Claims 31, 33, and 35
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`are rejected under 35 U.S.C. 103(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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`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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`Similarly, the features of independent claim 1 have been discussed.
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`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, Kiuchi in view of Pfaffenberger teaches all the limitations in representative
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`claim 1. Kiuchi describes a "closed HTTP-based network" ("C-HTTP") on the Internet that
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`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
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`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 client-side proxy asks the C-HTTP name server whether it can communicate with the host
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`specified in a given URL. If the name server confirms that the query is legitimate, it examines
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`whether the requested server-side proxy is registered in the closed network and is permitted to
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`accept the connection form the client-side proxy. If the connection is permitted, the C-HTTP
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`name server sends the IP address and public key of the server-side proxy and both request and
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`response Nonce values. If it is not permitted, it sends a status cod