Ex Parte Fielder

Patent Trial and Appeal Board

Jan 17, 2018

13203368 (P.T.A.B. Jan. 17, 2018)

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.
13/203,368 08/25/2011 Guy Fielder 5101-0006 6771
27571 7590
Ascenda Law Group, PC
333 W San Carlos St.
Suite 200
San Jose, CA 95110
01/19/2018 EXAMINER
DEBNATH, SUMAN
ART UNIT PAPER NUMBER
2495
NOTIFICATION DATE DELIVERY MODE
01/19/2018 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):
patents @ ascendalaw.com
tarek.fahmi@ascendalaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GUY FIELDER
Appeal 2017-006057
Application 13/203,368
Technology Center 2400
Before JEREMY J. CURCURI, MIRIAM L. QUINN, and
MICHAEL M. BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 2, 4, 6-8, 10-14, 16, 18-20, 22-26, 28, 30-32, and 34—36. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies PACid Technologies, LLC as the real party in interest.
App. Br. 3.
Appeal 2017-006057
Application 13/203,368
Introduction
In providing background for the disclosed and claimed invention,
Appellant explains that confidential information may be encrypted and that
encryption technology primarily is classified as symmetric or asymmetric.
Spec. 13. Appellant summarizes aspects of the invention as generating a
message digest using a secret and a constant value, where the constant value
describes a file, extracting an encryption solution from the digest, encrypting
the file using the encryption solution, and then sending the encrypted file.
Spec. 14—6.
Claim 1 is representative, shown here with a disputed limitation in
italics'.2
1. A method for securing files, comprising:
generating, as a first file constant value for a first file, a
concatenated value comprising a length of the first file constant
value, an author of the first file, a security audit field providing
security tracking information for the first file, and a checksum;
generating, by an n-bit generator executing on a first
member of a group, a first message digest using a first secret and
the first file constant value;
extracting, by the first member, a first encryption solution
from at least the first message digest, wherein the first encryption
solution comprises an encryption key and algorithm selector bits',
selecting, by the first member and from a plurality of
encryption algorithms, an encryption algorithm corresponding to
the algorithm selector bits;
encrypting, by the first member, the first file using the
encryption key and the encryption algorithm to create a first
encrypted file; and
2 Appellant argues the Examiner errs solely based on the disputed limitation,
a version of which is recited in the independent claims. See App. Br. 8—15.
Pursuant to 37 C.F.R. 41.37(c)(l)(iv), we select claim 1 as representative.
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Application 13/203,368
sending, from the first member to a second member of the
group, the first encrypted file and the first file constant value.
App. Br. 17 (Claims App’x).
Rejections
Claims 1, 2, 4, 6-8, 10-14, 16, 18-20, 22-26, 28, 30-32, and 34—36
stand rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over
Fielder (US 6,105,133; Aug. 15, 2000), Matyas Jr. (6,947,556 Bl; Sept. 20,
2005), Kulas (US 2009/0094520 Al; Apr. 9, 2009), and Kawano (US
5,995,623; Nov. 30, 1999). Final Act. 2-9.
ANALYSIS
In rejecting claim 1, the Examiner finds Fielder teaches “extracting,
by the first member, a first encryption solution from at least the first
message digest,” and Kawano teaches “wherein the first encryption solution
comprises an encryption key and algorithm selector bits.” Final Act. 3, 6
(citing Fielder 6:17—31, Fig. 2; Kawano 13:7—60) (finding the motivation to
combine Kawano’s teachings with Fielder’s as proposed would have been
“in order to make sure [an] unauthorized intruder can’t get hold of the
encryption/decryption key and/or the algorithm used”).
Appellant argues the Examiner errs because “Kawano teaches
extracting algorithm selector bits, not from a message digest, but from
recognition data 351b which is interspersed within encrypted data 351a.” App.
Br. 9 (citing Kawano 13:8—11, Fig. 13). Thus, Appellant contends, because
“Kawano describes deriving an encryption key from a part of or whole of the
data to be protected,” it follows that
[a] person of ordinary skill in the art seeking to combine the
teachings of Kawano with those of Fielder . . . would, therefore,
apply these teachings and derive an encryption key from the data
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Application 13/203,368
to be protected, rather than from a different [i.e., unprotected]
source, such as a message digest.
Id. at 11; see also id. at 11—12 (clarifying that “[t]he message digest recited in
the present claims cannot be considered the data to be protected because the
claims themselves specify that the message digest is a value generated by an n-
bit generator, and is not the file that is ultimately encrypted (i.e., protected)”).
Appellant further contends the rejection is an exercise in impermissible
hindsight because it does not “explain why a person of ordinary skill in the art
would adopt an approach that included extracting algorithm selector bits from
the message digest (as in Fielder) instead or in place of extracting algorithm
selector bits from an encrypted message (in accordance with the teachings of
Kawano).” App. Br. 14. This hindsight argument is the crux of the instant
appeal.
The Examiner responds to Appellant’s hindsight argument by explaining
that “Kawano shows that bits of a message can be mapped [to] the identity of
an encryption algorithm” and “Fielder establishes that it was well known in
the art to use map bits of a message digest to [identify] a plurality of other
diverse types of encryption parameters, such as an session encryption key, or
a one[-]time password, or a change value for updated a secret.” Ans. 6.
Because the identity of an encryption algorithm is no
more or less complex or difficult to identify than any other
encryption parameter, such as the identity of an encryption key,
or one time password, or a change value, one of ordinary skill
in the art would have motivated by the bit mapping teachings of
the prior art that encryption parameters — such as an encryption
algorithm — can be equally identified by bits within a message
or by bits within a message digest as claimed.
Id.
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Application 13/203,368
We agree with the Examiner. Appellant’s argument that Kawano is
inapposite to the disputed limitation because, in the discussed embodiment
of Kawano, the algorithm selector bits are interspersed with the data to be
protected, is unpersuasive. See App. Br. 8—12; Reply Br. 2—\.
We disagree with Appellant that “[t]he Examiner has cited to no other
reference, and no additional teaching in Kawano from that referenced in the
Final Office Action, that would teach or suggest extracting algorithm
selector bits from a message digest.” Reply Br. 2. The Examiner explained
that the combination of Fielder and Kawano, not Kawano alone, teaches or
suggests the disputed limitation. Ans. 6. One cannot show nonobviousness
by attacking references individually when the rejection is based on a
combination of references. In re Merck & Co. Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986); see also In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Appellants do not point to any evidence of record that the Examiner’s
proposed combination of teachings would be “uniquely challenging or
difficult for one of ordinary skill in the art” or “represented an unobvious
step over the prior art.” Leapfrog Enters. Inc. v. Fisher-Price, Inc., 485 F.3d
1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418-19). Here,
weighing the Examiner’s findings and reasons, in light of the cited prior,
against Appellant’s arguments, without further evidence,3 we find that, on
this record, the Examiner has sufficiently articulated reasoning with a
rational underpinning supported by the preponderance of the evidence for
how and why the prior art’s teachings would have rendered the claimed
3 For example, we note Appellant has not provided any objective evidence of
secondary considerations, which our reviewing court guides “operates as a
beneficial check on hindsight.” Cheese Systems, Inc. v. Tetra Pah Cheese
and Powder Systems, Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
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Application 13/203,368
invention obvious to one of ordinary skill in the art at the time of the
invention. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006); accord KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting Kahn). Ans. 6.
Appellant does not persuade us the Examiner errs in finding that here, “the
improvement is [no] more than the predictable use of prior art elements
according to their established functions.” KSR, 550 U.S. at 417. Put another
way, extracting algorithm selector bits from Fielder’s digest would have
been a predictable use of Fielder’s digest in light of Kawano’s teachings of
algorithm selector bits.
Accordingly, we sustain the Examiner’s § 103 rejection of claim 1. In
doing so, we adopt as our own the Examiner’s findings and reasons as set
forth in the Final Rejection and in the Answer. We also, accordingly,
sustain the rejection of claims 2, 4, 6—8, 10-14, 16, 18—20, 22—26, 28, 30—
32, and 34—36.
DECISION
For the above reasons, we affirm the rejection of claims 1, 2, 4, 6—8,
10-14, 16, 18-20, 22-26,28, 30-32, and 34—36 under pre-AIA 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)(l)(iv).
AFFIRMED
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