`
`UNITED STATES PATENT AND TRADEMARKOFFICE
`
`United Statey Patentand Trodemark Office
`P.O. Bow 1450
`
`Alexandria, VA 22313-1450
`
`yAILE
`213 Bayly Court
`
`Bey & Cotropia PLLC (Finjan Inc.)
`
`Richmond VA 23229
`
`moose
`
`JAN0 9 2014
`
`OFFICE OF PETITIONS
`
`In re Patent No. 8,141,154
`Issue Date: March 20, 2012
`Application No. 12/814,584
`Filed: June 14, 2010
`Atty Docket No. FINQ008-DIV1
`
`: DECISION GRANTING PETITION
`: UNDER 37 CFR 1.78(a)(3) AND
`: REQUEST FOR CERTIFICATE OF
`CORRECTION
`oeeo
`
`This is in response to the PETITION TO ACCEPT UNINTENTIONALLY
`DELAYED CLAIM OF PRIORITY UNDER 35 U.S.C.
`§ 120 FOR THE BENEFIT
`OF A PRIOR-FILED APPLICATION FILED UNDER 37 C.F.R. §1.78(a)(3),
`filed October 16, 2013,
`to add a late claim under 35 U.S.C.
`§ 120 to prior-filed nonprovisional application No. 11/298,475
`by way of a certificate of correction.
`
`The petition under 37 CFR 1.78 is GRANTED.
`
`The application was filed after November 29, 2000 and prior to
`September 16, 2012.
`The claim for priority set forth on
`petition was not submitted on filing in the first sentence of
`the specification or in an application data sheet.
`The four and
`sixteen-month periods specified in 37 CFR § 1.78(a)(2)(1i)
`expired without correction. Thus,
`the instant petition is
`appropriate.
`In addition,
`the petition includes the required
`statement of unintentional delay. Receipt of the required
`surcharge is acknowledged.
`
`By decision mailed October 2, 2013, a prior request for
`certificate of correction filed September 19, 2013 was denied as
`the patent was printed with the priority information of record
`in the Office.
`
`In this pre-AIA case, petitioner submitted an amendment
`containing the reference required by 35 U.S.C.
`§ 120 and 37 CFR
`
`

`

`‘Patent No. 8,141,154
`
`Application No. 12/814,584
`
`Page 2
`
`1.78(a)(2)(i) for acceptance of an unintentionally delayed claim
`for the benefit of priority under 35 U.S.C.
`§ 120 to the above-
`noted, prior-filed nonprovisional applications.
`The reference
`is in compliance with former 37 CFR 1.78(a)(2) (iii), with the
`relationship stated as a divisional.
`
`the late
`All of the above requirements having been satisfied,
`claim for benefit of priority to the prior-filed application
`under 35 U.S.C. §120 is accepted as being unintentionally
`delayed.
`
`A corrected Filing Receipt, which includes the priority claim to
`the above-noted, prior-filed nonprovisional application,
`accompanies this decision on petition.
`
`Petitioner is advised that the granting of this petition and the
`mailing of a corrected Filing Receipt should not be viewed as an
`indication that a determination has been made that this
`application is entitled to claim benefit of the prior-filed
`application.
`A determination that applicant is entitled to
`claim benefit of the prior-filed application will be made by the
`Examiner prior to the issuance of a certificate of correction.
`
`Receipt of the $1420 surcharge fee and the $100 certificate of
`correction fee are acknowledged.
`
`This application is being referred to the Certificates of.
`Correction Branch for processing the request for a certificate
`of correction in accordance with this decision (with examiner
`approval as noted above) on the petition under 37 CFR
`1.78(a)(3).
`
`Any questions concerning this decision may be directed to the
`undersigned at
`(571) 272-3219.
`
`/Nancy Johnson/
`
`Nancy Johnson
`Attorney Advisor
`Office of Petitions
`
`ATTACHMENT: Corrected. Filing Receipt
`
`

`

`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`4
`Alexandria,»Viminia 22313-1450
`APPLICATION GRPARTpocrsFILINGor
`
`
`NUMBER
`371(c) DATE
`UNIT
`FIL FEE REC'D
`ATTY.DOCKET.NO
`TOT suas IND CLAIMS
`CONFIRMATION NO.‘0667
`
`12/814,584
`
`06/14/2010
`
`2435
`
`1390
`
`
`
`Tah UNITED States PaTENT AND TRADEMARK OFFIGE
`
`FIN0008-DIV 1
`
`115222
`Bey & Cotropia PLLC (Finjan Inc.)
`
`213 Bayly Coun
`
`Richmond, VA 23229
`
`|
`
`CORRECTEDFILING RECEIPT
`
`Euegy9m
`
`Date Mailed: 01/02/2014
`
`Receipt is acknowledged ofthis 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
`application mustinclude the following identification information: the U.S. APPLICATION NUMBER,FILING DATE,
`NAME OF APPLICANT,and TITLE OF INVENTION. Feestransmitted by check or draft are subject to collection.
`Please verify the accuracyof the data presentedonthis receipt. If an error is noted onthis Filing Receipt, please
`submit a written requestfor a Filing Receipt Correction. Please provide a copyof this Filing Receipt with the
`changesnotedthereon. If you received a "Notice to File Missing Parts"for this application, please submit
`any correctionsto this Filing Receipt with your reply to the Notice. When the USPTO processesthe reply
`to the Notice, the USPTO will generate anotherFiling Receipt incorporating the requested corrections
`Inventor(s)
`
`David GRUZMAN, Ramat Gan, ISRAEL;
`Yuval Ben-lItzhak, Tel Aviv, ISRAEL;
`
`Applicant(s)
`
`David GRUZMAN, Ramat Gan, ISRAEL;
`Yuval Ben-ltzhak, Tel Aviv, ISRAEL;
`AssignmentFor Published Patent Application
`Finjan, Inc.
`
`Powerof Attorney: The patent practitioners associated with Customer Number 74877
`
`Domestic Priority data as claimed by applicant
`This application is a DIV of 11/298,475 12/12/2005 PAT 7757289
`
`Foreign Applications for which priority is claimed (You maybeeligible to benefit from the Patent Prosecution
`Highwayprogram at the USPTO. Please see http://www.uspto.gov for more information.) - None.
`Foreign application information must be provided in an Application Data Sheetin order to constitute a claim to
`foreign priority. See 37 CFR 1.55 and 1.76.
`
`If Required, Foreign Filing License Granted: 06/21/2010
`The country code and numberofyour priority application, to be usedforfiling abroad under the Paris Convention,
`is US 12/814,584
`Projected Publication Date: Not Applicable
`Non-Publication Request: No
`Early Publication Request: No
`
`page 1 of 3
`
`

`

`Title
`
`SYSTEM AND METHOD FOR INSPECTING DYNAMICALLY GENERATED EXECUTABLE CODE
`
`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 considerthefiling 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 thefiling
`of patent applications on the sameinvention in membercountries, but does notresult in a grant of "an international
`patent" and doesnoteliminate the need of applicantsto file additional documents andfees in countries where patent
`protection is desired.
`
`Almost every country hasits own patent law, and a person desiring a patentin a particular country must make an
`application for patent in that country in accordancewithits 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 also are advised thatin the case of inventions madein the United States, the Director of the USPTO must
`issue a license before applicants can apply for a patent in a foreign country. Thefiling of a U.S. patent application
`serves as a request for a foreign filing license. The application's filing receipt contains further information and
`guidanceasto the status of applicant's license forforeign filing.
`
`Applicants may wish to consult the USPTObooklet, “General Information Concerning Patents" (specifically, the
`section entitled "Treaties and Foreign Patents") for more information on timeframes and deadlinesforfiling foreign
`patent applications. The guide is available either by contacting the USPTO Contact Center at 800-786-9199, orit
`can be viewed on the USPTO website at http://www. uspto.gov/web/offices/pac/doc/general/index.htmi.
`
`Forinformation on preventingtheft of your intellectual property (patents, trademarks and copyrights), you may wish
`to consult the U.S. Government website, http:/Awww.stopfakes.gov. Part of a Department of Commerceinitiative,
`this website includes self-help "toolkits" giving innovators guidance on howto protectintellectual property in specific
`countries such as China, Korea and Mexico. For questions regarding patent enforcementissues, applicants may
`call the U.S. Governmenthotline at 1-866-999-HALT (1-866-999-4258).
`
`page 2 of 3
`
`

`

`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 issuedin all applications where
`the conditions for issuanceof a license have been met, regardless of whetheror not a license may be required as
`set forth in 37 CFR 5.15. The scope andlimitationsof this license are set forth in 37 CFR 5.15(a) unless an earlier
`license has been issued under 37 CFR 5.15(b). The license is subject to revocation upon written notification. The
`date indicatedis the effective date of the license, unless an earlierlicense of similar scope has been granted under
`37 CFR 5.13 or 5.14.
`
`This licenseis to be retained by the licensee and maybe usedat any time on orafter the effective date thereof unless
`itis revoked. This license is automatically transferred to any related applications(s) filed under 37 CFR 1.53(d). This
`license is not retroactive.
`
`The grantof a license doesnotin any way lessen the responsibility of a licensee for the security of the subject matter
`as imposed by any Governmentcontract 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 to Arms, Munitions and Implements of War (22 CFR 121-128)); the Bureau of Industry and
`Security, Department of Commerce (15 CFR parts 730-774); the Office of Foreign AssetsControl, Departmentof
`Treasury (31 CFR Parts 500+) and the Department of Energy.
`
`NOT GRANTED
`
`if the phrase "IF REQUIRED, FOREIGN FILING
`No license under 35 U.S.C. 184 has been grantedat this time,
`LICENSE GRANTED" DOES NOTappear onthis form. Applicant maystill petition for a license under 37 CFR 5.12,
`if a license is desired before the expiration of 6 months from thefiling date of the application. If 6 months has lapsed
`from thefiling date of this application and the licensee has not received any indication of a secrecy order under 35
`U.S.C. 181, the licensee mayforeignfile the application pursuant to 37 CFR 5.15(b).
`
`
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`
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`
`page 3 of 3 -
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`