Ex Parte Dayan et alDownload PDFBoard of Patent Appeals and InterferencesMar 8, 201109841503 (B.P.A.I. Mar. 8, 2011) Copy Citation 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, Appeal 2009-005557 Application 09/841,503 3 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. Appeal 2009-005557 Application 09/841,503 5 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 . . . . Appeal 2009-005557 Application 09/841,503 6 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.) Appeal 2009-005557 Application 09/841,503 7 "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 8 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 tkl LENOVO (US) IP Law 1009 Think Place Building One, 4th Floor 4B6 Morrisville NC 27560 Copy with citationCopy as parenthetical citation