Ex Parte O et al

Patent Trial and Appeal Board

Sep 19, 2017

13866452 (P.T.A.B. Sep. 19, 2017)

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.
13/866,452 04/19/2013 Mark S. O'Hare 104093-0015-106 4595
09/21/201715314 7590
Shvarts & Leiz LLP
111 North Market Street, Suite 820
San Jose, CA 95113
EXAMINER
DESROSIERS, EVANS
ART UNIT PAPER NUMBER
2491
NOTIFICATION DATE DELIVERY MODE
09/21/2017 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):
j im @ slpatents. com
patents @ slpatents .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK S. O’HARE and RICK L. ORSINI
Appeal 2017-003904
Application 13/866,452
Technology Center 2400
Before JUSTIN BUSCH, JOHN P. PINKERTON, and JASON M. REPKO,
Administrative Patent Judges.
REPKO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—20. App. Br. 3.2 We have jurisdiction under 35 U.S.C.
§ 6(b). We reverse.
1 Appellants identify the real party in interest as Security First Corp.
App. Br. 3.
2 Throughout this opinion, we refer to (1) the Final Rejection (“Final Act.”)
mailed May 12, 2015, (2) the Advisory Action (“Adv. Act.”) mailed July 27,
2015, (3) the Appeal Brief (“App. Br.”) filed May 2, 2016, (4) the
Examiner’s Answer (“Ans.”) mailed November 8, 2016, and (5) the Reply
Brief (“Reply Br.”) filed January 9, 2017.
Appeal 2017-003904
Application 13/866,452
THE INVENTION
Appellants’ invention secures a file name of a file to be split and
stored on a storage network, such as a cloud, a storage device, or some
combination of devices. See Spec. ]Hf 585—587. For example, the invention
can secure the file name by encrypting it. Id. 1 587. Claim 1 is reproduced
below with our emphasis:
1. A method for securing the filename of a file to be split and
stored on a storage network, the method comprising:
encrypting, by processing circuitry communicatively
coupled to the storage network, the filename of the file using an
encryption algorithm;
generating one or more data shares from the file using an
information dispersal algorithm, at least one of the one or more
data shares having a share name that is associated with the
encrypted filename;
storing the generated data shares on one or more data
share locations in the storage network; and
regenerating the filename of the file by decrypting the
share name of one of the generated data shares.
THE REJECTIONS
The Examiner relies on the following as evidence:
Nishiyama et al. US 2003/0055905 A1 Mar. 20, 2003
Orsini et al. US 2006/0177061 Al Aug. 10, 2006
Chakraborty et al. US 2008/0297326 Al Dec. 4, 2008
Claims 1—7 and 11—17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Orsini and Nishiyama. Final Act. 3—6.
Claims 8—10 and 18—20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Orsini, Nishiyama, and Chakraborty. Final Act. 6—8.
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Appeal 2017-003904
Application 13/866,452
ANALYSIS
The disputed limitation of claim 1 recites, in part, “encrypting, by
processing circuitry communicatively coupled to the storage network, the
filename of the file using an encryption algorithm.” Claim 11 recites a
similar limitation.
In rejecting claims 1 and 11 under the proposed combination of Orsini
and Nishiyama, the Examiner finds Orsini teaches the recited encrypting.
Final Act. 3.
Appellants argue Orsini does not encrypt a file name. App. Br. 7—10.
According to Appellants, Orsini only teaches storing the file name, but does
not encrypt it. Id. at 9-10. Appellants’ argument is persuasive.
In particular, the Examiner finds Orsini encrypts file names after data
splitting. Ans. 9 (citing Orsini 111); see also Final Act. 3. To be sure,
Orsini teaches that secure data processor 3000 splits the data from buffer
3008. Orsini 1464. But the Examiner has not shown that Orsini stores file
names in buffer 3008. See Final Act. 3-A; Adv. Act. 2—5; Ans. 9-10.
In fact, Orsini’s system stores file names as information 3106 at
wrapper layer 3022. Orsini 1464, cited in Ans. 9. Orsini’s Figure 31 shows
buffer 3008 as separate from information 3106. Orsini Fig. 31. So, even if
processor 3000 encrypts the data in buffer 3008 after splitting it (see Ans. 9),
we agree with Appellants that the Examiner has not shown that Orsini
encrypts information 3106, which represents the file names (App. Br. 9—10).
On this record, we do not sustain the rejection of independent claims 1
and 11, or dependent claims 2—7 and 12—17 for similar reasons.
We also do not sustain the rejections of dependent claims 8—10 and
18—20 for the same reasons. In particular, the additional reference,
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Appeal 2017-003904
Application 13/866,452
Chakraborty, was not relied upon to teach the recited encrypting step, which
is missing from Orsini, and, thus, does not cure the deficiency discussed
above. See Final Act. 6—8.
DECISION
We reverse the Examiner’s rejection of claims 1—20.
REVERSED
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