Ex Parte Dayan et al

Board of Patent Appeals and Interferences

Mar 8, 2011

09841503 (B.P.A.I. Mar. 8, 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.
09/841,503 04/24/2001 Richard Alan Dayan RPS9 2001 0011 5669
53493 7590 03/09/2011
LENOVO (US) IP Law
1009 Think Place
Building One, 4th Floor 4B6
Morrisville, NC 27560
EXAMINER
HENNING, MATTHEW T
ART UNIT PAPER NUMBER
2491
MAIL DATE DELIVERY MODE
03/09/2011 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
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RICHARD ALAN DAYAN, JOSEPH WAYNE FREEMAN,
WILLIAM FRED JR. KEOWN, and RANDALL SCOTT SPINGFIELD

____________

Appeal 2009-005557
Application 09/841,503
Technology Center 2400
____________

Before: LANCE LEONARD BARRY, HOWARD B. BLANKENSHIP,
and JAMES R. HUGHES, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the "MAIL DATE"
(paper delivery mode) or the "NOTIFICATION DATE" (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-005557
Application 09/841,503

2

STATEMENT OF THE CASE
The Patent Examiner rejected claims 44-49 and 57-62. The
Appellants appeal therefrom under 35 U.S.C. § 134(a). We have jurisdiction
under 35 U.S.C. § 6(b).

INVENTION
The Appellants describe the invention at issue on appeal as follows.
A computer system includes a hard drive having a protected
partition, which is locked during operation of an initialization
program following power on in the system. A trusted server
generates an update partition file, which is transferred to the
computer system to be stored in non-volatile storage. During
subsequent initialization, before the protected partition is
locked, encrypted information available only to the server and
the computer system is used to verify that the file was generated
by the server, and the file is used to update information within
the protected partition.
(Abstract.)

ILLUSTRATIVE CLAIM
57. An interconnected system for providing updated information in a
secure manner, wherein
the interconnected system comprises a network, server system
connected to the network and programmed to generate an update partition
file and to transmit the update partition file over the network; and a
computer system connected to the network,
the computer system includes a processor, non-volatile data storage
including a hard drive having a protected partition,
the processor is programmed to receive the update partition file from
the network and to store the update partition file in a predetermined location
within the nonvolatile data storage outside the protected partition,
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the nonvolatile data storage stores an operating system and an
initialization routine, executing within the processor after power on of the
computer system, including instructions causing the protected partition to be
locked before the operating system is loaded, and the instruction causing
information stored within the predetermined location to be written within the
protected partition after predetermined security procedures have occurred
but before the protected partition is locked,
the initialization routine includes instructions causing the processor of
the computer system to perform a method including:
comparing information stored in the protected partition with
information from the update partition file stored within the
predetermined location;
when a portion of the information stored in the protected
partition is found to match a portion of the information stored within
the update partition file, overwriting the portion of the information
stored in the protected partition with the portion of the information
stored in the protected partition if space around the portion of the
information stored in the protected partition is sufficient;
when a portion of the information stored in the protected
partition is not found to match a portion of the information stored
within the update partition file, writing the portion of the information
stored within the update partition file to append to the information
stored in the protected partition if space within the protected partition
is sufficient; and
locking the protected partition to prevent further modification
of information stored within the protected partition;
the update partition file includes a plurality of entries and a plurality
of encrypted elements,
each entry within the plurality of entries includes information to be
stored at a different location within the protected partition,
each encrypted element within the plurality of encrypted elements is
associated with an entry in the plurality of entries.
the method additionally comprises, following determining that the
update partition file is stored within the computing system for updating the
protected partition, verifying whether each entry in the plurality of entries
within the update partition file has been generated by the server system, and
each entry in the plurality of entries within the update partition file is
written to the protected partition only following verification that the entry
has been generated by the server system.
Appeal 2009-005557
Application 09/841,503

4

REFERENCES AND REJECTIONS
Menezes et al., Handbook of Applied Cryptography, CRC Press 1997.
Arnold
Schmidt
Gafken
Hasbun
US 5,128,995
US 5,826,015
US 6,026,016
US 6,088,759
Jul. 7, 1992
Oct. 20, 1998
Feb. 15, 2000
Jul. 11, 2000
Hayashi US 2001/0039651 A1 Nov. 8, 2001

Claims 44-48 and 57-61 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Gafken, Arnold, Hasbun, Hayashi, and Menezes.
Claims 49 and 62 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gafken, Arnold, Hasbun, Hayashi, Schmidt, and Menezes.

ISSUES
Based on the Appellants' arguments, we will decide the appeal of
claims 44-48 and 57-61 on the basis of claim 57 alone. See 37 C.F.R.
§ 41.37(c)(1)(vii). The issues before us are whether the Examiner erred in
finding that (1) the combined teachings of Gafken and Hayashi would have
suggested an update file that includes a plurality of entries and a plurality of
encrypted elements, wherein each encrypted element is associated with an
entry, and verifying whether each entry has been generated by a server
system, as required by representative claim 57, and (2) the combined
teachings of Gafken, Arnold, Hasbun, Hayashi, Schmidt, and Menezes
would have suggested the limitations of claims 49 and 62.

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FINDINGS OF FACT
Gafken describes its invention as "locking and unlocking blocks of
memory cells in a nonvolatile memory device to disable and enable write
and erase, and in some cases, read operations to the blocks of memory."
(Col. 1, ll. 7-10.)
Hayashi describes its invention as "translating information such as
source files encoded to protect the security of the information." (¶ 0002.)

ANALYSIS
We address the aforementioned issues seriatim.

CLAIMS 44-48 AND 57-61
The question of obviousness is "based on underlying factual
determinations including . . . what th[e] prior art teaches explicitly and
inherently . . . ." In re Zurko, 258 F.3d 1379, 1383 (Fed. Cir. 2001)
(citations omitted). "The test for obviousness is what the combined
teachings of the references would have suggested to one of ordinary skill in
the art." In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991) (citing In re
Keller, 642 F.2d 413, 425 (CCPA 1981)).
Here, the Examiner bases the rejection on the combined teachings of
Gafken and Hayashi inter alia. More, specifically, he makes the following
findings.
Gafken, in Col. 12 Line 53 - Col. 13 Line 2, disclosed a code
image with a code image signature for updating a BIOS [i.e.,
basic input/output system], which is equivalent to the update
partition file of the claim language . . . .
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With regards to the plurality of entries, Hasbun renders
obvious that in a BIOS update, the update data can be divided
into blocks. These blocks read on the plurality of entries.
. . . .
Furthermore, the teachings of Hayashi suggest that in
software updating, blocks of the update data should be
encrypted separately in order to relieve the burden on the
update servers. As such, one of ordinary skill in the art would
have found it obvious to sign (calculate a digest and encrypt)
each block of the code image of Gafken and Hasbun separately,
thereby creating an alternative plurality of encrypted elements.
As such, it can be seen that the limitation of the update
partition file including a plurality of entries and a plurality of
encrypted elements has been met by the combination of prior
art references.
Regarding the limitation that "wherein each encrypted
element in the plurality of encrypted elements is associated with
an entry in the plurality of entries", the examiner believes that
the combination of references relied upon meets this limitation.
. . . . [Specifically,] a separate signature is calculated for each
block, each signature is associated with the block (entry) from
which it was calculated.
Regarding the limitation that "wherein the method
performed by the initialization program includes verifying
whether each entry in the plurality of entries has been generated
by the server system", the examiner believes that this limitation
is met by the combination of applied references. Gafken clearly
disclosed verifying that the code image was generated by the
server system, as can be seen in Gafken Col. 12 Line 53 -
Col. 13 Line 2. . . . [Specifically,] wherein a separate, signature
was calculated for each block (entry) of the code image, in
order to verify the [whole] code image as disclosed by Gafken,
the signature of each block would need to be verified.
(Ans. 17-19.)
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"Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references." In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986) (citing Keller, 642 F.2d at 425). In determining obviousness,
furthermore, a reference "must be read, not in isolation, but for what it fairly
teaches in combination with the prior art as a whole." Id.
Here, the Appellants argue that "[t]here is no indication within Gafken
that a separate validation process performed for each of multiple entries
within the code image; the entire image is validated as a whole." (Appeal
Br. 13-14.) They add the following arguments.
Hayashi et al. merely describes a file including differently
encrypted entries, not a file containing a plurality of entries and
a plurality of encrypted elements, with each of the encrypted
elements associated with one of the entries . . . . In addition, . .
. Hayashi et al. does not describe a process for verifying that
individual portions of the stored data . . . .
(Id. at 14.)
Because the rejection is based upon the combined teachings of Gafken
and Hayashi inter alia, such arguments about the references individually
cannot establish non-obviousness. Therefore, we conclude that the
Examiner did not err in finding that the combined teachings of Gafken and
Hayashi would have suggested an update file that includes a plurality of
entries and a plurality of encrypted elements, wherein each encrypted
element is associated with an entry, and verifying whether each entry has
been generated by a server system, as required by representative claim 57.

Appeal 2009-005557
Application 09/841,503

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CLAIMS 49 AND 62
Rather than arguing the rejections of claims 49 and 62 separately, the
Appellants rely on the aforementioned arguments, which were unpersuasive.
Therefore, we conclude that the Examiner did not err in finding that the
combined teachings of Gafken, Arnold, Hasbun, Hayashi, Schmidt, and
Menezes would have suggested the limitations of claims 49 and 62.

DECISION
We affirm the rejections of claims 49, 57, and 62, and of claims 44-48
and 58-61, which fall with claim 57.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(v).

AFFIRMED

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