Ex Parte Breslau et alDownload PDFPatent Trial and Appeal BoardMar 24, 201612816061 (P.T.A.B. Mar. 24, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/816,061 06/15/2010 35525 7590 03/28/2016 IBM CORP (YA) C/O YEE & AS SOCIA TES PC P.O. BOX 802333 DALLAS, TX 75380 FIRST NAMED INVENTOR Frank C. Breslau 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. AUS920100018US1 2576 EXAMINER AL HASHEM!, SANA A ART UNIT PAPER NUMBER 2156 NOTIFICATION DATE DELIVERY MODE 03/28/2016 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): ptonotifs@yeeiplaw.com mgamez@yeeiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FRANK C. BRESLAU, BENJAMIN BRIGGS, and ORI POMERANTZ1 Appeal2014-004206 Application 12/816,061 Technology Center 2100 Before CARLA M. KRIVAK, MICHAEL J. STRAUSS, and JAMES W. DEJMEK, Administrative Patent Judges. STRAUSS, Administrative Patent Judge. DECISION ON APPEAL 1 Appellants identify International Business Machines Corporation as the real party in interest. App. Br. 2. Appeal2014-004206 Application 12/816,061 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-20, which constitute all the claims pending in this application. 2 We have jurisdiction under 35 U.S.C. § 6(b). We reverse and enter a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). THE INVENTION Appellants' invention is directed to "managing collectively sensitive data in cloud computing environments." Spec. i-f 1. Claim 1, reproduced below with a dispositive limitation emphasized in italics, is illustrative of the claimed subject matter: 1. A method of managing collectively sensitive data, the method compnsmg: dividing the collectively sensitive data into a first partition for reassembly data, a second partition of the collectively sensitive data, and a third partition of the collectively sensitive data, wherein each of the second partition and the third partition are collectively nonsensitive in isolation; storing the first partition in a translation table in a secure database, wherein the translation table is configured for use in assembling the collectively sensitive data from the second partition and the third partition; storing the second partition of the collectively sensitive data in a first database associated with a first cloud computing environment; and 2 In this Opinion, we refer to Appellants' Appeal Brief ("App. Br.," filed August 12, 2013), the Reply Brief ("Reply Br.," filed December 19, 2013), the Final Office Action ("Final Act.," mailed March 11, 2013), and the Examiner's Answer ("Ans.," mailed October 25, 2013). 2 Appeal2014-004206 Application 12/816,061 storing the third partition of the collectively sensitive data in a second database associated with a second cloud computing environment. REJECTION The Examiner rejected claims 1-20 under 35 U.S.C. § 102(e) as anticipated by Casper et al. (US 2011/0276806 Al; Nov. 10, 2011 (filed May 6, 2011)) ("Casper"). Final Act. 2---6. ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' arguments the Examiner has erred in rejecting independent claims 1, 9, and 17 under 35 U.S.C. § 102(e) as anticipated by Casper. We agree with Appellants' conclusions as to this rejection of the claims. 3 Appellants contend Casper does not disclose "dividing the collectively sensitive data into a first partition for reassembly data, a second partition of the collectively sensitive data, and a third partition of the collectively sensitive data" (hereinafter the "disputed limitation"), as recited in claim 1. App. Br. 6-9. In particular, Appellants argue there is no text from Casper's Provisional Application (61/332,795) (herein after "Casper '795") that corresponds to the Examiner's reliance on paragraph 76 of Casper to disclose the disputed limitation. App. Br. 7 (citing Casper i-fi-174, 76-77; Casper '795, 23:14--26, 24:5-8). Appellants argue "[t]herefore, paragraph [0076] of the cited Casper reference cannot be used in rejecting Claim 1 as 3 We note Appellants raise additional contentions of error but we do not reach them as our resolution of this contention is dispositive of the appealed rejections under 35 U.S.C. § 102(e). 3 Appeal2014-004206 Application 12/816,061 the filing date of this cited Casper reference does not predate the filing date of the present application." App. Br. 7. In response, the Examiner finds Figure 2, page 17, page 22, lines 19- 21, and page 23, lines 17-23 of Casper '795 provide text that corresponds to paragraph 76 of Casper. Ans. 5 (citing Casper '795, 17, 22:19-21, 23:17- 23; Figure 2). Further, the Examiner finds "page 20, lines 5-10 of the Provisional Application disclose the step of dividing the disk space to secure and unsecure spaces with multiple partitions." Ans. 5 (citing Casper '795, 20:5-10). We are unpersuaded that the Examiner's cited sections from Casper '795 disclose "dividing the collectively sensitive data," from the disputed dividing limitation. Although, page 17 and page 20, lines 5-10 of Casper '795 disclose dividing disk space 205 into separate drives, and identifying each separate drive as either unsecure or secure disk space, we are unable to identify any disclosure of dividing data as claimed. Instead, we agree with Appellants that Casper '795's "disk space can be partitioned into multiple 'drives' without regard to the underlying data." Reply Br. 3 (citing Casper '795, 20:5-10) (emphasis in original). Further, although, page 22, lines 19-21 of Casper '795 discloses a client's issued request for an encrypted virtual disk, and page 23, lines 17- 23 of Casper '795 discloses encrypting a virtual disk using "encryption technology" including an encryption password or key, we are unable to identify any disclosure of dividing data as claimed. Instead, we agree with Appellants that page 22, lines 19-21 and page 23, lines 17-23 of Casper '795 does not disclose the "claimed 'dividing' aspects of Claim, [sic] 1." Reply Br. 3 (citing Casper '795, 22:19-21, 23:17-23). 4 Appeal2014-004206 Application 12/816,061 Therefore, in the absence of clear evidence and/or a persuasive line of technical reasoning explaining why Casper discloses the disputed limitation, we do not sustain the rejection of independent claim 1 and, for the same reasons we do not sustain the rejection of independent claims 9 or 17, or the rejections of dependent claims 2-8, 10-16, and 18-20. Therefore, we are constrained by this record to reverse the rejection of these claims. NEW GROUND OF REJECTION We enter new ground of rejection pursuant to our authority under 37 C.F.R. § 41.50(b). We reject claims 9-16 under 35 U.S.C. § 101 as being directed toward non-statutory subject matter. Claims 9-16 recite a computer readable storage medium. Appellants' Specification describes that "a computer readable storage medium may be any tangible medium that can contain or store a program for use by or in connection with an instruction execution system, apparatus, or device." Spec. i-f 18 (emphasis added). Therefore, we find Appellants' invention encompasses non- transitory propagating signals, which are unpatentable under 35 U.S.C. § 101. See In re Nuijten, 500 F.3d 1346, 1355 (Fed. Cir. 2007) (transitory embodiments are not directed to statutory subject matter); Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101, p. 2 (Aug. 24, 2009), available at http://www.uspto.gov/web/offices/pac/dapp/opla/2009 08-25_interim_101_ instructions.pdf. See also David J. Kappos, Subject Matter Eligibility of 5 Appeal2014-004206 Application 12/816,061 Computer Readable Media, 1351 OFF. GAZ. PAT. OFFICE 212 (Feb. 23, 2010).4 DECISION5 We reverse the Examiner's decision to reject claims 1-20. We newly reject claims 9-16 under 35 U.S.C. § 101. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that "[a] new ground of rejection ... shall not be considered final for judicial review." 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner .... (2) Request rehearing. Request that the proceeding be reheard under§ 41.52 by the Board upon the same record .... 4 A claim drawn to such a computer readable storage medium that covers both transitory and non-transitory embodiments may be amended to narrow the claim to cover only statutory embodiments to avoid a rejection under 35 U.S.C. § 101 by adding the limitation "non-transitory" to the claim. 5 In the event of further prosecution, we suggest the Examiner consider whether claims 9-20 clearly recite the invention or are indefinite under 35 U.S.C. § 112, second paragraph. Specifically, we invite the Examiner to consider whether "the collectively sensitive data" introduced in independent claims 9 and 17 lacks clear antecedent basis. 6 Appeal2014-004206 Application 12/816,061 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). REVERSED 37 C.F.R. § 41.50(b) 7 Copy with citationCopy as parenthetical citation