10933862 (B.P.A.I. Apr. 11, 2011)

Ex Parte Atri et al

Board of Patent Appeals and InterferencesApr 11, 2011

10933862 (B.P.A.I. Apr. 11, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/933,862 09/02/2004 Sunil R. Atri ITL.1813US (P20068) 5294 47795 7590 04/11/2011 TROP, PRUNER & HU, P.C. 1616 S. VOSS RD., SUITE 750 HOUSTON, TX 77057-2631 EXAMINER MASKULINSKI, MICHAEL C ART UNIT PAPER NUMBER 2113 MAIL DATE DELIVERY MODE 04/11/2011 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 1 ___________ 2 3 BEFORE THE BOARD OF PATENT APPEALS 4 AND INTERFERENCES 5 ___________ 6 7 Ex parte SUNIL R. ATRI and 8 SEAN S. EILERT 9 ___________ 10 11 Appeal 2009-015117 12 Application 10/933,862 13 Technology Center 3600 14 ___________ 15 16 Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and 17 BIBHU R. MOHANTY, Administrative Patent Judges. 18 FETTING, Administrative Patent Judge. 19 DECISION ON APPEAL 20 Appeal 2009-015117 Application 10/933,862 2 STATEMENT OF THE CASE1 1 1 Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,” filed November 10, 2008) and Reply Brief (“Reply Br.,” filed March 6, 2009), and the Examiner’s Answer (“Ans.,” mailed January 21, 2009). Sunil R. Atri and Sean S. Eilert (Appellants) seek review under 2 35 U.S.C. § 134 (2002) of a final rejection of claims 10, 26, and 40. Claims 3 1-45 are pending in the application on appeal. We have jurisdiction over the 4 appeal pursuant to 35 U.S.C. § 6(b) (2002). 5 The Appellants invented a way of power loss recovery (Specification 3:¶ 6 0003). 7 An understanding of the invention can be derived from a reading of 8 exemplary claim 10, which is reproduced below [bracketed matter and some 9 paragraphing added]. 10 10. A method comprising: 11 [1] storing power loss recovery information 12 related to an active operation 13 in nonvolatile storage 14 in response to detection of a power loss condition, 15 [2] wherein the power loss recovery information includes 16 a current random number generated by a security 17 application. 18 The Examiner relies upon the following prior art: 19 Shipton US 2005/0160316 A1 Jul. 21, 2005 Pio EP 0953984 A1 Nov. 3, 1999 Appeal 2009-015117 Application 10/933,862 3 Claims 10, 26, and 40 stand rejected under 35 U.S.C. § 103(a) as 1 unpatentable over Pio and Shipton. 2 ISSUES 3 The issue of obviousness turns on whether the art applied shows it was 4 predictable to store a random number during a power failure. 5 FACTS PERTINENT TO THE ISSUES 6 The following enumerated Findings of Fact (FF) are believed to be 7 supported by a preponderance of the evidence. 8 Facts Related to Appellants’ Disclosure 9 01. The reason for storing a random number during a power failure 10 is to retain the seed for the subsequent random number when each 11 random number is seeded by its predecessor. Specification 6:¶ 12 0017. 13 Facts Related to the Prior Art 14 Pio 15 02. Pio is directed to saving data in a power interruption. Pio: 16 Abstract. 17 03. Pio makes no mention of random numbers or security keys. 18 19 20 21 22 Appeal 2009-015117 Application 10/933,862 4 Shipton 1 04. Shipton is directed to prevention or reduction of data corruption 2 in an integrated circuit due to attempted memory writes during 3 failing power. Shipton ¶ 0001. 4 05. Shipton discusses how random numbers themselves are not 5 secure enough for encryption. Shipton ¶ 0041. 6 06. Shipton makes no mention of dynamically creating random 7 numbers or of storing random numbers during a power failure. 8 ANALYSIS 9 Claims 10, 26, and 40 rejected under 35 U.S.C. § 103(a) as unpatentable 10 over Pio and Shipton. 11 We are persuaded by the Appellants’ argument that neither reference 12 shows it was predictable to store a random number during a power failure. 13 FF 03 and 06. As the Appellants argue, Pio is entirely silent as to random 14 numbers and the Examiner relies on the reason set forth in the Specification 15 (Ans. 6), which is impermissible hindsight, as a rationale for storing random 16 numbers during power failure. The Examiner concludes that the random 17 number is necessary to access memory (Ans. 7), but the Examiner does not 18 make any findings as to why one would not simply recover the random 19 number from some storage outside the system in which power failed rather 20 than go to the trouble of storing the number during power failure. It is 21 apparent that Shipton retrieves its random numbers from outside the failed 22 system. 23 Appeal 2009-015117 Application 10/933,862 5 The Appellants did not contest the rejection as to the remaining claims. 1 The Appellants apparently intend those remaining claims to be cancelled, as 2 instructed in the Appellants’ transmittal of an Amended Appeal Brief filed 3 November 10, 2008. 4 REMARK 5 The panel notes that the Appellants’ arguments were unusually succinct, 6 pertinent, and focused. This made the panel’s analysis more productive and 7 efficient, and made the appropriate conclusion more clear. 8 CONCLUSIONS OF LAW 9 Rejecting claims 10, 26, and 40 under 35 U.S.C. § 103(a) as 10 unpatentable over Pio and Shipton is in error. 11 DECISION 12 The rejection of claims 10, 26, and 40 under 35 U.S.C. § 103(a) as 13 unpatentable over Pio and Shipton is not sustained. 14 The remaining claims 1-9, 11-25, 27-39, and 41-45 should be cancelled 15 as instructed in the Appellants’ Transmittal of Amended Appeal Brief filed 16 November 10, 2008. 17 18 REVERSED 19 20 21 22 Appeal 2009-015117 Application 10/933,862 6 1 2 3 4 mev 5