Ex Parte Bancel

Patent Trial and Appeal Board

Jun 29, 2016

12849130 (P.T.A.B. Jun. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/849,130 08/03/2010
38106 7590 06/29/2016
Seed IP Law Group/ST (EP ORIGIN A TING)
701 FIFTH AVENUE, SUITE 5400
SEATTLE, WA 98104-7092
FIRST NAMED INVENTOR
Frederic Bance!
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.
852663.550 7267
EXAMINER
PYZOCHA, MICHAEL J
ART UNIT PAPER NUMBER
2437
MAILDATE DELIVERY MODE
06/29/2016 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
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FREDERIC BANCEL
Appeal2013-007767
Application 12/849, 130
Technology Center 2400
Before ALLEN R MacDONALD, DEBRA K. STEPHENS, and
MICHAEL M. BARRY, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a Final Rejection of
claims 1-3, 5, 7-12, 14--19, and 21-29. 1 We have jurisdiction under 35
U.S.C. § 6(b ).
We AFFIRM.
1 The Examiner withdrew the rejection of claims 10-17 under 35 U.S.C.
§ 101 (Adv. Act. l; Ans. 3); and the Examiner withdrew the rejection of
claims 4, 6, 13, and 20 under 35 U.S.C. § 103(a) (Ans. 3).
Appeal2013-007767
Application 12/849, 130
STATEMENT OF THE INVENTION
According to Appellant, the claims are directed to a countermeasure
method for protecting stored data (Abstract). Claim 1, reproduced below, is
exemplary of the claimed subject matter:
1. A method, comprising:
generating a first secret key for a first data of an ordered
list of data read or to be written by an electronic device;
for each data of the list, following the first data, generating
a distinct secret key based on a deterministic function;
applying a cryptographic operation to each data read or to
be written of the list based on the secret key generated for the
data, wherein the deterministic function is applied to a secret key
generated for a previous data of the list and at least one of:
the previous data; and
a result of application of the cryptographic
operation to the previous data;
comparing a result of application of the cryptographic
operation to a last data of the ordered list to a reference data; and
selectively causing the electronic device to enter an error
state based on the comparison.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Smith
Soliman
Sudia
Vasyltsov
us 5, 146,498
US 2004/0179690 Al
US 2005/0114653 Al
US 2006/0212506 Al
2
Sept. 8, 1992
Sept. 16, 2004
May 26, 2005
Sept. 21, 2006
Appeal2013-007767
Application 12/849, 130
REJECTIONS
Claims 1-3, 5, 7-12, 14--19, and 21-27 stand rejected under 35 U.S.C.
§ 103 (a) as being unpatentable over Soliman, Smith, and Vasyltsov (Final
Act. 3---6).
Claims 1-3, 5, 7-12, 14--19, and 21-29 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Soliman, Sudia, and Vasyltsov (Final
Act. 6-9).
We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(l)(iv) (2012).
ISSUE 1
35 USC§ 103(a): Claims 1-3, 5, 7-12, 14-19, and 21-27
Appellant asserts the invention as recited is not obvious over Soliman,
Smith, and Vasyltsov (App. Br. 25-50). The issue presented by the
arguments is:
Issue 1 a: Has the Examiner erred in finding the combination of
Soliman, Smith, and Vasyltsov teaches or suggests
applying a cryptographic operation to each data read or to be
written of the list based on the secret key generated for the data,
wherein the deterministic function is applied to a secret key
generated for a previous data of the list and at least one of: the
previous data[] and a result of application of the cryptographic
operation to the previous data,
as recited in independent claim 1, and similarly in independent claims 10,
18, and 24?
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Application 12/849, 130
Issue 1 b: Has the Examiner improperly combined the teachings and
suggestions of Soliman, Smith and Vasyltsov?
ANALYSIS
Appellant argues the combination of Soliman, Smith, and Vasyltsov
does not teach or suggest "the deterministic function is applied to a secret
key generated for a previous data of the list and at least one of: the previous
data; and a result of application of the cryptographic operation to the
previous data." Specifically, Appellant argues the Examiner "concedes that
Soliman does not teach" the argued feature above, and the "cited portion of
Smith does not appear to be directed to an ordered list of data" (App. Br.
27).
We are not persuaded by Appellant's argument. The Examiner finds
"Soliman teaches generating keys for data in an ordered list," and Smith was
merely relied upon "to modify Soliman to generate a key based on a
previous key and previous data" (Ans. 4). The Examiner further finds it
would have been obvious to one of ordinary skill in the art "to use previous
data with the previous key ... because using different data to generate
key[ s] gives more variety or complexity to the system" (id.). We agree with
the Examiner's findings. The provision of keys, in an order, for a number of
data records as disclosed in Soliman is an ordered list (id.; Soliman i-f 71 ).
Appellant additionally argues the Examiner has not provided any
reasoned basis for why an ordinarily skilled artisan would have used the
previous key and previous data from an ordered list, to be read from or
written to an electronic device (App. Br. 29). We are not persuaded and
agree with the Examiner's articulated motivation - that using different data
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Application 12/849, 130
to generate keys gives more variety and complexity to the system- which
improves security as is taught by the relied upon references (Ans. 4; Soliman
i-f 6; Smith 4:57---62). Indeed, the Examiner has articulated reasoning with
some rational underpinning and Appellant has not proffered sufficient
evidence or argument to persuade us of Examiner error. Therefore, we are
not persuaded the Examiner erred in rejecting independent claim 1 and
commensurately recited independent claims 10, 18, and 24.
With respect to dependent claims 2, 3, 5, 7-9, 11, 12, 14--17, 19, and
21-27, Appellant does not proffer sufficient evidence or argument to
persuade us of error in the Examiner's findings (see App. Br. 26-50).
Instead, Appellant merely recites the specific claim, reproduces the cited
portion of the prior art, asserts "[i]t is not seen how the cited portion"
teaches the disputed limitation, and argues the claim is not rendered obvious
(id.).
Accordingly, we are not persuaded the Examiner erred in finding the
combination of Soliman, Smith, and Vasyltsov teaches or suggests the
limitations as recited in claims 1-3, 5, 7-12, 14--19, and 21-27. Therefore,
we sustain the rejection of claims 1-3, 5, 7-12, 14--19, and 21-27 under
35 U.S.C. § 103(a) for obviousness over the combination of Soliman, Smith,
and Vasyltsov.
ISSUE 2
35 USC§ 103(a): Claims 1-3, 5, 7-12, 14-19, and 21-29
Appellant asserts the invention as recited, is not obvious over
Soliman, Sudia, and Vasyltsov (App. Br. 25-50). The issue presented by the
arguments is:
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Appeal2013-007767
Application 12/849, 130
Issue 2: Has the Examiner erred in concluding the combination of
Soliman, Sudia, and Vasyltsov teaches or suggests
applying a cryptographic operation to each data read or to be
written of the list based on the secret key generated for the data,
wherein the deterministic function is applied to a secret key
generated for a previous data of the list and at least one of: the
previous data[] and a result of application of the cryptographic
operation to the previous data,
as recited in independent claim 1, and commensurately recited in
independent claims 10, 18, and 24?
ANALYSIS
Appellant argues the combination of Soliman, Sudia, and Vasyltsov
does not teach or suggest "the deterministic function is applied to a secret
key generated for a previous data of the list and at least one of: the previous
data; and a result of application of the cryptographic operation to the
previous data." Specifically, Appellant argues the Examiner "concedes that
Soliman does not teach" the argued feature above, and the "cited portion of
Sudia appears to use random data ... rather than using the previous key and
previous data from an ordered list" (App. Br. 27-28).
We are not persuaded by Appellant's argument. The Examiner finds
Soliman teaches a secret key generated for a previous data of the ordered
list, and Sudia was merely relied upon "to modify Soliman to generate a key
based on a previous key and a result of a cryptographic function on previous
data" (Ans. 5). Thus, Appellant is not arguing the combination relied on by
the Examiner. The Examiner further finds, and we agree, Sudia's chaining
of data "takes the output of the previous encryption (i.e. the ciphertext) as a
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Application 12/849, 130
portion of the input for generating the next" key (id.). Specifically, we agree
the provision of keys, in an order, for a number of data records as disclosed
in Soliman is an ordered list (id. at 4; Soliman i-f 71). We further agree use
of data chains to generate the next encryption key teaches applying a
deterministic function using previous data (Ans. 5). As clarified in KSR, the
skilled artisan is "a person of ordinary creativity, not an automaton." See
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). We determine that
combining an ordered data list having secret keys and applying a
cryptographic operation based on a previous key and previous data would
not have been "uniquely challenging or difficult for one of ordinary skill in
the art" or "represented an unobvious step over the prior art." Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)
(citing KSR, 550 U.S. at 418). Thus, Appellant has not persuaded us the
Examiner erred in rejecting independent claim 1 and commensurately recited
independent claims 10, 18, and 24.
With respect to dependent claims 2, 3, 5, 7-9, 11, 12, 14--17, 19, and
21-29, Appellant does not proffer sufficient evidence or argument to
persuade us of error in the Examiner's findings (see App. Br. 26-50).
Instead, Appellant merely recites the specific claim, reproduces the cited
portion of the prior art, asserts "[i]t is not seen how the cited portion"
teaches the disputed limitation, and argues the claim is not rendered obvious
(id.).
Accordingly, we are not persuaded the Examiner erred in finding the
combination of Soliman, Sudia, and Vasyltsov teaches or suggests the
limitations as recited in claim 1-3, 5, 7-12, 14--19, and 21-29. Therefore,
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Application 12/849, 130
we sustain the rejection of claims 1-3, 5, 7-12, 14--19, and 21-29 under
35 U.S.C. § 103(a) for obviousness over Soliman, Sudia, and Vasyltsov.
DECISION
The Examiner's rejection of claims 1-3, 5, 7-12, 14--19, and 21-27
under 35 U.S.C. § 103(a) as being unpatentable over Soliman, Smith, and
Vasyltsov is AFFIRMED.
The Examiner's rejection of claims 1-3, 5, 7-12, 14--19, and 21-29
under 35 U.S.C. § 103(a) as being unpatentable over Soliman, Sudia, and
Vasyltsov is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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