Ex Parte Ching

Patent Trial and Appeal Board

Mar 3, 2017

11588614 (P.T.A.B. Mar. 3, 2017)

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.
11/588,614 10/26/2006 Peter N. Ching CHING.004A 2649
27299 7590 03/06/2017
GAZDZINSKI & ASSOCIATES, PC
16644 WEST BERNARDO DRIVE
SUITE 201
SAN DIEGO, CA 92127
EXAMINER
DAVIS, ZACHARY A
ART UNIT PAPER NUMBER
2492
MAIL DATE DELIVERY MODE
03/06/2017 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 PETER N. CHING
Appeal 2016-005818
Application 11/588,614
Technology Center 2400
Before ELENI MANTIS MERCADER, CARL W. WHITEHEAD JR., and
ADAM J. PYONIN, Administrative Patent Judges.
MANTIS MERCADER, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-005818
Application 11/588,614
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 12, 23—27, 29, and 32—35, which constitute all the
claims pending in this application. We have jurisdiction under 35 U.S.C. §
6(b).
We affirm.
THE INVENTION
Appellant’s claimed invention is directed to “data on a source
computer” that is “filtered to exclude all but data that is authorized for
transfer, stored in a transport format, marked so that the source of the stored
data can be authenticated, and transferred to a transfer device” (Abstract).
CLAIMED SUBJECT MATTER
Independent claims 12 and 25, reproduced below, are representative
of the claimed subject matter:
12. Computerized apparatus, comprising:
a control apparatus adapted to analyze source data;
a processing apparatus adapted to process said analyzed
source data to identify prohibited data or structures, said
processing apparatus configured to filter said identified
prohibited data or structures out of said source data;
an encryption apparatus adapted to:
select a sample subportion of said filtered source
data;
encrypt said sample subportion;
encrypt a remaining portion of said filtered source
data; and
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Application 11/588,614
integrate said encrypted sample subportion and said
encrypted remaining portion of said source data into a combined
data structure; and
storage apparatus adapted to store said combined data
structure.
25. A method of processing source data, comprising:
determining an amount of source data;
when said amount of source data is above a minimum
threshold:
encrypting said source data at a source device to
create encrypted source data;
extracting a sample subportion of said source data
representing a bypass tag;
encrypting said bypass tag to create an encrypted
bypass tag; and
combining said encrypted bypass tag and said encrypted
source data to create a single data structure; and
when said amount of source data is not above said
minimum threshold, encrypting said source data at a source
device to create said single data structure; and
transmitting said single data structure from said source
device to a receiving device;
wherein said receiving device is configured to determine
whether to store said encrypted source data based at least in part
on a decryption result of said encrypted bypass tag or said single
data structure.
REJECTIONS ON APPEAL
Claims 25—27, 29, and 32—35 stand rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement. Final Act. 6.
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Application 11/588,614
Claims 12, 23—27, 29, 34 and 35 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite. Final Act. 8—9.1
Claims 25—27, 29, 32, and 33 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Shahbazi (US 2006/0224742 Al; Oct. 5, 2006),
in view of Evans (US 7,496,767 B2; Feb. 24, 2009). Final Act. 10.2
Claims 12, 23, 24, 34, and 35 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Shahbazi, in view of Aaron (US 8,597,030 B2;
Dec. 3, 2013), and Evans. Final Act. 14.3
ISSUES
The issues are whether the Examiner erred in finding:
1. the Specification fails to satisfy the written description requirement
with respect to (a) the “minimum threshold,” as recited in claim 25
and the “pre-determined threshold” as recited in claim 34; (b)
“determin[ing] whether to store said encrypted source data based at
least in part on a decryption result,” as recited in claim 25, and “when
said decryption is successful, storing] said encrypted data file in said
second storage entity,” as recited in claim 32; and (c) “a local copy of
the single secret encryption key,” as recited in claim 32;
1 Appellant does not respond to the Examiner’s rejection. See App. Br. 7.
Accordingly, we summarily affirm the Examiner’s rejection of claims 12,
23—27, 29, 34 and 35 under 35 U.S.C. § 112, second paragraph.
2 Appellant does not respond to the Examiner’s rejection of claims 25—27,
32, and 33. See App. Br. 7. Accordingly, we summarily affirm the
Examiner’s rejection of claims 25—27, 32, and 33 under 35 U.S.C. § 103(a).
3 Appellant does not respond to the Examiner’s rejection of claims 12, 23,
34, and 35. See App. Br. 8. Accordingly, we summarily affirm the
Examiner’s rejection of claims 12, 24, 34, and 35 under 35 U.S.C. § 103(a).
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2. the combination of Shahbazi and Evans discloses or suggests
“selecting said subportion comprises selecting said subportion of said
source data according to a compression ratio,” as recited in claim 29;
and
3. the combination of Shahbazi, Aaron, and Evans discloses or suggests
“when said first portion of said filtered source data cannot be
decrypted, said decryption apparatus being further configured to
delete said combined data structure,” as recited in claim 24.
ANALYSIS
We adopt the Examiner’s findings in the Answer and Final Action and
we add the following primarily for emphasis. We note that if Appellant
failed to present arguments on a particular rejection, we will not unilaterally
review those uncontested aspects of the rejection. See Ex parte Frye, 94
USPQ2d 1072, 1075 (BPAI 2010) (precedential); Hyatt v. Dudas, 551 F.3d
1307, 1313—14 (Fed. Cir. 2008) (The Board may treat arguments Appellant
failed to make for a given ground of rejection as waived).
Here, Appellant expressly waived arguments for:
(1) claims 12, 23—27, 29, 34, and 35 rejected under 35 U.S.C. § 112, second
paragraph (App. Br. 7);
(2) claims 25—27, 32, and 33 rejected under 35 U.S.C. § 103(a) based on
Shahbazi and Evans (App. Br. 7); and
(3) claims 12, 23, 34, and 35 rejected under 35 U.S.C. § 103(a) based on
Shahbazi, Aaron, and Evans (App. Br. 8).
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Claims 25 and 34: Written Description — “Threshold”
Appellant argues the Examiner erred because “Applicant’s
specification clearly discusses the use of the Bypass Tag for ‘comparatively
large’ files, and its non-use for ‘comparatively small’ files” (App. Br. 5,
citing Specification 14:4—17). Appellant contends that “[determination of a
useful/applicable threshold value for such cases is effectively routine to the
ordinary computer artisan given the disclosure above” (App. Br. 5).
We are not persuaded by Appellant’s arguments. The Examiner finds,
and we agree, that the cited portion of Appellant’s Specification “only
describes a relationship of the size of the encrypted tag and actual encrypted
substantive data file and detecting whether the size of the data or file is
‘comparatively large’, and taking other actions ‘for smaller files or
structures’” and “there is no discussion in the specification of how to
determine the dividing line between what file sizes are considered large and
which are considered small” (Ans. 3). Appellant has not provided
persuasive arguments or technical evidence to rebut the Examiner’s findings.
See, e.g., In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (attorney
arguments or conclusory statements are insufficient to rebut a prima facie
case).
Claims 25 and 32: Written Description — Storing Encrypted Data
Appellant argues the Examiner erred because “Applicant’s
specification clearly discusses storage based on the result of decryption, as is
set forth in Claims 25 and 32” (App. Br. 6, citing Fig 6 and Specification
16:16—21). We are not persuaded by Appellant’s argument. The Examiner
finds, and we agree, that Figure 6 and the cited portion of the Specification
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“discusses storage based on the result of decryption; however, there is no
discussion of whether or not to store encrypted data” (Ans. 4; emphasis
added). We note claim 25 refers to the storage of “encrypted source data”
and claim 32 refers to the storage of the “encrypted data file.”
Claim 32: Written Description — “Single Secret Encryption Key ”
Appellant argues the Examiner erred because Appellant’s
Specification discloses both use of “asymmetric cryptography” and a
“Private Key” (App. Br. 6, quoting Specification 4:12—13, 16:11—13 and
citing Fig. 6) as well as use of “a “Designated Private Key” (App. Br. 6,
quoting 14:26—28). Appellant contends that “[tjhose skilled in the art would
understand that the encryption key could be a locally stored copy of the
encryption key” (App. Br. 6).
We are not persuaded by Appellant’s arguments. The Examiner finds,
and we agree, that of the portions of the Specification cited by Appellant,
“none of these relates to a ‘single secret encryption key’ as claimed” and
actually “describe the use of a public and private key pair, rather than a
single secret key” (Ans. 5). Appellant has not provided persuasive
arguments or technical evidence to rebut the Examiner’s findings. See App.
Br. 6. Accordingly, we sustain the Examiner’s rejection of claim 32 and for
the same reason the rejections of claims 25 and 34. We also sustain the
Examiner’s rejections of dependent claims 26, 27, 29, 33, and 35 not argued
separately (App. Br. 7).
Claim 29: Obviousness
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Appellant argues the Examiner erred because “[b]oth Shahbazi and
Evans are silent with respect to selection of a subportion according to a
compression ratio” and “both references are completely silent with respect to
compression ratios” (App. Br. 7—8). We are persuaded by Appellant’s
argument. The Examiner finds that “the size of the [encrypted] header has
an inherent relationship with the size of file of the whole[,] which suggests
the compression ratio” (Ans. 7, citing Evans 2:33—67, 4:3—11) and
“Shahbazi explicitly discloses the use of compression functions” (Ans. 7,
citing Shahbazi || 55—61) for the use of “protecting data” (Ans. 7, citing
Shahbazi || 63, 123). While an encrypted header file would be expected to
be smaller than its corresponding whole file, such a smaller file size is not a
teaching or suggestion of any type of compression ratio in Evans. Similarly,
the hash functions of Shahbazi are unrelated to a compression ratio.
Accordingly, we are constrained by the record before us to reverse the
Examiner’s rejection of claim 29.
Claim 24: Obviousness
Appellant argues the Examiner erred because Evans “fails to teach or
suggest deletion of a combined data structure when the first portion of the
filtered source data cannot be decrypted” (App. Br. 9; emphasis in original)
and “while Shahbazi discloses requiring of deletion of offending software
prior to reintroduction to a network, the reference fails to disclose deletion of
a combined data structure when the first portion of the filtered source data
cannot be decrypted” (App. Br. 9).
We are not persuaded by Appellant’s arguments. The Examiner finds,
and we agree, that “Evans discloses determining whether a first portion of
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filtered source data is able to be decrypted from an encrypted sample
subportion” (Ans. 8, citing Evans 2:55—67) and “Shahbazi discloses that
deletion of software or offending files may be required prior to allowing
access to data” (Ans. 8, citing Shahbazi || 36—37, 55—61, 63, 123). The
Examiner finds, and we agree, that the combination “suggests determining
whether data is able to be decrypted (Evans) and if not, then deleting the
files as a remedy before allowing access to data (Shahbazi)” (Ans. 8).
Appellant’s argument is unpersuasive of error because Appellant attacks the
references individually, and thus fails to address the Examiner’s findings.
See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non­
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references.”).
Accordingly, we sustain the Examiner’s rejection of claim 24.
CONCLUSION
1. The Examiner did not err in finding the Specification fails to satisfy
the written description requirement with respect to (a) the “minimum
threshold,” as recited in claim 25 and the “pre-determined threshold”
as recited in claim 34; (b) “determin[ing] whether to store said
encrypted source data based at least in part on a decryption result,” as
recited in claim 25, and “when said decryption is successful, storing]
said encrypted data file in said second storage entity,” as recited in
claim 32; and (c) “a local copy of the single secret encryption key,” as
recited in claim 32.
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2. The Examiner erred in finding the combination of Shahbazi and Evans
discloses or suggests “selecting said subportion comprises selecting
said subportion of said source data according to a compression ratio,”
as recited in claim 29.
3. The Examiner did not err in finding the combination of Shahbazi,
Aaron, and Evans discloses or suggests “when said first portion of
said filtered source data cannot be decrypted, said decryption
apparatus being further configured to delete said combined data
structure,” as recited in claim 24.
DECISION
The Examiner’s decision rejecting claims 25—27, 29, and 32—35 under
35 U.S.C § 112, first paragraph, is affirmed.
The Examiner’s decision rejecting claims 12, 23—27, 29, 34 and 35
under 35 U.S.C. § 112, second paragraph, is affirmed.
The Examiner’s decision rejecting claims 25—27, 32, and 33 under 35
U.S.C. § 103(a) as being unpatentable is affirmed.
The Examiner’s decision rejecting claim 29 under 35 U.S.C. § 103(a)
is reversed.
The Examiner’s decision rejecting claims 12, 23, 24, 34, and 35 under
35 U.S.C. § 103(a) 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)(l)(iv).
AFFIRMED
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