DETAILED ACTION
This action is in response to the applicant’s amendment filed on December 31, 2025. As set forth therein, claims 1-40 are canceled and 41-64 are newly added.
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 maintains that the reissue declaration is proper because it is addressing the same issue. The Applicant references MPEP 1414.
The Examiner notes that in accordance with MPEP 1414, if the same error corrected in the parent is also being corrected in the continuation reissue application, the applicant must explain how the error is corrected in a different way. The Examiner finds that the Applicant has not identified an error being corrected by the continuation reissue application since the stated error has already been corrected by the parent reissue application. In this case, removing “user-specified” from the claim was already a error that was corrected in the parent reissue applications. In this case, each of RE48159 and RE50068 already corrected the error of removing “user-specified” from the claim and in addition, RE50068 already recited the error which was specifically directed to the removal of “user-specified” from the claim.
Therefore, the Examiner does not find the Applicant’s arguments persuasive.
Response to Amendment
The Examiner acknowledges the renumbering of the claims to new claims 41-64. Therefore, this issue directed to the claim numbering has been resolved.
Claims Rejections – 35 U.S.C. 112
The Applicant states that in view of the cancellation of claims 1-40, the rejections should be withdrawn.
The Examiner notes that claims 60-62 recite the same limitations as previous claims 20-22 and thus, continue to include the same issue. Therefore, for the reasons set forth below and in the previous office action and below, the rejection is maintained, As to the other issues as set forth in the previous office action, those issues are resolved with the claims as amended.
Double Patenting
The Applicant requests that the double patenting rejections be held in abeyance until allowable subject matter has been indicated.
The Examiner notes that since the double patenting rejection has not been overcome, the rejections are maintained.
Claim Rejections – 35 U.S.C. 103
With respect to claims 41 and 49, the Applicant states that the cited references have not been shown in the Office Action to teach “resolving the network security policy name to the plurality of IP values at the DNS server…propagating the network security policy to the network device by transmitting the plurality of IP values to the network device in response to the name-to-IP value mapping request, thereby allowing the network device to utilize one or more of the plurality of IP values when applying network security to the network traffic at the network device.”
The Applicant states that the “policies” of Stolorz are server-selection policies (e.g. directing traffic, load balancing) and are not network security policies applied by a network device to network traffic. In addition, the Applicant states that the “propagation” of Stolorz is propagating ATC policies to name server, and it is not propagating a network security policy to a network device by transmitting IP values.
The Examiner finds that in view of the teachings of Stolorz, the Examiner finds the Applicant’s arguments persuasive.
With respect to claim 57, the Applicant states that the cited reference have not been shown to teach “querying a domain name system (DNS) using the network security police name associated with the network security policy.” The Applicant states that the DNS lookups of Cooper ‘647 are not performed with regard to any network security policies, let alone a network security policy name associated with the network security policy. The Applicant states that the DNS usage of Cooper ‘476 remains limited to query-tool lookups using the current DNS configurations.
The Examiner finds that in view of the teachings of Cooper ‘647 and Cooper ‘476, the Examiner finds the Applicant’s arguments persuasive.
Reissue Declaration
The reissue oath/declaration filed with this application is defective (see 37 CFR 1.175 and MPEP § 1414) because of the following:
The Examiner notes that the Applicant sets forth the follow statement in the reissue declaration:
“The reissue is broadening. The claims include limitations not necessary to patentability, including but not necessarily limited to, limitations directed to "user-specified". Applicant seeks to broaden claims 1 and 9 by removing "user-specified" from claims 1 and 9.”
The Examiner first notes that the same error set forth in this application is the same error set forth in the previous parent application. . Therefore, the Applicant has not identified an error being corrected by the instant continuation reissue declaration. See MPEP 1414(II).
In addition, the Examiner finds that the stated error has already been corrected in both RE48159 and RE50068.
Furthermore, in view of the amendment to the claims, the error listed in the declaration is not an error upon which reissue can be based because it amounts to impermissible recapture.
Claims 41-64 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defect(s) in the declaration is set forth in the discussion above in this Office action.
Recapture
Claims 41-56 are rejected under 35 U.S.C. 251 as being an impermissible recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. In re McDonald, 43 F.4th 1340, 1345, 2022 USPQ2d 745 (Fed. Cir. 2022); Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Youman, 679 F.3d 1335, 102 USPQ2d 1862 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). The reissue application contains claim(s) that are broader than the issued patent claims. The record of the application for the patent family shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
The Examiner notes that in accordance with MPEP 1412.02, In Clement, 131 F.3d at 1468-70, 45 USPQ2d at 1164-65, the Court of Appeals for the Federal Circuit set forth a three step test for recapture analysis. In North American Container, 415 F.3d at 1349, 75 USPQ2d at 1556, the court restated this test as follows:
We apply the recapture rule as a three-step process:
(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
The Examiner notes that new claim 41 corresponds to patent claim 1 and is broadened by omitting “creating, using the plurality of IP values, user-specified zones with filters based on user-specified weights depending upon a characteristic of a source of network traffic”.
New claim 49 corresponds to patent claim 9 and is broadened by omitting, “wherein, in operation, the security server, creates, using the plurality of IP values, user-specified weights depending upon a characteristic of a source of network traffic”.
Thus both new reissue claim 41 and new reissue claim 49 are broader in scope than the original patent claims.
(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
During the prosecuting of US Patent Application 11/844,264, authorization for an amendment was made with respect to claim 18 (original patent claim 1) in which “creating, using the plurality of IP values, user-specified zones with filters based on user-specified weights depending upon a characteristic of a source of network traffic” was added to the claims. In addition, as to claim 24 (original patent claim 9), the claims were amended to recite “wherein, in operation, the security server creates, using the plurality of IP values, user-specified zones with filters based on user-specified weights depending upon a characteristic of a source of network traffic”.
As set forth in MPEP 1412.02(II)(B), Applicant is bound only by applicant’s revision of the application claims (including examiner's amendments authorized by applicant) or a positive argument/statement by applicant. In this case, the amendment was authorized by applicant. In MPEP 1412.02(II)(B)(2)(B), it was noted that an amendment was made to the application and the subsequent deletion of (omission of) limitation D in the reissue claims would be presumed to be a broadening in an aspect of the reissue claims related to surrendered subject matter. Accordingly, the reissue claims would be barred by the recapture doctrine (absent the addition of a materially narrowing limitation related to the surrendered subject matter). The above result would be the same whether the addition of limitation D in the original application was by way of applicant’s amendment or by way of an examiner’s amendment with authorization by applicant.
Thus, the Examiner finds that the broader aspects of the claim relate to subject matter surrendered in the original prosecution.
(3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.
The Examiner finds that the surrendered generating limitation has been entirely eliminated from the claim in the reissue application. Since the limitation has been entirely eliminated, the reissue claims are not materially narrowed.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 60-62 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
As to claims 60-62, these claims depend on claim 17 and recite “the IP values”. The Examiner finds that claim 17 recites “a plurality of IP values”, “a first subset of IP values” and a “second subset of IP values”. It is not clear which “IP values” the claim refers to.
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.
Claims 41-64 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 41-64 of U.S. Patent No. RE48159. 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 RE48159.
For example, the claims of the instant application is substantially the same as the claims of RE48159 except it doesn’t recite at least “creating, using the plurality of IP values, zones with filters based on weights depending upon a characteristics of a source of network traffic, the zones and the weights being based on a single multi-host address mapping record”, as recited in claim 41 of RE48159. The same reasoning applies to claim 49 of the instant application and claim 49 of RE48159. In addition, claims 57-64 corresponds to claims 57-64 of RE48159.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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