www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`90/014,875
`
`10/07/2021
`
`10257319
`
`3994
`
`MayPatents Ltd. c/o Dorit Shem-Tov
`P Oo B 7230
`Ramat-Gan, 5217102
`ISRAEL
`
`WORJLOH, JALATEE
`
`3992
`
`11/12/2021
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL-90A (Rev. 04/07)
`
`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`90/014,875
`
`10/07/2021
`
`10257319
`
`3994
`
`MayPatents Ltd. c/o Dorit Shem-Tov
`P Oo B 7230
`Ramat-Gan, 5217102
`ISRAEL
`
`WORJLOH, JALATEE
`
`3992
`
`11/12/2021
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL-90A (Rev. 04/07)
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`Commissionerfor Patents
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`www.uspto.gov
`
`DO NOT USE IN PALM PRINTER
`
`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
`
`Charhon Callahan Robson & Garza, PLLC
`3333 Lee Parkway, Suite 460
`Dallas, TX 75219
`
`EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO. 90/014,875.
`
`PATENT UNDER REEXAMINATION 10257319.
`
`ART UNIT 3992.
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the aboveidentified exparte reexamination proceeding (87 CFR 1.550(f)).
`
`Wherethis copy is supplied after the reply by requester, 37 CFR 1.535, or the timefor filing a
`reply has passed, no submission on behalf of the evparfe reexamination requester will be
`acknowledged or considered (37 CFR 1.550(g)).
`
`PTOL-465 (Rev.07-04)
`
`
`
`.
`Order Granting Request For
`Ex Parte Reexamination Art Unit|AIA (FITF) StatusExaminer
`
`
`JALATEE WORJLOH
`3992
`No
`
`90/014,875
`
`10257319
`
`Patent Under Reexamination
`
`
`
`--The MAILING DATEof this communication appears on the cover sheet with the correspondence address--
`
`The request for exgarfe reexamination filed 10/07/2021 has been considered and a determination has
`been made. An identification of the claims, the references relied upon, and the rationale supporting the
`determination are attached.
`
`Attachments: a)
`
`PTO-892,
`
`b)v¥)
`
`PTO/SB/08,
`
`c)Q Other:
`
`1.
`
`The requestfor exgarfe reexamination is GRANTED.
`
`RESPONSE TIMES ARE SET AS FOLLOWS:
`
`For Patent Owner's Statement (Optional): TWO MONTHS from the mailing date of this communication
`(37 CFR 1.530 (b)). EXTENSIONS OF TIME ARE GOVERNED BY37 CFR 1.550(c).
`
`For Requester's Reply (optional): TWO MONTHS from the date of service of any timely filed
`Patent Owner's Statement (87 CFR 1.535). NO EXTENSION OF THIS TIME PERIOD IS PERMITTED.
`lf Patent Owner does notfile a timely statement under 37 CFR 1.530(b), then no reply by requester
`is permitted.
`
`JALATEE WORJLOH/
`Primary Examiner, Art Unit 3992
`
`Karin Reichle/
`Primary Examiner, Art Unit 3992
`
`A.J.K/
`Supervisory Patent Examiner, Art Unit
`3992
`
`cc:Requester ( if third party requester }
`U.S. Patent and Trademark Office
`PTOL-471G(Rev. 01-13)
`
`Office Action in Ex Parte Reexamination
`
`Part of Paper No. 20211029
`
`
`
`Application/Control Number: 90/014,875
`Art Unit: 3992
`
`Page 2
`
`EX PARTE REEXAMINATION ORDER
`
`Decision on Request
`
`A substantial new question of patentability affecting claims 1,2, 12,14, 15, 17, 18, 19, 21,
`
`22, 24, 25, 26, 27, 28, and 29 of United States Patent Number 10,257,319 (‘319 patent) to
`
`Shribmanis raised by the request for ex parte reexamination.
`
`Extensions of time under 37 CFR 1.136(a) will not be permitted in these proceedings
`
`because the provisions of 37 CFR 1.136 apply only to "an applicant" and not to parties in a
`
`reexamination proceeding. Additionally, 35 U.S.C. 305 requires that ex parte reexamination
`
`proceedings "will be conducted with special dispatch" (37 CFR 1.550(a)). Extensions of time in
`
`ex parte reexamination proceedingsare provided for in 37 CFR 1.550(c).
`
`References cited in Request
`
`e Reiter, M. & Rubin A., Crowds: Anonymityfor Web Transactions, ACM Transactions on
`
`Information and System Security, Vol. 1, No. 1, at pp. 66-2 (Nov. 1998) (“Crowds”);
`
`e
`
`Fielding, R. et al., Hypertext Transfer Protocol -HTTP 1.1., RFC 2616, IETF (June
`
`1999) (“RFC 2616”);
`
`e U.S. Patent No. 6795848 to Borderet al. (“Border’”);and
`
`e Rennhard, M., MorphMix-A Peer-to-Peer-based System for Anonymous Internet Access,
`
`Doctoral Thesis (2004) (“MorphMix”).
`
`Other
`
`e Declaration of Dr. Michael J. Freedman
`
`
`
`Application/Control Number: 90/014,875
`Art Unit: 3992
`
`Issue(s) Raised by Request
`
`Page 3
`
`Issue 1: Crowds either alone or in combination with RFC 2616 and knowledge of a person
`
`of skill in the art (POSA)
`
`The Requester alleges that Crowdseither alone or in combination with RFC 2616 and
`
`knowledge of a POSAraises a substantial new question of patentability (SNQ) with regard to
`
`claims 1, 2, 12, 14, 15, 17, 18, 21, 22, and 24-27.
`
`Crowds has publication date of November 1998 and RFC 2616 was published June 1999.
`
`Therefore, these references predate the effective filing date of ‘319 patent.
`
`Issue 2: Border either alone or in combination with RFC 2616 and knowledge of a POSA
`
`The Requester alleges that Boarder either alone or in combination with RFC 2616 and
`
`knowledge of a POSAraises a SNQ with regard to claims 1, 12, 14, 15, 17, 18, 21, 22, and 24-
`
`29.
`
`Boarderhas an effective filing date of November 8, 2000; therefore, these references
`
`predate the effective filing date of ‘319 patent.
`
`Issue 3: MorphMixeither alone or in combination with RFC 2616 and knowledge of POSA
`
`The Requester alleges that MorphMix either alone or in combination with RFC 2616 and
`
`knowledge of a POSAraises a SNQ with regard to claims 1, 2, 14, 15, 17-19, 21, 22, and 24-27.
`
`Background
`
`Claims 1, 2, 12, 14, 15, 17, 18, 19, 21, 22, 24, 25, 26, 27, 28, and 29 in the instant request
`
`for reexamination of the ‘319 patent to Shribmanetal. (“Shribman’).
`
`
`
`Application/Control Number: 90/014,875
`Art Unit: 3992
`
`Page 4
`
`Shribmanis directed to a system designed for increasing network communication speed
`
`for users, while lowering network congestion for content owners and ISPs. The communication
`
`network of Shribman contains:
`
`e
`
`e
`
`e
`
`e
`
`e
`
`clients that request information from webservers;
`
`webserver can be a typical HTTPserver;
`
`acceleration server that contains a database of Internet protocol addresses of devices in
`
`the network;
`
`agents, which receives client’s request; and
`
`peers, which contain ta least portions of the information sought by the client from the
`
`webserver.
`
`Shribman at Abstract; Fig. 3 and related text.
`
`Claim 1 is a representation of Shribman’s system:
`
`1. A methodfor use withafirst client device, for use with a first server that comprises a web
`
`serverthat is a Hypertext Transfer Protocol (HTTP) server that responds to HTTP requests,
`
`the first server stores a first contentidentified by a first content identifier, and for use with a
`
`second server, the method bythefirst client device comprising:
`
`receiving, from the second server, the first content identifier;
`
`sending, to the first server over the Internet, a Hypertext Transfer Protocol (HTTP)
`
`request that comprises the first content identifier;
`
`receiving, the first contentfrom the first server over the Internet in response to the
`
`sending of the first content identifier; and
`
`
`
`Application/Control Number: 90/014,875
`Art Unit: 3992
`
`Page 5
`
`sending, the first content by the first client device to the second server, in responseto the
`
`receiving of the first content identifier.
`
`Original Prosecution
`
`During the original prosecution of Shribman a Non-Final rejection was mailed September
`
`5, 2018 rejecting all pending claims. Following Applicant’s response to the rejection a Notice of
`
`Allowance was issued on January 1, 2019. The Allowancestated that none of the references of
`
`record disclose or suggest “the combination of limitations specified in independent claim 1.”
`
`Inter Partes Review Proceeding
`
`e
`
`e
`
`e
`
`IPR2020-01266 — notinstituted;
`
`IPR2021-01492 filed September 3, 2021 — pending; and
`
`IPR2022-00135 filed November3, 2021 — pending.
`
`Scope of Reexamination
`
`On Noventher 2, 2002, Public Law 107-275 was enacted. Tule TL Subtitie A, Section
`
`13105, part (a) of the Act revised the reexamination statue by adding the following newlast
`
`sentence to 35 U.S.C. 303Q(a) and 312G:
`
`The existence of a substantial new question of patentability is notprecludedbythefact
`
`that a patent or printed publication was previously cited byor to the Office or considered bythe
`
`
`
`
`Office.
`
`
`
`Application/Control Number: 90/014,875
`Art Unit: 3992
`
`Page 6
`
`Por any reexamination ordered on or after November 2, 2002, the effective date of the
`
`statutary revision, relance on previously crted/considered art, te. “old art,” does not necessarily
`
`preclude the existence of a substantial new question of patentability (SNQ) that is based
`
`exchisively on the old art. Rather, determinations on whether a SNQOexists in such an instance
`
`shall be based upon a fact-specific inquiry done on a case-by-case basis.
`
`Analysis
`
`Issue 1: Crowds either alone or in combination with RFC 2616 and knowledge of a person
`
`of skill in the art (POSA)
`
`Crowdsis new art not previously considered by the examiner during the prosecution of
`
`Shribmanpatent.
`
`RFC2616 is old art that was before the examiner during the original prosecution of
`
`Shribman patent; however, the reference was not used in the content of a rejection. Therefore,
`
`RFC2616 is now being viewed in a newlight.
`
`Crowdsis directed to a system for increasing the privacy of web transactions. In Crowds,
`
`a user makes a request to join a “crowd” of other users. The user request to a web serveris first
`
`passed to a random memberof the crowd, who can either submit the request directly to the end
`
`server or forward it to another randomly chosen member whoin turn forwards the request
`
`independently. P. 67. The system uses an application called jondo that runs on the user’s
`
`computer and represents a user in a crowd. The jondo acts as a web proxyfor the user; therefore,
`
`any request coming from the browseris sent directly to the jondo. Upon receivingthefirst user
`
`request from the browser, the jondoinitiates the establishment of a random path ofjondosthat
`
`carries its user’s transactions to and from their intended webservers. The server’s replies
`
`traverse the same path as the requests, only in reverse. P. 73
`
`
`
`Application/Control Number: 90/014,875
`Art Unit: 3992
`
`Page 7
`
`RFC2616 is directed to Hypertext Transfer Protocol- HTTP/1.1. It is a documentthat
`
`specifies an Internet standards track protocol for the Internet community and requests comments.
`
`Hence, it appears that Crowdseither alone or in combination with RFC2616 describes
`
`features that the original examiner found to be lacking at the time of allowance. It is agreed that
`
`Crowdseither alone or in combination with RFC2616 raise a SNQthat a reasonable examiner
`
`would consider these teachings as important in determining the patentability of claims 1, 2, 12,
`
`14, 15, 17, 18, 21, 22, and 24-27.
`
`Issue 2: Border either alone or in combination with RFC 2616 and knowledge of a POSA
`
`Borderis new art not previously considered by the examiner during the prosecution of
`
`Shribmanpatent.
`
`Borderis directed to a communication system for retrieving web content. The system
`
`includes a downstream proxy server configured to receive a URL request message from a web
`
`browser. It also comprises an upstream proxy server configured to communicate with the
`
`downstream proxy server and to receive the URL request message from the downstream proxy
`
`server. In Boarder, the upstream proxy server forwards the message to a web serverand receives
`
`the content from the web server, wherein the upstream proxy server forwards the URL content to
`
`the downstream proxy server.
`
`Hence, it appears that Boarder either alone or in combination with RFC2616 describes
`
`features that the original examiner found to be lacking at the time of allowance. It is agreed that
`
`Boardereither alone or in combination with RFC2616 raise a SNQ that a reasonable examiner
`
`would consider these teachings as important in determining the patentability of claims 1, 12, 14,
`
`15, 17, 18, 21, 22, and 24-29.
`
`
`
`Application/Control Number: 90/014,875
`Art Unit: 3992
`
`Page 8
`
`Issue 3: MorphMixeither alone or in combination with RFC 2616 and knowledge of a
`
`POSA
`
`MorphMiixis new art not previously considered by the examiner during the prosecution
`
`of Shribman patent.
`
`MorphMiixis a thesis describes a peer-to-peer based system for anonymousInternet
`
`Access. Abstract. Clients in MorphMixare referred to as nodes; every node joining the system
`
`can itself establish circuits via other nodes to access a server anonymously, but can also be part
`
`of circuits established by other nodes and relay data for them at the sametime. P.98
`
`Hence, it appears that MorphMixeither alone or in combination with RFC2616 describes
`
`features that the original examiner found to be lacking at the time of allowance. It is agreed that
`
`MorphMixeither alone or in combination with RFC2616 raise a SNQ that a reasonable examiner
`
`would consider these teachings as important in determining the patentability of claims 1, 2, 14,
`
`15, 17-19, 21, 22, and 24-27.
`
`Claims 1, 2, 12,14, 15, 17, 18, 19, 21, 22, 24, 25, 26, 27, 28, and 29 will be reexamined.
`
`Extension of Time
`
`Extensions of time under 37 CFR 1.136(a) will not be permitted in these proceedings
`
`because the provisions of 37 CFR 1.136 apply only to "an applicant" and not to parties in a
`
`reexamination proceeding. Additionally, 35 U.S.C. 305 requires that reexamination proceedings
`
`"will be conducted with special dispatch" (37 CFR 1.550(a)). Extension of time in ex parte
`
`reexamination proceedings are provided for in 37 CFR 1.550(c).
`
`
`
`Application/Control Number: 90/014,875
`Art Unit: 3992
`
`Page 9
`
`Amendment in Reexamination Proceedings
`
`Patent owneris notified that any proposed amendmentto the specification and/or claims
`
`in this reexamination proceeding must comply with 37 CFR 1.530(d)-(j), must be formally
`
`presented pursuant to 37 CFR 1.52(a) and (b), and must contain any fees required by 37 CFR
`
`1.20(c).
`
`Service Papers
`
`After the filing of a request for reexamination by a third party requester, any document
`
`filed by either the patent owneror the third party requester must be served on the other party
`
`(or parities where two or more third party requester proceedings are merged) in the
`
`reexamination proceeding in the manner provided in 37 CFR 1.248. See 37 CFR 1.550.
`
`Notification of Concurrent Proceedings
`
`The patent owneris reminded of the continuing responsibility under 37 CFR 1.565(a) to
`
`apprise the Office of anylitigation activity, or other prior or concurrent proceeding,
`
`involving Patent No. 10,257,319 throughout the course of this reexamination proceeding. The
`
`third party requester is also reminded ofthe ability to similarly apprise the Office of any such
`
`activity or proceedings throughout the course of this reexamination proceeding. See MPEP §§
`
`2207, 2282, and 2286.
`
`All correspondencerelating to this ex parte reexamination proceeding should be directed:
`
`By Mailto:
`
`Mail Stop Ex Parte Reexam
`Central Reexamination Unit
`
`
`
`Application/Control Number: 90/014,875
`Art Unit: 3992
`
`Page 10
`
`Commissioner for Patents
`
`United States Patent & Trademark Office
`
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`By FAX to:
`
`(571) 273-9900
`Central Reexamination Unit
`
`By hand:
`
`Customer Service Window
`Randolph Building
`401 Dulany Street
`Alexandria, VA 22314
`
`Any inquiry concerning this communication should be directed to Jalatee Worjloh at
`
`telephone number 571-272-6714.
`
`/JALATEE WORJLOH/
`Primary Examiner, Art Unit 3992
`
`Conferees:
`/Karin Reichle/
`Primary Examiner, Art Unit 3992
`
`/ALEXANDER J KOSOWSKI/
`Supervisory Patent Examiner, Art Unit 3992
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
