Ex Parte Antonenkov et al

Patent Trial and Appeal Board

Aug 23, 2018

14271918 (P.T.A.B. Aug. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/271,918 05/07/2014 Leonid Antonenkov
21186 7590 08/27/2018
SCHWEGMAN LUNDBERG & WOESSNER, P.A.
P.O. BOX 2938
MINNEAPOLIS, MN 55402
UNITED ST A TES OF AMERICA
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
3626.001US3 8922
EXAMINER
JONES, WILLIAM B
ART UNIT PAPER NUMBER
2491
NOTIFICATION DATE DELIVERY MODE
08/27/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
uspto@slwip.com
SLW@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LEONID ANTONENKOV, SERGEY ROMANOVSKIY,
NIKITA URALTSEV, and ALEXANDER PROKOFIEV
Appeal2018-000157
Application 14/271,918
Technology Center 2400
Before JEAN R. HOMERE, MICHAEL M. BARRY, and
AARON W. MOORE, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1-20, which are all the pending claims. Claims
App'x. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify Intermedia.net, Inc. as the real party in interest.
App. Br. 2. Appellants also identify Application 14/271,846 (Appeal No.
20018-000002) as a related application, also under appeal. Id. at 3.
Appeal2018-000157
Application 14/271,918
Introduction
Appellants' invention relates to "client-side encryption in a cloud-
based file storage." Spec. ,r 2.
Claim 1 is representative of the claims on appeal:
1. A method of encrypting files at a client device in a
cloud-based file system, comprising:
obtaining, by the client device, a first key from a key
management service, the first key having been created by the
key management service and uniquely corresponding to an
organization to which a user of the client device belongs;
encrypting, at the client device, a first file using the first
key;and
transmitting the encrypted first file from the client device
to a cloud-based server via a secure channel, for storage, as
encrypted on the client device, in a storage device shared
among multiple organizations, the storage device containing
one or more files encrypted at clients using keys different than
the first key.
App. Br. 14 (Claims App'x).
Rejections and References
Claims 1-14 stand rejected under 35 U.S.C. § 102 as anticipated by
Orsini et al. (US 2012/0166818 Al; June 28, 2012). Final Act. 9-16.
Claims 15-20 stand rejected under 35 U.S.C. § 103 as unpatentable
over Orsini and Spiers et al. (US 2012/0265976 Al; Oct. 18, 2012). Final
Act. 16-17.
ANALYSIS
In rejecting claim 1, the Examiner finds that Orsini' s trust engine 110
discloses a cloud-based server that stores, in its mass storage 225, an
encrypted file transmitted over a secure socket from a user system 105,
2
Appeal2018-000157
Application 14/271,918
which the Examiner equates to "transmitting ... the encrypted first file from
the client device ... to a cloud-based server ... via a secure channel, for
storage as encrypted on the client device," as recited by claim 1. Final Act.
10 (citing Orsini ,r,r 3, 94, and Figs. 1-2). The Examiner further finds that
Orsini's disclosure that trust engine 110 stores "data corresponding to an
audit trail" ( quoting Orsini ,r 97) in mass storage 225 is a disclosure that "the
actual data that is indicated in the audit trail [is] stored in storage device
225." Ans. 6 (also finding Orsini discloses storing digital certificates, keys,
and authentication data in mass storage device 225).
Appellants argue the Examiner errs by finding Orsini' s audit trail
includes the encrypted files, contending there is no disclosure that Orsini' s
trust engine 110 stores encrypted files in mass storage 225, as recited. App.
Br. 7-9; Reply Br. 2--4. Appellants' argument is persuasive.
Anticipation is a strict standard that requires finding each and every
element as set forth in the claim, either expressly or inherently, in a single
prior art reference, arranged as required by the claim. Verdegaal Bros., Inc.
v. Union Oil. Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). Here, we
agree with Appellants that the Examiner makes findings about the audit trail
of Orsini's trust engine that are unsupported by the cited disclosure. For
example, the Examiner interprets paragraph 97 of Orsini as
teach[ing] an audit trail is a record of requests received by the
data store 210 and the stored data would be referenced via the
audit trail to the contents in storage device 225. The examiner
construes 'referenced' as an index or pointer to the 'contents' in
the storage device 225 and such interpretation is reasonable
from one of ordinary skill in the art.
Ans. 6.
3
Appeal2018-000157
Application 14/271,918
Paragraph 97 does not support the Examiner's finding that Orsini
discloses an index or pointer to encrypted files stored in the storage device
225. In relevant part, Orsini essentially discloses that the trust engine 110
"keeps data corresponding to" audit trails for its transaction engine 205 and
depository 210. Orsini ,r 97. Both audit trails are described only as keeping
"data [that] comprises a record of the requests received ... and the response
thereof." Id. We agree with Appellants that this does not provide a basis to
find Orsini discloses or even suggests storing the actual encrypted files that
are related to the record of requests and responses. App. Br. 7-9; Reply Br.
2-5, 7. The fact that a certain result or characteristic may occur or be
present in the prior art is not sufficient to establish the inherency of that
result or characteristic. In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993);
see also In re Oelrich, 666 F.2d 578, 581-82 (CCPA 1981). To rely upon
the theory of inherency, the Examiner must provide a basis in fact and/or
technical reasoning to reasonably support the determination that the
allegedly inherent characteristic necessarily flows from the teachings of the
applied prior art. In re King, 801 F.2d 1324 (Fed. Cir. 1986); Ex parte Levy,
17 USPQ2d 1461, 1464 (BP AI 1990).
The Examiner's finding that Orsini paragraph 94 teaches transmitting
an encrypted file to trust engine 110 also does not disclose "transmitting ...
to a cloud-based server ... for storage, as encrypted on the client device, in a
storage device shared among multiple organizations," as recited. See Final
Act. 10-11. This is because, according to the rejection, the "encrypting"
that creates "the encrypted first file" happens at cryptographic engine 220 on
the server, not at the client. (See Final Act 10 ("Orsini illustrates encrypting
in Figure 2 Cryptographic Engine 220 provides encryption support to
4
Appeal2018-000157
Application 14/271,918
Transaction Engine 205"))." As Orsini explains, the purpose of trust engine
110 is to provide cryptographic functions for use by clients. Orsini ir 95.
Orsini Paragraph 94 discloses the use of SSL (Secure Sockets Layer)
technology for network communications and the use of additional layers of
encryption to enhance security of transmissions between clients and trust
engine 110 (which maps to the recited "cloud server") but is silent with
respect to trust engine 110 storing files that have been encrypted by the
client device, as recited. The Examiner's reliance on paragraph 279 for
disclosing local encryption, see Final Act. 7, which discusses an
embodiment distinct from Orsini' s trust engine, does not cure the deficiency
of the anticipation rejection.
Therefore, we do not sustain the 35 U.S.C. § 102 of claim 1. For the
same reasons we do not sustain the § 102 rejection of independent claim 8,
which includes similar limitations, stands rejected on the same ground, and
is argued on the same basis. We also, therefore, do not sustain the rejections
of their dependent claims 2-7 and 9-14.
The only difference between claim 1 and independent claim 15 is that
claim 15's preamble recites "[a] non-transitory machine-readable storage
medium comprising instructions, which when implemented by one or more
machines, cause the one or more machines to perform operations
comprising." App. Br. 16-17 (Claims App'x). The Examiner relies on
Spiers to teach claim 15's preamble and otherwise rejects claim 15 under 35
U.S.C. § 103 based on the "analy(sis) with respect to the method of claim
1." Final Act. 16.
We note the standards for the requisite finding( s) to invalidate a claim
differ between§§ 102 and 103. Generally speaking, whereas, as discussed
5
Appeal2018-000157
Application 14/271,918
above, § 102 requires a single reference to disclose all limitations, § 103
more broadly requires only that the combination of cited references teach or
suggest all limitations. See, e.g., KSR Int'! Co. v. Teleflex Inc., 550 U.S.
398,418 (2007). We specifically note that, relevant to our discussion above
for claim 1, a reference that does not disclose a limitation under § 102 may,
nevertheless, teach or suggest that limitation under § 103. See, e.g., id. at
421 ( explaining "[a] person of ordinary skill is also a person of ordinary
creativity, not an automaton").
The different standards between§§ 102 and 103 do not compel a
different result for claim 15 than for claim 1. As discussed above, Orsini
discloses audit trails that store records of requests and the responses, and is
silent regarding the separate issue of storing copies of encrypted files that
are unnecessary for the purpose of an audit log. We agree with Appellants
that the Examiner's finding for how Orsini's audit trails disclose or suggest
storing the encrypted files, see Final Act. 10-11; Ans. 5---6; 9--10, "simply
assumes too much with regards to the audit log." App. Br. 9; see also id. at
7-9 and Reply Br. 2-5, 7.
Accordingly, we do not sustain the rejection of claim 15. We also,
accordingly, do not sustain the rejection of its dependent claims 16-20.
DECISION
For the above reasons, we reverse the rejections of claims 1-20 under
35 U.S.C. §§ 102 and 103.
REVERSED
6