DETAILED ACTION
This action is in response to the applicant’s amendment filed on June 30, 2026. As set forth therein, claims 41-64 are pending.
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on June 30, 2026 has been entered.
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Reissue Applications
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which Patent No. 8,533,822 is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is mate-rial to patentability of the claims under consideration in this reissue appli-cation.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Response to Arguments
Reissue Declaration
The Applicant states that they are correcting an error in a different manner than the prior reissue applications. Specifically, the Applicant states that RE48149 retained a user-specified requirement by requiring “the zone and the weights being specified by a user based on a single multi-host address mapping record.” RE50068 removed the user-specification requirement but retained the requirement that the zones and weights be “based on a single multi-hose address mapping record.”
The Applicant states that in this continuation reissue application, amended claims 41 and 49 remove the “user-specified” requirement while retaining the limitation directed to zone with filters based on weights depending upon a characteristic of a source of network traffic.
The Examiner notes that as set forth in the submitted reissue declaration filed on June 30, 2026, it was noted that the Applicant seeks to broaden original patent claims 1 and 9 by removing the “user-specified” requirement from those limitations while retaining limitations directed to creatin, using the plurality of IP values, zones with filters based on weights depending upon a characteristic of a source of network traffic.
The Examiner notes that although this specific error was corrected in RE50068, as set forth above, the instant reissue continuation also removes the requirement of the zones and weights being “based on a single multi-host address mapping record” which was set forth in RE50068.
Thus, it is agreed that the stated error is corrected in a different manner.
Recapture
The Applicant states that the claims as amended do not entirely omit the surrender-generating limitation, rather they retain limitations directed to creating, using the plurality of IP values, zones with filters based on weights depending upon a characteristics of a source of network traffic.
The Applicant further states that the retained limitations materially narrow the claims since the claims before the examiner’s amendment did not require creating, using the plurality of IP values, zones with filters based on weights depending upon a characteristic of a source of network traffic.
The Examiner notes that in view of the amendment to the claims which adds back, “creating, using the plurality of IP values, zones with filters based on weights depending upon a characteristic of a source of network traffic”, it is agreed that the Applicant has overcome the Recapture issue. ‘
Therefore, the rejection will be withdrawn.
35 U.S.C. 112
In view of the Applicant’s comments, the Examiner will withdraw the 112 2nd paragraph rejection.
Double Patenting
Terminal Disclaimer
The terminal disclaimer filed on June 30, 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of RE48159 has been reviewed and is accepted. The terminal disclaimer has been recorded.
The Examiner notes that the Applicant stated that a terminal disclaimer was being filed over claims 41-56 of RE50068. However, a review of Applicant’s submission shows that the terminal disclaimer filed on June 30, 2026 cites only to RE48159. Therefore, the double patenting rejection for RE50068 will remain as set forth below.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 41-56 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 41-56 of U.S. Patent No. RE50068. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the instant application are broader than the claims of RE50068.
For example, the claims of the instant application is substantially the same as the claims of RE50086 except it doesn’t recite “creating, using the plurality of IP values, zones with filters based on weights depending upon a characteristic of a source of the network traffic, the zones and the weights being based on a single multi-host address mapping record” as recited in claim 41 of RE50086. The same reasoning applies to claim 49 of the instant application and claim 49 of RE50086.
Allowable Subject Matter
Claims 57-64 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art of record fails to disclose “instantiating a name of a network security policy as a single multi-host lookup value, wherein a plurality of Internet Protocol (IP) values include a first subset of IP values associated with a first hostname and a second subset of IP values associated with a second hostname; creating an exploit or vulnerability weighted list using the plurality of IP values; including or excluding one or more of the plurality of IP values when creating the exploit or vulnerability weighted list” in combination with the rest of the limitations of the claim as recited in claim 57.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ovidio Escalante whose telephone number is (571)272-7537. The examiner can normally be reached on Monday to Friday - 6:00 AM to 2:30 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Michael Fuelling can be reached on (571) 270-1367. The fax phone number for the organization where this application or proceeding is assigned is 571-273-9000. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR.Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Ovidio Escalante/
Primary Examiner
Central Reexamination Unit - Art Unit 3992
(571) 272-7537
Conferees:
/MATTHEW E HENEGHAN/Primary Examiner, Art Unit 3992 /M.F/Supervisory Patent Examiner, Art Unit 3992
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