Ex Parte Ma

Board of Patent Appeals and Interferences

Mar 11, 2011

10437585 (B.P.A.I. Mar. 11, 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.
10/437,585 05/14/2003 Kenneth Ma 14881US01 5141
23446 7590 03/11/2011
MCANDREWS HELD & MALLOY, LTD
500 WEST MADISON STREET
SUITE 3400
CHICAGO, IL 60661
EXAMINER
PATEL, NIRAV B
ART UNIT PAPER NUMBER
2435
MAIL DATE DELIVERY MODE
03/11/2011 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 KENNETH MA
____________

Appeal 2009-006075
Application 10/437,585
Technology Center 2400
____________

Before JOSEPH F. RUGGIERO, MAHSHID D. SAADAT, and
MARC S. HOFF, Administrative Patent Judges.

RUGGIERO, 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 2009-006075
Application 10/437,585

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Final Rejection of
claims 1-48, which are all of the pending claims. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
Rather than reiterate the arguments of Appellant and the Examiner,
we refer to the Appeal Brief (filed September 5, 2007), the Answer (mailed
November 28, 2007), and the Reply Brief (filed January 28, 2008) for the
respective details.

Appellant’s Invention
Appellant’s invention relates to the managing of data stored on a
storage device and, more particularly, to the disaster recovery of data from
the storage device. A disaster management password for recovering
information on the storage device is established and securely stored along
with a disaster recovery code. In response to a disaster, the stored disaster
management password is acquired and utilized to decode the disaster
recovery code. (See generally Spec. ¶ [08]).
Claim 1 is illustrative of the claimed invention and reads as follows:
1. A method for managing data stored on a storage device, the
method comprising:
one of establishing and receiving a first disaster management
password for recovering information stored on a first storage device;
securely storing said first disaster management password and a first
disaster recovery code;
after an occurrence of at least one of a plurality of disaster events,
receiving said stored first disaster management password; and
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determining said first disaster recovery code based on said stored first
disaster management password to address said at least one of said plurality
of disaster events.

The Examiner’s Rejections
The Examiner’s Answer relies on the following prior art references:
Houser US 5,606,609 Feb. 25, 1997
Lohstroh US 5,768,373 Jun. 16, 1998
McDonald US 6,091,658 Jul. 18, 2000
Al-Salqan US 6,160,891 Dec. 12, 2000
Claims 1-3, 17-19, and 33-35 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Al-Salqan.
Claims 4, 5, 20, 21, 36, and 37 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Al-Salqan in view of McDonald.
Claims 6-13, 15, 16, 22-29, 31, 32, 38-45, 47, and 48 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Al-Salqan in view of
McDonald and Lohstroh.
Claims 14, 30, and 46 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Al-Salqan in view of McDonald, Lohstroh, and
Houser.

ANALYSIS
35 U.S.C. § 102(b) REJECTION
Independent claims 1, 17, and 33
Appellant’s arguments with respect to the anticipation rejection, based
on Al-Salqan, of independent claims 1, 17, and 33 initially focus on the
contention that Al-Salqan does not disclose the determination, after the
occurrence of a disaster event, of a first recovery code based on a first
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disaster management password. According to Appellant (App. Br. 9-11),
Al-Salqan uses both the key recovery file 306, which the Examiner likens to
the claimed disaster recovery code, and the private information 302, which
the Examiner likens to the claimed disaster management password, in
obtaining the private key 334.
We do not find Appellant’s arguments persuasive of any error in the
Examiner’s stated position. As explained by the Examiner (Ans. 13-14), and
as is apparent from Al-Salqan’s Figure 3 and the accompanying description
beginning at column 5, line 15, of Al-Salqan, the key recovery file 306 is
determined, i.e., decoded or decrypted, based on the private information 302.
Appellant’s argument that Al-Salqan uses both the key recovery file and the
private information to determine the private key is not commensurate with
the claim language since claim 1 is directed to determining (decoding or
decrypting) the disaster recovery code, i.e., Al-Salqan’s key recovery file
306, and not the private key 334. Further, the language of claim 1 only
requires that the disaster recovery file be determined based on the disaster
management password and does not preclude the use of any additional
information in making the determination.
Further, Appellant’s arguments (Reply Br. 6-7) to the contrary
notwithstanding, we do not interpret the Examiner’s position as equating Al-
Salqan’s private key 334 with the claimed disaster recovery code. Rather, it
is Al-Salqan’s key recovery file 306 which the Examiner asserts corresponds
to the claimed disaster recovery code. Also, contrary to Appellant’s
contention, Al-Salqan’s encrypted format securely stores the key recovery
file 306 and the comparison verification 326 securely stores the private
information 302 (col. 5, ll. 16-58).
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In view of the above discussion, since Appellant has not demonstrated
that the Examiner erred in finding that all of the claimed limitations are
present in the disclosure of Al-Salqan, the Examiner’s 35 U.S.C. § 102(b)
rejection of independent claims 1, 17, and 33 is sustained.

Dependent claims 2, 3, 18, 19, 34, and 35
We also sustain the Examiner’s anticipation rejection, based on Al-
Salqan, of dependent claims 2, 3, 18, 19, 34, and 35. With respect to claims
2, 18, and 34, we find, as previously discussed, that Al-Salqan discloses the
decoding of a disaster recovery code, i.e., key recovery file 306, based on a
disaster management password, i.e., private information 302.
With respect to claims 3, 19, and 35, we find no error in the
Examiner’s determination (Ans. 14-15) that Al-Salqan discloses the
generation of a disaster management key, i.e., private key 334, by decoding
the disaster recovery code (key recovery file 306) based on a disaster
management password (private information 302). (Al-Salqan, Fig. 3; col. 6,
ll. 29-52). Contrary to Appellant’s contention (Reply Br. 7), we do not find
any inconsistency in the Examiner’s treatment of the claimed disaster
recovery code and disaster management key. As previously discussed, it is
Al-Salqan’s key recovery file 306 that the Examiner has equated with the
claimed disaster recovery code and it is Al-Salqan’s private key 334 that is
equated with the claimed disaster management key.

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35 U.S.C. § 103(a) REJECTIONS
Claims 4, 5, 20, 21, 36, and 37
The Examiner’s obviousness rejection of dependent claim 4, 5, 20, 21,
36, and 37 based on the combination of Al-Salqan and McDonald is
sustained as well. Initially, with respect to claims 4, 20, and 36 we find no
error in the Examiner’s application (Ans. 15) of the specified memory
portion teachings of McDonald to the disaster recovery system of Al-Salqan.
Appellant has provided no convincing arguments as to why McDonald’s
storage of a checksum does not correspond to the claimed disaster recovery
code. In fact, McDonald specifically identifies the stored checksum as an
error recovery code (col. 4, ll. 50-53).
Similarly, with respect to claims 5, 21, and 37, we find no error in the
Examiner’s determination that McDonald’s disclosure of associating an
index bit with a specified portion of memory corresponds to a storage
location identifier as claimed (col. 4, ll. 63-65). While Appellant contends
(App. Br. 19-20; Reply Br. 9) that McDonald’s index bit is merely used to
determine the fullness of a memory, it is nonetheless apparent that
McDonald’s index bit is a location identifier since it identifies which
memory area location is greater than another memory area location (col. 4, l.
65–col. 5, l. 3).

Claims 6-13, 15, 16, 22-29, 31, 32, 38-45, 47, and 48
We also sustain the Examiner’s obviousness rejection of dependent
claims 6-13, 15, 16, 22-29, 31, 32, 38-45, 47, and 48 in which the Lohstroh
reference has been added to the combination of Al-Salqan and McDonald.
With respect to claims 6-8, 11, 22-24, 27, 38-40, and 43, Appellant’s
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arguments (App. Br. 23-25, 33-35; Reply Br. 9-10) do not convince us of
any error in the Examiner’s stated position. We agree with the Examiner
that Lohstroh discloses the generation of a second disaster recovery code
since two encrypted versions of an access key, i.e., a disaster recovery code,
are created. As explained by the Examiner (Ans. 16-17), Lohstroh discloses
the generation of a first disaster recovery code Kacc which is encrypted at
unit 234 and then encrypted again at unit 268 to form a second encrypted
access code *Kacc2*, i.e., a second disaster recovery code (col. 4, ll. 64-67).
We also refer to our previous discussion of claims 4, 5, 20, 21, 36, and 37 in
which we found no error in the Examiner’s finding that McDonald’s
disclosure of an index bit memory area identifier corresponds to the claimed
location identifier.
Similarly, with respect to dependent claims 9, 10, 13, 25, 26, 29, 41,
42, and 45, we find no error in the Examiner’s determination (Ans. 7-8, 17)
that Lohstroh discloses the generation of the second disaster management
key, i.e., Kacc2**, which is generated by using the OT private key to decrypt
the second access key *Kacc2* (Fig. 2; col. 5, l. 66–col. 6, l. 2). Further, we
agree with the Examiner that, contrary to Appellant’s contention (App. Br.
26-28), the generated code Kacc2** is not the same as *Kacc2*. We also agree
with the Examiner (Ans. 18) that McDonald discloses the defining a portion
of first and second storage as a default location (col. 4, ll. 49-61).
Further, with respect to dependent claims 12, 28, and 44, we find no
error in the Examiner’s determination that Al-Salqan’s disclosure of the
prompting to a user to retrieve private information from private storage,
which is managed by a trusted party, corresponds to the claimed location
identifier prompting (col. 5, ll. 37-38, 52-56). Appellant’s arguments (App.
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Br. 29-30, 40) are not persuasive of any error in the Examiner’s position that
the disclosed use of the principal’s private key acts as an index which
indentifies the locations of the private storage for retrieval of the private
information.
Lastly, with respect to dependent claims 15, 16, 31, 32, 47, and 48,
Appellant’s arguments (App. Br. 31-33, 43-45) are unpersuasive of any error
in the Examiner’s stated position. We agree with the Examiner (Ans. 9) that
Lohstroh provides a teaching of the various claimed “one or more” storage
devices, such as a hard disk and CD-ROM, as well as the claimed “one or
more” disaster events, such as a compromised password (Fig. 1; col. 1, ll.
44-62; col. 2, ll. 20-25).

Claims 14, 30, and 46
The Examiner’s obviousness rejection of dependent claims 14, 30,
and 46, in which the Houser reference has been added to the combination of
Al-Salqan, McDonald, and Lohstroh, is also sustained. We agree with the
Examiner (Ans. 11-12, 19) that Houser adds to the combined teachings of
McDonald and Lohstroh of storing disaster management keys in a default
storage location by providing a teaching of specifying a default path for
retrieving the disaster management keys from a default storage location.
(Houser, col. 9, ll. 50-57).

CONCLUSION
Based on the analysis above, we conclude that Appellant has not
shown that the Examiner erred in rejecting claims 1-3, 17-19, and 33-35 for
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anticipation under 35 U.S.C. § 102(b), nor in rejecting claims 4-16, 20-32,
and 36-48 for obviousness under 35 U.S.C. § 103(a).

DECISION
The Examiner’s decision rejecting claims 1-3, 17-19, and 33-35 under
35 U.S.C. § 102(b) and claims 4-16, 20-32, and 36-48 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)(1)(iv) (2009).

AFFIRMED

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MCANDREWS HELD & MALLOY, LTD
500 WEST MADISON STREET
SUITE 3400
CHICAGO, IL 60661