Ex Parte Dahl

Board of Patent Appeals and Interferences

Jan 26, 2007

09840188 (B.P.A.I. Jan. 26, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___________

Ex parte Ulf Dahl
___________

Appeal No. 2006-2937
Application No. 09/840,188
Technology Center 2100
___________

Decided: January 26, 2007
___________

Before KENNETH W. HAIRSTON, JOSEPH L. DIXON, and
MAHSHID D. SAADAT, Administrative Patent Judges.
DIXON, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134 from the Examiner's
final rejection of claims 18-54 and 56-92, which are all of the claims
pending in this application. Claims 1-17, 55, and 93 have been canceled.
This application is a continuation of Serial number 09/027,585, filed on Feb.
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Application 09/840,188

23, 1998, now US Patent 6,321,201 which is a § 371 filing of
PCT/SE97/01089 06/18/1997

We AFFIRM.

BACKGROUND

Appellant's invention relates to a data security system for a database. An
understanding of the invention can be derived from a reading of exemplary
claims 18 and 41, which are reproduced below.
18. A data processing method comprising:
maintaining a database containing a table of data in row
and column format, at least a portion of the data being
encrypted;
maintaining, separate from the table of data,
information for controlling access to a specified proper subset
of data in the table; and
controlling access to the specified proper subset of data
in the table according to the separately maintained information.

41. A method comprising:
providing a database containing a table having at least two
columns of data;
encrypting data in a first column using first cryptographic
information;
encrypting data in a second column using second
cryptographic information;
storing first and second cryptographic information outside
of the table;
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controlling access to data in the first column using the first
cryptographic information stored outside of the table; and
controlling access to data in the second column using the
second cryptographic information stored outside of the table.

PRIOR ART
The prior art references of record relied upon by the Examiner in
rejecting the appealed claims are:
Thomson US 5,751,949 May 12,1998
Abraham US 5,148,481 Sep. 15, 1992
Denning, D. E., "Field Encryption and Authentication" Advances in
Cryptography, Proceedings of Crypto 83, pp 231-247 (1983).
Pfleeger, C. P., Security in Computer, Chapter 8, Database Security, PTR
Prentice Hall, (1989).
Gaskell et al. "-Improved Security for Smart Card Use in DCE," February,
1995, Open Software Foundation, Request For Comments 71.0.
Johansson et al. International Publication No. Wo 9515628, International
Publication Date: June 8, 1995.
REJECTIONS
Rather than reiterate the conflicting viewpoints advanced by the
Examiner and the Appellant regarding the above-noted rejections, we make
reference to the Examiner's answer (mailed Mar. 28, 2006) for the reasoning
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in support of the rejection, and to Appellant’s Brief (filed Feb. 02, 2006) and
Reply Brief (filed May 30, 2006) for the arguments thereagainst.

Claims 18, 19, 21, 28, 29, 31, 33, 37, 41, 42, 48, 49, 56, 57, 59, 66-68,
70, 74, 75, 79, 80, 86, and 87 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Thomson in view of Denning. Claims 20, 22, 43,
50, 58, 60, 81, and 88 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Thomson in view of Denning, and further in view of
Pfleeger. Claims 23-27, 34-36, 38-40, 45-47, 52-54, 61-65, 71-73, 76-78,
83-85, and 90-92 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Thomson in view of Denning, and further in view of
Gaskell. Claim 30 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Thomson in view of Denning, and further in view of
Johansson. Claims 32, 44, 51, 69, 82, and 89 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Thomson in view of Denning,
and further in view of Abraham.
Claims 86-92 and 48-54 are rejected under [Section] 101 as claiming
a data structure that does not define any structural and functional
interrelationships between a database and other claimed aspects of the
invention which permit the data structure's functionality to be realized. The
claims define in substance a database having a table with at least one column
of encrypted data, and information for controlling access to at least one
column wherein the information includes cryptographic information
associated with the encrypted column of data. However, no functional
interrelationship between the data structure and the information is defined.
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The portion of the claim "for controlling access to at least one column of
data" merely describes an intended use and does not narrow the scope of the
claim. Also, the portion of the claim "the information including
cryptographic information associated with the encrypted column of data"
does not disclose any functional interrelationship, only an association. For
these reasons, the subject matter of these claims are deemed to be
nonstatutory.

OPINION
In reaching our decision in this appeal, we have given careful
consideration to Appellant’s specification and claims, to the applied prior art
references, and to the respective positions articulated by Appellant and the
Examiner. As a consequence of our review, we make the determinations that
follow.
At the outset, we note that Appellant’s Brief is non-compliant with 37
C.F.R. § 41.37 wherein the Summary of the Claimed Invention does not
include a summary of each of the independent claims. Rather than remand
the case at this time or immediately prior to the oral hearing, we will address
Appellant’s Brief in the present condition.
35 U.S.C. § 101
While Appellant’s arguments in response to the Examiner’s rejection are
brief, Appellant factually distinguishes the factual situations in In re
Warmerdam, 33 F.3d 1354, 31 USPQ2d 1754 (Fed. Cir. 1994) and In re
Lowry, 32 F.3d 1579, 32 USPQ2d 1031 (Fed. Cir. 1994). Appellant’s argue
that the database management system is more than merely a database. From
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our review of the rejected claims and in light to the Examiner’s brief
analysis and statement of the rejection in the Answer, we find that the
Examiner has not established a prima facie case of non-statutory subject
matter. We find that the Examiner has not shown that the database
management system as recited in independent claims 48 and 86 are not
machines that perform a “useful, concrete and tangible result” of managing
access to the data in the database. Therefore, we find that the database
management system of independent claims 48 and 86 is eligible to be
patented under 35 U.S.C. § 101. Therefore, we cannot sustain the rejection
under 35 U.S.C. § 101.
35 U.S.C. § 103

In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. See In re
Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). A
prima facie case of obviousness is established by presenting evidence that
the reference teachings would appear to be sufficient for one of ordinary
skill in the relevant art having the references before him to make the
proposed combination or other modification. See In re Lintner, 458 F.2d
1013, 1016, 173 USPQ 560, 562 (CCPA 1972). Furthermore, the
conclusion that the claimed subject matter is prima facie obvious must be
supported by evidence, as shown by some objective teaching in the prior art
or by knowledge generally available to one of ordinary skill in the art that
would have led that individual to combine the relevant teachings of the
references to arrive at the claimed invention. See In re Fine, 837 F.2d 1071,
1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Rejections based on § 103
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must rest on a factual basis with these facts being interpreted without
hindsight reconstruction of the invention from the prior art. The examiner
may not, because of doubt that the invention is patentable, resort to
speculation, unfounded assumption or hindsight reconstruction to supply
deficiencies in the factual basis for the rejection. See In re Warner, 379 F.2d
1011, 1017, 154 USPQ 173, 177 (CCPA 1967). Our reviewing court has
repeatedly cautioned against employing hindsight by using the Appellant's
disclosure as a blueprint to reconstruct the claimed invention from the
isolated teachings of the prior art. See, e.g., Grain Processing Corp. v.
American Maize-Prods. Co., 840 F.2d 902, 907, 5 USPQ2d 1788, 1792
(Fed. Cir. 1988).
When determining obviousness, “the [E]xaminer can satisfy the
burden of showing obviousness of the combination ‘only by showing some
objective teaching in the prior art or that knowledge generally available to
one of ordinary skill in the art would lead that individual to combine the
relevant teachings of the references.’” In re Lee, 277 F.3d 1338, 1343, 61
USPQ2d 1430, 1434 (Fed. Cir. 2002), citing In re Fritch,
972 F.2d 1260, 1265, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992). “Broad
conclusory statements regarding the teaching of multiple references,
standing alone, are not ‘evidence.’” In re Dembiczak, 175 F.3d 994, 999, 50
USPQ2d 1614, 1617 (Fed. Cir. 1999). “Mere denials and conclusory
statements, however, are not sufficient to establish a genuine issue of
material fact.” Dembiczak, 175 F.3d at 999-1000,
50 USPQ2d at 1617, citing McElmurry v. Arkansas Power & Light Co., 995
F.2d 1576, 1578, 27 USPQ2d 1129, 1131 (Fed. Cir. 1993).
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Further, as pointed out by our reviewing court, we must first determine
the scope of the claim. “[T]he name of the game is the claim.” In re Hiniker
Co., 150 F.3d 1362,1369, 47 USPQ2d 1523, 1529 (Fed. Cir. 1998).
Therefore, we look to the limitations as recited in independent claim 18.
Here, we find that independent claim 18 recites:
A data processing method comprising:
maintaining a database containing a table of data in row
and column format, at least a portion of the data being
encrypted;
maintaining, separate from the table of data,
information for controlling access to a specified proper subset
of data in the table; and
controlling access to the specified proper subset of data
in the table according to the separately maintained information.

The examiner maintains that Thomson teaches almost the entire
claim, but for the data being stored in encrypted form. The Examiner
maintains that Denning teaches this field encrypting and that the
encryption technique ciphers each field of a record with a distinct
encryption key to prevent information from being ascertained without
the requisite key (Answer 3-4). We agree with the Examiner and find
that the Examiner has established a prima facie case of obviousness of
the invention as recited in independent claim 18.
Appellant argues that Thomson does not teach or suggest
“maintaining, separate from the table of data, … information for
controlling access to a specified proper subset of data” (Br. 12).
Appellant argues that the master key of Denning is stored separate
from the table of data, but that is used for the entire table and not for a
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proper subset of the table. Appellant further argues that the field key
of Denning is used to access a proper subset of the table, but that the
field key is calculated rather than stored (Br. 12).
We agree with the individual differences which Appellant
identifies for each reference, but when viewed in the totality of the
teachings and suggestions in the prior art, we do not find Appellant’s
argument to be persuasive. We find that while the Examiner has
provided varied positions in the answer as to the claim interpretations
and teachings, we find that the combination of Thomson and Denning
would have fairly suggested the invention as recited in independent
claim 18. Thomson teaches “A data processing method comprising:
maintaining a database containing a table of data in row and column
format,” but not necessarily “at least a portion of the data being
encrypted.” We find that Denning clearly teaches storing data in
encrypted form for limited access to portions of the data. Thomson
teaches “maintaining, separate from the table of data, information for
controlling access to a specified [proper] subset of data in the table,”
but arguably not a “proper” subset. We find that Denning clearly
teaches maintaining a master key which would clearly access the
entire data, but less than the entire data if desired. We find that if the
master can access all then it can also access less than all or be used to
generate/calculate field keys for the individual fields.
Here we find the language of independent claim 18 to be
broader than requiring the key to be maintained. The language of
independent claim 18 recites merely “information” where the master
being maintained and used to generate a field key would meet the
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recited limitations. Both Thomson and Denning teach accessing the
data in the table therefore, they both teach “controlling access to the
specified proper subset of data in the table according to the separately
maintained information.” The Examiner has provided at page 4 of the
Answer a convincing line of reasoning as to why it would have been
obvious to one of ordinary skill in the relevant art at the time of the
invention to have combined the teachings of Thomson and Denning to
limit access to the data, which we do not find controverted by
Appellant in the Brief or the Reply Brief. Therefore, we find that the
Examiner has set forth a prima facie case of obviousness which has
not been adequately rebutted nor has Appellant shown error therein.
Therefore, Appellant’s argument is not persuasive, and we will sustain
the rejection of independent claim 18. Additionally, we will sustain
the rejection of independent claims 48, 56, and 86 and dependent
claims which Appellant has grouped therewith in the heading on page
10 of the Brief.
With respect to independent claims 41 and 79, Appellant argues
that neither Thomson nor Denning discloses “storing first and second
cryptographic information outside of the table” (Br. 7). Appellant
maintains that the Examiner’s reliance upon the field key as the
second cryptographic information outside of the table is in error since
the field key is generated from the stored master along with other
information. We disagree with Appellant and find that the language
of independent claim 41 only requires “second cryptographic
information outside of the table” and not a key. Arguably the unique
field identifier, primary key, which is not a cryptographic key
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(Denning at p. 233, last paragraph), and the element key, which are
used to generate the field key, are all “cryptographic information
outside of the table” which may be used to control access to the data
in the columns as clearly taught and suggested by Denning.
Additionally, we find that it would have been obvious to one
skilled in the art at the time of the invention to have stored each of the
field keys if the database were not too large. Here, the language of
independent claim 41 only recites a first and second column which is
quite small and manageable. At the oral hearing, Appellant’s
representative opined that to store the field keys of every column
would be too much data to store and retrieve and that Denning
suggests the generation of the keys on the fly. We agree, but that is
not what is recited in the language of independent claim 41.
Therefore, Appellant’s argument is not persuasive.
Additionally, we note that Denning discusses the need to
evaluate key generation functions to consider the effort required to
generate all of the element keys in one record to decrypt an entire
record. (Denning at p. 234, last paragraph.) We find this to be a
recognition that some functions may demand too much data
processing for decrypting an entire record which would suggest the
storage rather than the calculation for those functions which are
demanding. Therefore, Appellant’s argument is not persuasive.
Furthermore, we find that the first and second cryptographic
information may be the same since the claim language does not
require that the first information be different than the second
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cryptographic information and there is only one step of storing the
information outside the table rather than two steps of storing which
would arguable imply that they are different information.
Here, we find that Appellant’s arguments go well beyond the
scope of the literal language in the claims, and we do not find any
argument or citation to the specification which would further limit the
broad interpretation given by the examiner. We note that the two
cryptographic informations are not necessarily different nor are they
required to be cryptographic keys, they are only stored cryptographic
information. Therefore, we accept the Examiner’s interpretation as
reasonable in light of Appellant’s specification.
With respect to Appellant’s arguments with respect to
inherency in Denning and the location of storage of data, we find as
discussed above, that it would have been obvious to one skilled in the
art at the time of the invention to either store the field keys or generate
them as needed. This would have been a consideration in the end use
of the table and system as applied to a field of endeavor, which is not
recited in the instant claims. We find that in light of the teachings of
Thomson to store the master outside the table, it would have been
obvious to one skilled in the art at the time of the invention to
similarly store the master and field keys outside the table for ease of
access. Therefore, Appellant’s argument is not persuasive, and we
will sustain the Examiner’s rejection of independent claim 41 over
Thomson and Denning and independent claim 79 and the dependent
claims which Appellant has elected to group therewith on page 7 of
the Brief.
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With respect to dependent claim 32, Appellant argues that
Abraham is inconclusive whether the key in encrypted form is stored
with the table or not (Br. 13). Here the Examiner merely relies upon
Abraham to teach that the key is in encrypted format and the base
combination teaches and fairly suggests that the key is stored outside
the table. Therefore, Appellant’s argument is not persuasive, and we
will sustain the Examiner’s rejection of dependent claim 32 over
Thomson, Denning, and Abraham and the dependent claims which
Appellant has elected to group therewith on page 13 of the Brief.
With respect to dependent claim 44, Appellant relies upon the
arguments made with respect to dependent claim 32 which we did not
find persuasive. Therefore, Appellant's argument is not persuasive,
and we will sustain the Examiner’s rejection of dependent claim 44
over Thomson, Denning, and Abraham and the dependent claims
which Appellant has elected to group therewith on page 14 of the
Brief.
With respect to dependent claim 51, Appellant relies upon the
arguments made with respect to dependent claim 32 which we did not
find persuasive. Therefore, Appellant's argument is not persuasive,
and we will sustain the Examiner’s rejection of dependent claim 51
over Thomson, Denning, and Abraham and the dependent claims
which Appellant has elected to group therewith on page 14 of the
Brief.
With respect to dependent claim 44, Appellant relies upon the
arguments made with respect to dependent claim 32 which we did not
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find persuasive. Therefore, Appellant's argument is not persuasive,
and we will sustain the Examiner’s rejection of dependent claim 44
over Thomson, Denning, and Abraham and the dependent claims
which Appellant has elected to group therewith on page 14 of the
Brief.
With respect to dependent claim 69, Appellant relies upon the
arguments made with respect to dependent claim 32 which we did not
find persuasive. Therefore, Appellant’s argument is not persuasive,
and we will sustain the Examiner’s rejection of dependent claim 69
over Thomson, Denning and Abraham and the dependent claims
which Appellant has elected to group therewith on page 14 of the
Brief.
With respect to dependent claim 82, Appellant relies upon the
arguments made with respect to dependent claim 32, which was
grouped with independent claim 18, which we did not find persuasive.
Therefore, Appellant's argument is not persuasive, and we will sustain
the Examiner’s rejection of dependent claim 82 over Thomson,
Denning, and Abraham.
With respect to dependent claim 23, Appellant reiterates the
language of the claim and maintains that Gaskells fails to teach using
a smart card for a proper subset rather than accessing the entire
system. Here, we agree with the Examiner that the use of smart cards
was well known as evidenced by Gaskell and that in the combination
of Thomson and Denning, it would have been obvious to one skilled
in the art at the time of the invention to store the key for cryptographic
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operations on the card as recited in claim 23. (Answer 22). Therefore,
Appellant's argument is not persuasive, and we will sustain the
Examiner’s rejection of dependent claim 23 over Thomson, Denning,
and Gaskell and the dependent claims which Appellant has elected to
group therewith on page 15 of the Brief.
With respect to dependent claim 24, Appellant reiterates the
language of the claim and maintains that Gaskell fails to teach using a
smart card for a proper subset which is in row and column format but
teaches ticket granting. Here, we agree with the Examiner that the use
of smart cards was well known as evidenced by Gaskell and that in
the combination of Thomson and Denning with data in row and
column format, it would have been obvious to one skilled in the art at
the time of the invention to store the key for cryptographic operations
on the card as recited in claim 24 which would access only a portion
of the data. (Answer 22). Therefore, Appellant's argument is not
persuasive, and we will sustain the Examiner’s rejection of dependent
claim 23 over Thomson, Denning, and Gaskell and the dependent
claims which Appellant has elected to group therewith on page 15 of
the Brief.
With respect to dependent claim 34, Appellant relies upon the
arguments made with respect to dependent claim 24 which we did not
find persuasive. Therefore, Appellant's argument is not persuasive,
and we will sustain the Examiner’s rejection of dependent claim 34
over Thomson, Denning, and Gaskell and the dependent claims which
Appellant has elected to group therewith on page 16 of the Brief.
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With respect to dependent claim 38, Appellant relies upon the
arguments made with respect to dependent claim 24 which we did not
find persuasive. Therefore, Appellant's argument is not persuasive,
and we will sustain the Examiner’s rejection of dependent claim 38
over Thomson, Denning, and Gaskell and the dependent claims which
Appellant has elected to group therewith on page 16 of the Brief.
With respect to dependent claim 52, Appellant relies upon the
arguments made with respect to dependent claim 24 which we did not
find persuasive. Additionally, we find that the combination of
Thomson and Denning would have had data in plural rows and
columns, as discussed above, which would teach the at least two
columns. Therefore, Appellant's argument is not persuasive, and we
will sustain the Examiner’s rejection of dependent claim 52 over
Thomson, Denning, and Gaskell and the dependent claims which
Appellant has elected to group therewith on page 17 of the Brief.
With respect to dependent claim 62, Appellant relies upon the
arguments made with respect to dependent claim 24 which we did not
find persuasive. Additionally, we find that the combination of
Thomson and Denning would have had data in plural rows and
columns which is a collection of records maintained as fields, as
disclosed by Denning. Therefore, Appellant's argument is not
persuasive, and we will sustain the Examiner’s rejection of dependent
claim 62 over Thomson, Denning, and Gaskell and the dependent
claims which Appellant has elected to group therewith on page 17 of
the Brief.
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With respect to dependent claim 71, Appellant relies upon the
arguments made with respect to dependent claim 24 which we did not
find persuasive. Additionally, we find that the combination of
Thomson and Denning would have had data in plural rows and
columns which is a collection of records maintained as fields, as
disclosed by Denning. Therefore, Appellant's argument is not
persuasive, and we will sustain the Examiner’s rejection of dependent
claim 71 over Thomson, Denning, and Gaskell and the dependent
claims which Appellant has elected to group therewith on pages 17-18
of the Brief.
With respect to dependent claim 25, Appellant relies upon the
arguments made with respect to independent claim 18 and dependent
claim 23 which we did not find persuasive. Therefore, Appellant's
argument is not persuasive, and we will sustain the Examiner’s
rejection of dependent claim 25 over Thomson, Denning, and Gaskell
and the dependent claims which Appellant has elected to group
therewith on page 18 of the Brief.
With respect to dependent claim 45, Appellant relies upon the
arguments made with respect to dependent claim 52 which we did not
find persuasive. Additionally, we find that the combination of
Thomson and Denning would have had data in plural rows and
columns, as discussed above, which would teach the at least two
columns. Therefore, Appellant's argument is not persuasive, and we
will sustain the Examiner’s rejection of dependent claim 45 over
Thomson, Denning, and Gaskell and the dependent claims which
Appellant has elected to group therewith on pages 18-19 of the Brief.
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With respect to dependent claim 20 and dependent claim 30 and
claims grouped therewith at page 19 of the Brief, Appellant merely
relies upon the earlier stated arguments and does not set forth a
separate argument for patentability. Therefore, we will group these
claims with the identified claims. Since we did not find those earlier
arguments persuasive, we do not find the arguments persuasive here.
Therefore, Appellant's arguments are not persuasive, and we will
sustain the rejection of dependent claims 20 and 30 and those grouped
therewith at page 19 of the Brief.

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CONCLUSION
To summarize, we have reversed the rejection of claims 86-92 and 48-54
under 35 U.S.C. § 101, and we have affirmed the rejection of claims 18-54
and 56-92 under 35 U.S.C. § 103(a).

No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

ELD

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