`
`.—
`
`Commtssioner for Patents
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1451)
`wusplogov
`
`Bey & Cotro ia PLLC Fin'an Inc.
`
`213 Bayly Cgurt
`Richmond VA 23229
`
`(
`
`J
`
`)
`
`MAILED
`DEC 2 4 2013
`
`OFFICE OF PETITIONS
`
`DECISION GRANTING PETITIONS
`UNDER 37 CFR l.78(a)(3) AND (a)(6)
`
`'
`
`:
`:
`:
`'
`
`_
`
`-
`.
`.
`In re Application of
`Edcry et al.
`Application No. 13f290,708
`Filed: November 7, 2011
`Attorney Docket No. FINOOOI-CONl -ClP1-
`CON4
`
`This is a decision on the renewed petition under 37 CFR §§ l.78(a)(3) and 1.78(a)(6), filed
`December 6, 2013, to accept an unintentionally delayed'claim under 35 U.S.C. §§ 120 and 1 19(6)
`for the benefit of priority to the prior-filed nonprovisional and provisional applications set forth
`in the concurrently filed amendment.
`
`The petition is GRANTED
`
`A petition for acceptance of a claim for late priority under 37 CFR §§ 1.78(a)(3) and l.78(a)(6) is
`only applicable'to those applications filed on or after November 29, 2000 and after the expiration
`of the period specified in 3? CFR §§ 1.78(a)(2)(ii) and l.78(a)(5)(ii). In addition, the petition
`under 37 CFR §§ 1.78(a)(3) and 1.78(a)(6) must be accompanied by:
`
`_(].)'
`
`(2)
`(3)
`
`the reference required by 35 U.S.C. §§ 120 and 119(e) and 37 CFR §§
`l.78(a)(2)(i) and 1.78(a)(5)(i) of the prior-filed application, unless
`previously submitted;
`the surcharge set forth in § l.l7(t); and
`a statement that the entire delay between the date the claim was due
`under 37 CFR §§ l.78(a)(2)(ii) and l .78(a)(5)(ii) and the date the
`claim was filed was unintentional. The Director may require
`additional where there is a question whether the delay was
`unintentional.
`
`Additionally, the instant nonprovisional application must be pending at the time of filing of the
`reference to ”the prior-flied provisional application as required by 3'? CFR l.78(a)(5)(ii). Further,
`a nonprovisional application in the priority chain claiming the beneft of the prior-filed
`provisional application must have been Ifiled within twelve months of the filing date of the prior-
`filed provisional application.
`
`CS—1002
`
`Cisco Systems, Inc. v. Finjan, Inc.
`Page 1
`
`CS-1002
`Cisco Systems, Inc. v. Finjan, Inc.
`Page 1
`
`

`

`Application No. 13/290,708
`
`Page 2
`
`All the above requirements having been satisfied, the late claim for benefit of priority under 35
`U.S.C. §§ 120 and l 19(e) is accepted as being unintentionally delayed.
`
`The granting at the getition to accegt the delayed benefit claim to the grioriiled agglications .
`under 3 7 CFR §§ I. 78(afl3z and 1. 78(afl62 should not be construed as meaning that this
`agglication is entitled to the benefit at the tiling date at the grim-[tied agglications. In order
`(or this agglication to be entitled to the benefit at the grim-[tied agglications, all other
`reguirements under 35 U.S.C. §§120 and I. 7&1!!!le and (aflZl and under 35 U.S. C. §Il91el
`and 37 CFR l. 78(a2f4z and [1125) must be met. Similarly, the [act that the corrected Filing
`Receigt accomganging this decision on getition includes the grim-tiled agglicatlons should not
`be construed as meaning that agglicant is entitled to the claim [or benefit at griorifl to the
`grim-[tied agglications noted thereon. Accordingly, the examiner willI in due courseI consider
`his benefit claim and determine whether the aggtication is entitled to the benefit of the earlier
`filing date.
`
`A corrected Filing Receipt, which includes the priority claim to the prior-filed applications,
`accompanies this decision on petition.
`
`Any questions concerning this matter may be directed to the undersigned at (571) 272-3230. All
`other inquiries concerning either the examination procedures or status of the application should
`be directed to the' Technology Center.
`
`This application is being forwarded to Technology Center Art Unit 2431 for consideration by the
`examiner of the claim under 35 U. SC. § §l20 and. 119(e) of the prior-filed nonproyisional and
`provisional applications.
`
`mmzwflt
`
`Shirene Willis Brantley
`Attorney Advisor
`Office of Petitions
`
`ATTACHMENT : Corrected Filing Receipt
`
`CS—1002
`
`Cisco Systems, Inc. v. Finjan, Inc.
`Page 2
`
`CS-1002
`Cisco Systems, Inc. v. Finjan, Inc.
`Page 2
`
`

`

`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent. and Trademark Office
`Adm: COMMISBIDNPR FOR PATENTS
`190.00! I430
`mummies- HJIJ- N30
`mun-prowl
`
`APPL]CATION
`
`FILING or
`
`GRF ART
`
`131290703
`
`1170772011
`
`2431
`
`1550
`
`115222
`Bey & Cotropia PLLC (Finjan Inc.)
`
`213 3.11,, cm-
`
`Richmond, VA 23229
`
`FINOOOI CONl-CIPI-CON4
`CONFIRMATION NO.24120
`CORRECTED FILING RECEIPT
`
`.
`
`_
`
`111111111111Iiiiiiiiigiiiiiyimiii1111111111
`
`Date Mailed: 1212312013
`
`Receipt is acknowledged of this non-provisional patent application. The application will be taken up for examination
`in due course. Applicant will be notified as to the results of the examination. Any correspondence concerning the
`applicationmust include the following identification information: the U5. APPLICATION NUMBER. FILING DATE.
`NAME OF APPLICANT. and TITLE OF INVENTION. Fees transmitted by check or draft are subject to collection.
`Please verify the accuracy of the data presented on this receipt. If an error is noted on this Filing Receipt, please
`submit a written request for a Filing Receipt Correction. Ptease provide a copy of this Filing Receipt with the
`changes noted thereon. If you received a "Notice to File Missing Parts" for this application. please submit
`any corrections to this Filing Receipt with your reply to the Notice. When the USPTO processes the reply
`to the Notice, the USPTO will generate another Filing Receipt incorporating the requested corrections
`
`lnventorts) _
`
`Applicant(s)
`
`_
`Yigal Mordechai Edery. Pardesia, ISRAEL:
`Nirmrod ltzhak Vered. Goosh Tet Mond. ISRAEL;
`David R. Kroll. San Jose. CA;
`Shlomo Touboul. Kefar-Haim, ISRAEL;
`'
`
`Yigal Mordechai Edery. Pardesia. ISRAEL;
`Nirmrod Itzhak Vered. Goosh Tel Mond. ISRAEL;
`David R. Kroll. San Jose, CA;
`Shiomo Touboul. Kefar-Haim. ISRAEL;
`
`Power of Attorney: The patent practitioners associated with Customer Number 74 77
`
`Domestic Priority data as claimed by applicant
`This application13 a CON of 12l471.942 05i26i2009 PAT 8079086
`which is a CON of 111370.114 0310772006 PAT 7613926
`which is a CON of 091861 .229 0571712001 PAT 7058822
`which claims benefit of 60i205.591 051'17i2000
`and is a CIP of 091639.667 038072000 PAT 6804780
`_ which is a CON of 08i964.388 11!06i1997 PAT 6092194
`which claims benefit of 60i030,639 111081'1996
`and said 091'861 .229 051'171'2001
`is a CIP of 091651.302 0411 812000 PAT 6480962
`which is a CON of 081790.097 0112971997 PAT 6167520
`which claims benefit of 601030.639 111'08l1996
`
`page 1 of4
`
`CS—1002
`
`Cisco Systems, Inc. v. Finjan, Inc.
`Page 3
`
`CS-1002
`Cisco Systems, Inc. v. Finjan, Inc.
`Page 3
`
`

`

`Foreign Applications for which priority is claimed (You may be eligible to benefit from the Patent Prosecution
`Highway program at the USPTO. Please see httpdiwwwusptogov for more information.) - None.
`Foreign application infonnation must be provided in an Application Data Sheet in order to constitute a claim to
`foreign priority. See 37 CFR 1.55 and 1.76.
`
`If Required, Foreign Filing License Granted: 11(17i2011
`The country code and number of your priority application. to be used for filing abroad under the Paris Convention.
`is US 13i290,708
`
`Projected Publication Date: Not Applicable
`Non-Publication Request: No
`
`Early Publication Request: No
`Title
`
`MALICIOUS MOBILE CODE RUNTIME MONITORING SYSTEM AND METHODS
`
`Preliminary Class
`
`726
`
`Statement under 37 CFR 1.55 or 1.78 for AIA (First Inventor to File) Transition Applications:
`
`' PROTECTING YOUR INVENTION OUTSIDE THE UNITED STATES
`
`Since the rights granted by a U.S. patent extend only throughout the territory of the United States and have no
`effect in a foreign country, an inventor who wishes patent protection in another country must apply for a patent
`in a specific country or in regional patent offices. Applicants may wish to consider the filing of an international
`application under the Patent Cooperation Treaty (PCT). An international (PCT) application generally has the same
`effect as a regular national patent application in each PCT-member country. The PCT process simplifies the filing
`of patent applications on the same invention in member countries. but does not result in a grant of "an international
`patent" and does-not eliminate the need of applicants to file additional documents and fees in countries where patent
`protection is desired.
`
`Almost every country has its own patent law. and a person desiring a patent in a particular country must make an
`application for patent in that country in accordance with its particular laws. Since the laws of many countries differ
`in various respects from the patent law of the United States. applicants are advised to seek guidance from specific
`foreign countries to ensure that patent rights are not lost prematurely.
`
`Applicants alsolare advised that in the case of inventions made in the United States. the Director of the USPTO must
`issue a license before applicants can apply for a patent in a foreign country. The filing of a US. patent applicatiOn
`Serves as a request for a foreign filing license. The application's filing receipt contains further information and
`guidance as to the status of applicant‘s license for foreign filing.
`
`Applicants may wish to consult the USPTO booklet. "General information Concerning Patents" (specifically. the
`section entitled “Treaties and Foreign Patents") for more information on timeframes and deadlines for filing foreign
`patent applications. The guide is available either by contacting the USPTO Contact Center at 800-786-9199, or it
`can be viewed on the USPTO website at httpziiwww.uspto.govMebiofficesipacidocigeneraliindex.html.
`
`For information on preventing theft of your intellectual property (patents. trademarks and copyrights). you may wish
`to consult the US. Government website, http:iiwww.siopfakes.gov. Part of a Department of Commerce initiative.
`pagezofrl
`
`CS—1002
`
`Cisco Systems, Inc. v. Finjan, Inc.
`Page 4
`
`CS-1002
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`Page 4
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`

`

`this website includes self-help "toolkits" giving innovatcirs guidance on how to protect intellectual propertyIn specific
`countries such as China Korea and Mexico For questions regarding patent enforcementIssues. applicants may
`call the U.8. Government hotlirie at 1-866-999-HALT (1-~866-999—“4258)
`
`LICENSE FOR FOREIGN FILING UNDER
`Title 35,- United States Code, Section 184
`Title 37. Code of Federal Regulations, 5.11 & 5.15
`
`GRANTED
`
`The applicant has been granted a license under 35 U. S.C 184. If the phrase "IF REQUIRED, FOREIGN FILING
`LICENSE GRANTED" followed by a date appears on this form. Such licenses are issued in all applications where
`the conditions forIssuance of a license have been met regardless of whether or not a license may be required as
`set forthIn 37 CFR 5. 15. The scape and limitations of this license are set forth'In 3? CFR 5.15(a) unless an earlier
`license has been issued under 37 CFR 5.15(b). The licenseIS subject to revocation upon written notification. The
`date indibated'Is the effective date of the license, unless an earlier license of similar scope has been granted under
`37 CFR 5.13 or5-1.4.
`
`This licenseIs toberetained by tI~I= licensee and may be used at any time on or afterthe effective date thereof unless
`it is revoked This licenseIs automatically transferred to any related applicationsIs) filed under 37 CFR 1. 53(d) This
`licenseIS not retroactive.
`
`The grant of a license does not in any way lessen the responsibility of a licensee for the security of the subject matter
`as imposed by any Government contract or the provisions of existing laws relating to espionage and the national
`security or the export of technical data. Licensees should apprise themselves of current regulations especially with
`respect to certain countries of other agencies. particularly the Office of Defense Trade Controls Department of
`State (with respect ‘0 Merritt: Munitions and Implements of War (22 CFR 121--;128)) the Bureau of Industry and
`Security Department of Commeice (15 CFR parts 730-774); the Office ofForeign AssetsControl Department of
`Treasury (31 CFR Parts 500+) and the Department of Energy.
`-
`NOTQRANTED
`-
`-
`-
`No license under 35 U.8.0.184 has been granted at this time ifthe phrase "IFI REQUIRED FOREIGN FILING
`LICENSE GRANTED DOES NOT appear on this-fon'n- Applicant may still petition for a license under 37 CFR 512
`if a license!3 desired beforetheexpiration of6 months from theIfiling date of the application. If 6 months has lapsed
`from the filing date of this application and the licensee has not received any indication of a secrecy order under 35
`U.S.C_. 181. the iicensee may foreign file the application pursuant to 37 CFR 5.15(b).
`
`SeiectUSA
`
`The United States represents the largest most dynamic marketplace inthe world and is an unparalleled location for
`business investment.- innovation. and commercialization of newtechnologles The US offerstremendous resources
`and advantages for those who invest and manufacture goods here. ThroughISelectUSA. our nation works to
`promote and facilitate business investment. selectUSA provides information assistance to the international investor
`community; serves as an ombudsman for existing and-potential investors; advocates onbehalf of US. cities, states.
`and regions competing for global investment; andcounsels US. economic development organizations on investment
`attraction best practices. To' learn more about why the United States is the best country in the world to develop
`page 3 of4
`
`- CS—1002 '
`Cisco Systems, Inc. v. Frnjan, Inc.
`.
`Page 5
`
`CS-1002
`Cisco Systems, Inc. v. Finjan, Inc.
`Page 5
`
`

`

`technology. manufacture products. deliver services.‘ and grow your business. visit http:flwww.$electUSA.gov or call
`+1-202-482-6300.
`
`page 4 of 4
`
`08-1002
`
`Cisco Systems, Inc. v. Finjan, Inc.
`Page 6
`
`CS-1002
`Cisco Systems, Inc. v. Finjan, Inc.
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`

`

`FIN0001-CONl-ClPl-CON4
`
`PATENT
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Application of
`
`Yigal Mordechai EDERY, et a1.
`
`Group Art Unit: 2431
`
`Serial No.: 13f290,708
`
`Examiner: Christopher A. Revak
`
`Filed: November 7", 201 1
`
`For: MALICIOUS MOBILE CODE RUNTIME MONITORING SYSTEM AND METHODS
`
`REQUEST FOR RECONSIDERATION OF THE DISMISSED RENEWED PETITION
`TO ACCEPT UNINTENTIONALLY DELAYED CLAIM OF PRIORITY UNDER 35
`
`U.S.C. §119(e) AND §120 FOR THE BENEFIT OF A PRIOR—FILED APPLICATION
`FILED UNDER 37 CFR§ l.78(a)(3)
`
`Mail Stop PETITIONS
`Commissioner for Patents
`
`P. 0. Box 1450
`
`Alexandria, VA 22313-1450
`
`Dear Sir:
`
`In response to the December 3, 2013 dismissal of the Assignee’s renewed petition for the
`
`acceptance of an unintentionally delayed claim of priority under 35 U.S.C. § 1 19(0) and §l20 for
`
`the benefit of prior-filed applications in the above-referenced patent application, the Assignee
`
`respectfully requests reconsideration of the petition dismissal in view of the revised priority
`
`language submitted in conjunction herewith as an Amendment to the Specification pursuant to
`
`37 CFR 1.312.
`
`In accordance with the Patent Office’s suggestion in the December 3”] dismissal, the
`
`following amendment to the specification of the present application which adds a reference to
`
`prior-filed US. Patent Application No. 08f790,09?, filed January 28, 1997, now US. Patent No.
`
`6,167,520 which claims benefit of US. Provisional Patent Application No. 60f030,639,
`
`is
`
`submitted in conjunction with this Petition:
`
`[0001] This application is a continuation of assignee‘s pending US. patent
`
`application serial no. 12f471,942, filed May 26, 2009 by inventors Yigal
`
`Mordechai Edery, et 31., now US. Patent No. 8,0?9,086, entitled "Malicious
`
`CS-1002
`
`Cisco Systems, Inc. v. Finjan, Inc.
`Page 7
`
`CS-1002
`Cisco Systems, Inc. v. Finjan, Inc.
`Page 7
`
`

`

`Serial No. 13/290,708
`
`Docket No. FINflflfll-CONl-CIPl-CON4
`
`Mobile Code Runtime Monitoring System and Methods," which is a continuation
`
`of assignee's U.S. patent application serial no.
`
`1 “320,1 l4, filed March 'x', 2006 by
`
`inventors Yigal Mordechai Edery, et al., now U.S. Patent No. 7,613,926, entitled
`
`"Method and System for Protecting a Computer and a Network from Hostile
`
`Downloadables," which is a continuation of assignee's U.S. patent application
`
`serial no. 09f86l,229, filed on May 17, 2001 by inventors Yigal Mordechai
`
`Edery, et a1., now U.S. Patent No. 7,058,822, entitled "Malicious Mobile Code
`
`Runtime Monitoring System And Methods," all of which are hereby incorporated
`
`by reference. U.S. patent application serial no. 09i86l,229, now U.S. Patent No.
`
`7,058,822, claims benefit of provisional U.S. patent application serial no.
`
`602’205,591, entitled "Computer Network Malicious Code Run-Time Monitoring,"
`
`filed on May 1?, 2000 by inventors Nimrod ltzhak Vered, et al., which is hereby
`
`incorporated by reference. U.S. patent application serial no. 09x86 1 ,229, now
`
`U.S. Patent No. 7,058,822, is also a Continuation-In-Part of assignee‘s U.S. patent
`
`application serial no. 09I’539,667, entitled "System and Method for Protecting a
`
`Computer and a Network From Hostile Downloadables," filed on March 30, 2000
`
`by inventor Shlomo Touboul, now U.S. Patent No. 6,804,780, and hereby
`
`incorporated by reference, which is a continuation of assignee's U.S. patent
`
`application serial no. 08f964,388, filed on November 6, 1997 by inventor Shlomo
`
`Touboul, now U.S. Patent No. 6,092,194, also entitled "System and Method for
`
`Protecting a Computer and a Network from Hostile Downloadables" and hereby
`
`incorporated by reference, which application claims the benefit of provisional
`
`U.S. application serial no. 60x’030,639, filed November 8, 1996 by inventors
`
`Shlomo Touboul, entitled “System and Method For Protecting a Computer From
`
`Hostile Downloadables,” U.S. Serial No. 092’86l,229, now U.S. Patent No.
`
`7,058,822, is also a Continuation-In-Part of assignee's U.S. patent application
`
`serial no. 093551302, entitled "System and Method for Protecting a Client During
`
`Runtime From Hostile Dowuloadables," filed on April 18, 2000 by inventor
`
`Shlomo Touboul, now U.S. Patent No. 6,480,962, which is hereby incorporated
`
`by reference, which is a continuation of U.S. application serial no. 08f?90,097,
`
`filed January 29, 1997 by inventor Shlomo Touboul, now U.S. Patent No.
`
`08-1002
`
`Cisco Systems, Inc. v. Finjan, Inc.
`Page 8
`
`CS-1002
`Cisco Systems, Inc. v. Finjan, Inc.
`Page 8
`
`

`

`Serial No. 13/290,708
`
`Docket No. FINOflfll-CONl-ClPl-CON4
`
`6,167,520, entitled “System and Method For Protecting a Client From Hostile
`
`Downloadablcs” which claims the benefit of U.S. provisional application no.
`
`602030.639, filed on November 8, 1996 by inventor Shlomo Touboul, entitled
`
`“System and Method For Protecting a Computer From Hostile Downloadables.”
`
`This amendment has been submitted separately as an Amendment to the Specification under 3?
`
`CFR 1.312 and includes no new matter.
`
`In accordance with 3? CFR §l.78(a)(2)(i),
`
`the
`
`amendment
`
`identifies the prior filed application by application number and indicates the
`
`relationship of the applications.
`
`Assignee understands that a petition for acceptance of a claim for late priority under 37
`
`CFR §1.78(a)(3) is only applicable to those applications filed on or after November 29, 2000 and
`
`after the expiration of the period specified in 37 CFR §l.78(a)(2)(ii). Assignee understands that
`
`the petition under 37 CFR §1.78(a)(3) must be accompanied by
`
`(1) the reference required by 35 U.S.C. §ll9(e), §120 and 37 CFR §1.?8(a)(2)(i) of the
`
`prior-filed application, unless previously submitted;
`
`(2) the surcharge set forth in 37 CPR §1.17(t); and
`
`(3) a statement that the entire delay between the date the claim was due under 37 CFR
`
`§l.78(a)(2)(ii) and the date the claim was filed was unintentional.
`
`The correction of the priority claim of the present application is made to complete the
`
`priority claim to include a specific reference to prior-filed U.S. Patent Application No.
`
`08(790,09?, filed January 28, 199?, now U.S. Patent No. 6,167,520 which also claims benefit of
`
`U.S. Provisional Patent Application No. 60l030,639, filed November 8, 1996. This request is
`
`made after the expiration of the period specified in 3? CFR §l.78(a)(2)(ii).
`
`Assignee submits that the entire delay between the date the claim was due under 3? CFR
`
`§l.?8(a)(2)(ii) and the date the claim was originally filed was unintentional.
`
`Payment of$l,410 fee as required under 37 CFR §1.l7(t) was provided electronically via
`
`EFS-Web with the petition filed on October 23, 2012 and no additional fees are believed to be
`
`due. The Commissioner is authorized to charge any additional fees determined to be due to
`
`Deposit Account No. 50-6099.
`
`CS—1002
`
`Cisco Systems, Inc. v. Finjan, Inc.
`Page 9
`
`CS-1002
`Cisco Systems, Inc. v. Finjan, Inc.
`Page 9
`
`

`

`Serial No. 13f290,708
`
`Docket No. FINflflfll-CONl-CIPl-CON4
`
`Assignec submits that this request and the amendment to the specification are diligently
`
`made to correct the record of the present application. Granting of this renewed petition and
`
`entrance of the Amendment to the Specification are respectfully requested.
`
`Respectfully submitted,
`
`
`/Dawn—Marfe Bev — 44 442/
`Dawn-Marie Bey
`Reg. No. 44,442
`Attorneys for Assignce
`Finjan, Inc.
`
`Date: December 6, 2013
`
`By:
`
`Bey & Cotropia PLLC
`213 Bayly Court
`Richmond, Virginia 23229
`(w) 804-441-8530
`
`CS—1002
`
`Cisco Systems, Inc. v. Finjan, Inc.
`Page 10
`
`CS-1002
`Cisco Systems, Inc. v. Finjan, Inc.
`Page 10
`
`

`

`FINflflfll-CONI-CIPI-CON4
`
`PATENT
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Application of
`
`Yigal Mordeehai EDERY, et a1.
`
`Group Art Unit: 2431
`
`Serial No.: 13f290,708
`
`Examiner: Christopher A. Revak
`
`Filed: November 7", 201 I
`
`For: MALICIOUS MOBILE CODE RUNTIME MONITORING SYSTEM AND
`
`METHOFDS
`
`AMENDMENT TO THE SPECIFICATION UNDER 37 C.F.R. § 1.312
`
`Commissioner for Patents
`
`Mail Stop: Issue Fee
`P. O. Box 1450
`
`Alexandria, VA 223 13-1450
`
`Sir:
`
`In conjunction with the Request for Reconsideration of the Dismissed Renewed Petition
`
`to Accept Unintentionally Delayed Claim of Priority Under 35 U.S.C. §l 19(e) and § 120 for the
`
`Benefit of a Prior-Filed Application Filed Under 37 CPR. § l.78(a)(3) entry of the following
`
`amendment to the specification and consideration of the remarks submitted herein is respectfully
`
`requested.
`
`Amendments to the Specification begin on page 2 of this paper.
`
`Remarks begin on page 4 of this paper.
`
`CS-1002
`
`Cisco Systems, Inc. v. Finjan, Inc.
`Page 11
`
`CS-1002
`Cisco Systems, Inc. v. Finjan, Inc.
`Page 11
`
`

`

`Serial No. 13/290,708
`
`Docket No. FINflflfll-CONl-ClPl-CON4
`
`Amendments to the Specification
`
`Please replace Paragraph [0001] with the following amended paragraph:
`
`[000]] This application is a continuation of assignee's pending U.S. patent application serial no.
`
`12:47] ,942, filed May 26, 2009 by inventors Yigal Mordechai Edery, et al., now U.S. Patent No.
`
`8,029,086, entitled "Malicious Mobile Code Runtime Monitoring System and Methods," which
`
`is a continuation of assignee's U.S. patent application serial no.
`
`1 1f3?0,1 l4, filed March 7, 2006
`
`by inventors Yigal Mordechai Edery, et al., now U.S. Patent No. 7,613,926, entitled "Method
`
`and System for Protecting a Computer and a Network from Hostile Downloadables," which is a
`
`continuation of assigncc's U.S. patent application serial no. 09f861,229, filed on May 17, 2001
`
`by inventors Yigal Mordechai Edery, et al., now U.S. Patent No. 7,058,822, entitled "Malicious
`
`Mobile Code Runtime Monitoring System And Methods," all of which are hereby incorporated
`
`by reference. U.S. patent application serial no. 09!861,229, new U.S. Patent No. 7,058,822,
`
`claims benefit of provisional U.S. patent application serial no. 60f205,59l , entitled "Computer
`
`Network Malicious Code Run-Time Monitoring," filed on May 1?, 2000 by inventors Nimrod
`
`ltzhak Vered, et al., which is hereby incorporated by reference. U.S. patent application serial no.
`
`09J’86l,229, now U.S. Patent No. 7,058,822, is also a Continuation-ln-Part of assignee‘s U.S.
`
`patent application serial no. 09539667, entitled "System and Method for Protecting a Computer
`
`and a Network From Hostile Downloadables," filed on March 30, 2000 by inventor Shlomo
`
`Touboul, now U.S. Patent No. 6,804,280, and hereby incorporated by reference, which is a
`
`continuation of assignee's U.S. patent application serial no. 08f964,388, filed on November 6,
`
`1997 by inventor Shlomo Touboul, now U.S. Patent No. 6,092,194, also entitled "System and
`
`Method for Protecting a Computer and a Network from Hostile Downloadables“ and hereby
`
`incorporated by reference, which application claims the benefit of provisional U.S. application
`
`serial no. 6011030639, filed November 8, 1996 by inventors Shlomo Touboul, entitled “System
`
`and Method For Protecting a Computer From Hostile Downloadables.” U.S. Serial No.
`
`091861229, now U.S. Patent No. 7,058,822, is also a Continuation-ln-Part of assignee‘s U.S.
`
`patent application serial no. 09,551,302, entitled "System and Method for Protecting a Client
`
`During Runtime From Hostile Downloadables,” filed on April 18, 2000 by inventor Shlomo
`
`Touboul, now U.S. Patent No. 6,480,962, which is hereby incorporated by reference, which is a
`
`CS-1002
`
`Cisco Systems, Inc. v. Finjan, Inc.
`Page 12
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`CS-1002
`Cisco Systems, Inc. v. Finjan, Inc.
`Page 12
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`

`

`Serial No. 13/290,708
`
`Docket No. FIN0001-CONI-CIPI-CON4
`
`
`continuation of US. application serial no. 082’?90.09?, filed January 29, 199? by inventor
`
`Shlomo Touboul1 now US. Patent No. 6.|67".5201 entitled “System and Method For Protecting a
`
`Client From Hostile Downloadables” which claims the benefit ofU.S. provisional application
`
`no. 60/030,639, filed on November 8, I996 by inventor Shlomo Touboul, entitled “System and
`
`Method For Protecting a Computer From Hostile Downloadables.”
`
`CS—1002
`
`Cisco Systems, Inc. v. Finjan, Inc.
`Page 13
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`CS-1002
`Cisco Systems, Inc. v. Finjan, Inc.
`Page 13
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`

`

`Serial No. 13/290,708
`
`Docket No. FINOflfll-CONl-ClPl-CON4
`
`REMARKS
`
`Assignee respectfully requests entry of the amendment to the specification of US. Patent
`
`Application No. 13x’290,708 in conjunction with the Request for Reconsideration of the Dismissed
`
`Renewed Petition to Accept Unintentionally Delayed Claim of Priority Under 35 U.S.C. § 1 19(0)
`
`and § 120 for the Benefit of a Prior-Filed Application Filed Under 3'? C.F.R. § 1.?8(a)(3) filed
`
`herewith. The amendment introduces no new matter and corrects the priority claim of the
`
`application. Assignee notes that US. Patent Application Nos. 081790392, 601030,639 and the
`
`present invention share the inventor Shlomo Touboul.
`
`This submission is filed prior to payment of the issue fee and not fee is believed to be
`
`due. However, in the event additional fees are due, the Commissioner is authorized to charge any
`
`underpayment of fees, or to credit any overpayment, to Deposit Account No. 50-6099.
`
`Respectfully submitted,
`
`/Dawn—Marie Bey — 44, 442/
`Dawn-Marie Bey
`Reg. No. 44,442
`Attorneys for Assignee
`Finjan, Inc.
`
`Date: December 6, 2013
`
`By:
`
`Bey & Cotropia PLLC
`213 Bayly Court
`Richmond, Virginia 23229
`(w) 804-441-8530
`
`CS—1002
`
`Cisco Systems, Inc. v. Finjan, Inc.
`Page 14
`
`CS-1002
`Cisco Systems, Inc. v. Finjan, Inc.
`Page 14
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`

`

`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`3
`
`
`- ‘- ._"‘-..
`-“'\
`-
`
`
`
`Commissioner for Patents
`
`United States Patent and Trademark Office .
`P.O. Box 1450
`Alexandria. VA 22313-1450
`myspragov
`
`Richmond VA 23229
`
`Bey & Cotropia PLLC (Finjan Inc.)
`213 Bayly Court
`_
`
`In re Application 'of
`Edery et a1.
`Application No. 131290308
`Filed: November 7, 2011
`Attorney Docket No. FINOOOI -CON1 -CIPI -
`CON4
`
`-
`
`:
`:
`I
`‘
`
`DECISION DISMISSING PETITIONS
`UNDER 37 CFR l.78(a)(3) AND (a)(6)
`
`This is a decision 0n the renewed petition under 37 CFR §§ 1.?8(a)(3) and l.78(a)(6), filed
`October 1, 2013, to accept an unintentionally delayed claim under 35 U.S.C. §§ 120 and 119(e)
`for the benefit of priority to the prior-filed nonprovisional and provisional applications set forth
`in the concurrently filed amendment.
`
`The petition is DISMISSED
`
`A petition for acceptance of a claim for late priority under 37 CFR §§ l.78(a)(3) and 1.78(a)(6) is
`only applicable to those applications filed on or after November 29, 2000 and afier the expiration
`of the period specified in 37 CFR §§ 1.73(a)(2)(ii) and 1.78(a)(5)(ii).
`In addition, the petition
`under 3? CFR §§ i‘.78(a)(3) and 1.78(a)(6) must be accompanied by:
`
`(l)
`
`'
`(2)
`(3)
`
`the reference required by 35 IU.S.C. §§ 120 and 119(e) and 37 CFR §§
`1.78(a)(2)(i) and 1-.78(a)(5)(i) of the prior-filed application, unless
`previously submitted;
`'
`_
`the surcharge set forth in § 1.17(t); and
`a statement that the entire delay between the date the claim has due
`under 3? CFR §§ l.78(a)(2)(ii) and 1.78(a)(5)(ii) and the date the
`I claim was filed was unintentional. The Director may require
`additional where there is a question whether the delay was
`unintentional.
`
`The petition does not comply with item (I).
`
`The amendment is not acceptable as drafted.
`
`CS-1002
`
`Cisco Systems, Inc. v. Finjan, Inc.
`Page 15
`
`CS-1002
`Cisco Systems, Inc. v. Finjan, Inc.
`Page 15
`
`

`

`Application No. 131290308
`
`‘
`
`Page 2
`
`The amendment asserts Application No. 0941551203 is a continuation of Application No.
`08179039? and further claims benefit of Applicatiou No. 60f030,639 (emphasis added).
`
`Application No. 09/551,302, filed April 18, 2000, cannot directly claim benefit of Application
`No. 60/030,639, filed November 8, 1996 because it was filed more than 12 months after the
`filing date of the provisional application.
`
`Application No. 03/790,097, filed January 29, 1997, claims benefit of Application No.
`60!030,639, filed November 8, 1996.
`
`Please submit another amendment that corrects the priority chain. Specifically, eliminate the
`phrase -“and further”- from the third line of the second page of the amendment and substitute the
`word“which”.
`
`Before the petition under 3? CFR §§ 1.?8(a)(3) and 1.78(a)(6) can be granted, a renewed petition
`and either an Application Data Sheet or a substitute amendment (complying with the provisions
`01°37 CFR 1.121 and 3? CFR 1.76(b)(5)) to correct the above matters are required.
`
`Further correspondence with respect to this matter should be addressed as follows:
`
`By mail:
`
`By hand:
`
`Mail Stop PETITIONS
`Commissioner for Patents
`
`Post Office Box 1450
`Alexandria, VA 22313—1450
`
`Customer Service Window
`' Mail Stop Petitions
`Randolph Building
`401 Dulany Street
`Alexandria, VA 22314
`
`By fax:
`
`' (571) 273-8300
`ATTN: Office of Petitions
`
`By internet:
`'
`
`EFS-Web
`www.uspto.govfebcfefs_help.htm1
`(for help using BPS-Web call the
`Patent Electronic Business Center
`
`at (866)217-9197)
`
`CS-1002
`
`Cisco Systems, Inc. v. Finjan, Inc.
`Page 16
`
`CS-1002
`Cisco Systems, Inc. v. Finjan, Inc.
`Page 16
`
`

`

`Application No. 13,090,708
`
`_
`
`_
`
`Page 3
`
`Any questions concerning this matter may be directed to the undersigned at (571) 272-3230.
`
`Shirene Willis Brantley
`Attorney Adviser ‘
`Office of Petitions
`
`CS—1002
`
`Cisco Systems, Inc. v. Finjan, Inc.
`Page 17
`
`CS-1002
`Cisco Systems, Inc. v. Finjan, Inc.
`Page 17
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`

`

`
`
`UNITED S'i‘A’iEs PA't‘ENr AND TRADEMARK OEHCE
`
`UNITED STATES DEPARTMENT OF CONIMERCE
`United States Patent and Trademark Olfice
`Address: COMMISSIONER FOR PA'I'IENTS
`PD. Beat 1450
`Alexandria, V i Igi nia 2 2.1.13 - I 450
`www.mrfluguv
`
`NOTICE OF ALLOWANCE AND FEE(S) DUE
`
`1 15332
`
`T590
`
`“MESH” I 3
`
`Bey 81. Cotropia PLLC (1"inj an Inc.)
`2 l 3 Bayly Conn
`R....m.d,m3229
`
`EXAMINER
`
`REVAK. CHRISTOPHER A
`
`2-1-3]
`
`DATE MAILED: IDQSIEDI 3
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVIENTOR
`
`ATTORNEY DOCKET NO.
`
`('ONI‘IRNIA'I'ION NO.
`
`Yigal Mordeehai Edety
`I NOTED] l
`l3!290,?08
`TITLE OF INVENTION: MALICIOUS MOBILE CODE RUNTIME MONITORING SYSTEM AND METHODS
`
`FINUOUI—CONI -CIP| —CON4
`
`—ll .20
`
`APPLN TYPE
`
`ENTITY STATI‘-S
`
`ISSUE FEE DUE
`
`PI'BLILATION FEE DI‘E PREV PAID ISSUE FEE
`
`TOTAL FEELS] DUE
`
`DATE DI‘E
`
`nonprovisional
`
`UNDISCOI INTED
`
`SI 780
`
`0] f2 THO] 4
`
`THE APPLICATION IDENTIFIED ABOVE HAS BEEN EXAMINED AND IS ALLOWED FOR ISSUANCE AS A PATENT.
`PROSECUTION ON THE MERITS IS CLOSED. THIS NOTICE OF ALLOWANCE IS NOT A GRANT OF PATENT RIGHTS.
`TIIIS APPLICATION IS SUBJECT TO WITIIDRAWAL FROM ISSUE AT TIIE INITIATIVE 0F TIIE OFFICE OR UPON
`PETITION BY THE APPLICANT. SEE 37 CFR 1.313 AND MPEP 1308.
`
`THE ISSUE FEE AND PUBLICATION FEE (IF REQUIRED) MUST BE PAID WITHIN THREE MONTHS FROM THE
`MAILING DATE OF TIIIS NOTICE OR TIIIS APPLICATION SIIALL BE REGARDED AS ABANDONED.
`THIS
`TAT T RY PERI D A
`T BE EXTENDED. SEE 35 U.S.C. 151. THE ISSUE FEE DUE INDICATED ABOVE DOES
`
`NOT REFLECT A CREDIT FOR ANY PREVIOUSLY PAID ISSUE FEE IN THIS APPLICATION.
`IF AN ISSUE F