Ex Parte O et al

Patent Trial and Appeal Board

Jun 28, 2016

13371364 (P.T.A.B. Jun. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/371,364 02/10/2012
1473 7590 06/30/2016
ROPES & GRAY LLP
PATENT DOCKETING 39/361
1211 A VENUE OF THE AMERICAS
NEW YORK, NY 10036-8704
FIRST NAMED INVENTOR
Mark S. O'Hare
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
104093-0002-106 7972
EXAMINER
LESNIEWSKI, VICTOR D
ART UNIT PAPER NUMBER
2493
NOTIFICATION DATE DELIVERY MODE
06/30/2016 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):
USPatentMail@ropesgray.com
USPatentMail2@ropesgray.com
pair_rg@firsttofile.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, RICK L. ORSINI,
ROGER DAVENPORT, and STEVEN WINICK
Appeal2014-003718
Application 13/371,364
Technology Center 2400
Before ALLEN R MACDONALD, IRVINE. BRANCH, and
ADAM J. PYONIN, Administrative Patent Judges.
BRANCH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
30. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal2014-003718
Application 13/371,364
CLAIMED SUBJECT MATTER
The claims are directed to a server-centric cryptographic key storage
system. Spec. i-f 68.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method for securing a data set, the method steps
implemented by a programmed computer system, the method
steps comprising:
encrypting the data set based on an encryption key to
produce an encrypted data set;
transforming the encryption key using an all or nothing
transform to produce a transformed encryption key;
generating data splitting information, wherein the data
splitting information is usable to determine into which of a
plurality of shares of data a unit of data of the encrypted data set
will be placed;
separating the encrypted data set into the plurality of
shares based on the data splitting information;
including in the plurality of shares data indicative of the
transformed encryption key; and
causing the plurality of shares to be stored in respective
separate storage locations;
wherein the data set is restorable by accessing less than all,
but at least a threshold number of, the plurality of shares.
REJECTIONS
Claims 1-5, 10-15, 20-25, and 30 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Forrest (U.S. 7,302,583 B2; Nov. 27, 2007),
Turner (U.S. 7,203,871 B2; Apr. 10, 2007), and Rivest. 1 Final Act. 2-11.2
1 All-Or-Nothing Encryption and The Package Transform ("Rivest").
2 Final Action, mailed August 28, 2012.
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Appeal2014-003718
Application 13/371,364
Claims 6, 7, 16, 17, 26, and 27 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Forrest, Turner, Rivest, and Temudo (U.S.
7,428,751 B2; Sept. 23, 2008). Final Act. 11-15.
Claims 8, 9, 18, 19, 28, and 29 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Forrest, Turner, Rivest, and Denning (U.S.
7,143,289 B2; Nov. 28, 2006). Final Act. 15-20.
CONTENTIONS
Appellants argue that the Examiner erred in rejecting claim 1 because
Forest and Turner "teach incompatible approaches" (App. Br. 7), the
"proposed combination is based on hindsight only and the alleged
motivation fails to justify the combination" (id. 8), the proposed
combination changes the principle of operation of Forest (id. 8-9), and the
Examiner is "attempting to impermissibly pick and choose features from
[the cited references]" (id. 9). See also Reply Br. 2-5.
Appellants also argue that the combination of Forrest, Turner, and
Rivest fail to teach or suggest claim 1 's "transforming the encryption key
using an all or nothing transform to produce a transformed encryption key."
App. Br. 10-11; Reply Br. 5.
Appellants argue the claims collectively. Hence, the appeal turns on:
1) whether the Examiner's rejection is based on some articulated
reasoning with some rational underpinning to support the conclusion that
claim 1 would have been obvious over the combined teachings of Forrest,
Turner, and Rivest; and
2) whether Forrest, Turner, and Rivest collectively teach or
suggest "transforming the encryption key using an all or nothing transform
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Application 13/371,364
to produce a transformed encryption key," as recited in claim 1 and
commensurately recited in claims 11 and 21.
OPINION
We have reviewed the Examiner's rejections in light of Appellants'
arguments in the Appeal Brief ("App. Br." filed Sept. 30, 2013) and Reply
Brief ("Reply Br." filed Feb. 3, 2014). We refer to the Briefs and the
Answer ("Ans." mailed Dec. 3, 2013) for the respective positions of
Appellants and the Examiner.
We are unpersuaded of error in the Examiner's rejections for the
reasons stated by the Examiner. Final Act. 2-22; Ans. 2---6. We highlight
the following for emphasis.
We are unpersuaded of error in the Examiner's conclusion that one of
ordinary skill in the art at the time of Appellants' invention would have
found it obvious to modify Forest's method for securing a data set with
Turner's data splitting due to the benefit that "storing data in such a manner
would allow the data to be recovered despite the unavailability of certain
network nodes." Final Act. 4. We also are unpersuaded of error in the
Examiner's conclusion that one of ordinary skill in the art at the time of
Appellants' invention would have found it obvious to modify Forest and
Turner using Rivest's all or nothing transform, applied to the encryption key,
because "transforming the encryption key would add another layer of
security to the system." Id. 4--5. Appellants' arguments do not persuade us
that the Examiner's conclusion lacks the required "articulated reasoning with
some rational underpinning" to support it. In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006); see also KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 418
(2007).
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Appeal2014-003718
Application 13/371,364
In response to Appellants' arguments against the Examiner's proposed
combination of references (App. Br. 6-9), we adopt as our own the
Examiner's response (Ans. 2-5), which Appellants do not persuasively rebut
(Reply Br. 2--4). In particular, we are not persuaded of error in view of
Appellants' argument that "merely because something may be
technologically feasible is not sufficient to uphold an obviousness rejection"
(Reply Br. 3) because the Examiner's reasoning is not based merely on what
is technologically feasible. Ans. 2---6.
We also are unpersuaded that the Examiner has provided "no rational
basis for why one of ordinary skill would be motivated to go through the
trouble of breaking up the template and storing shares in different locations
and then also storing separate complete copies of the template in different
locations." Reply Br. 3. The Examiner's analysis "need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ." KSR Int 'l Co. v. Telej1ex, Inc., 550
U.S. 398, 418 (quoting In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006)).
The Examiner states that "storing data in such a manner would allow the
data to be recovered despite the unavailability of certain network nodes"
(Final Act. 4), and Appellants provide insufficient persuasive argument or
evidence to convince us of error in this reasoning.
We also are unpersuaded of error in view of Appellants' argument
that "the Examiner's assertions as to what 'could' be done run[] directly
afoul of Federal Circuit cases firmly holding that obviousness must be based
on what a person of ordinary skill would be motivated to do, and not what is
merely possible." Reply Br. 3.
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Appeal2014-003718
Application 13/371,364
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of ordinary
skill can implement a predictable variation, § 103 likely bars its
patentability. For the same reason, if a technique has been used
to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual
application is beyond his or her skill. Sakraida [ v. AG Pro, Inc.,
425 U.S. 273 (1976)] and Anderson's-Black Rock[, Inc. v.
Pavement Salvage Co., 396 U.S. 57 (1969)] are illustrative-a
court must ask whether the improvement is more than the
predictable use of prior art elements according to their
established functions.
KSR, 550 U.S. 398 at 417. We find the Examiner has provided ample
motivation to combine the references, and Appellants do not persuade us
that the Examiner's reasoning is insufficient "objective reason[ing]." See
Croes, Inc. v. U.S. International Trade Commission, 598 F.3d 1294 (Fed.
Cir. 2010)).
We also are unpersuaded of error based on Appellants' arguments that
"without an articulated reasoning or motivation for the asserted combination,
the only way to arrive at Appellants' claims is to use the Appellants' claims
as a footprint to impermissibly combine disparate elements of the prior art to
arrive at Appellants' claimed subject matter." Reply Br. 4. The argument is
premised on the lack of "articulated reasoning or motivation for the asserted
combination," which we do not find lacking for the reasons stated above.
We also find unavailing Appellants' arguments (Reply Br. 5) that the
combination of references do not teach or suggest claim 1 's "transforming
the encryption key using an all or nothing transform to produce a
transformed encryption key." Appellants argue that
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Application 13/371,364
the Examiner has failed to provide sufficient rationale as to why
one of ordinary skill in the art would choose [to] perform a
transform on the encryption key where none of the cited
references include such an approach. The Examiner's conclusory
statement that Rivest's transform increases security by 'adding
another layer of encryption' is insufficient to support a
conclusion of obviousness.
Id. We see no error.
Appellants do not dispute that Rivest discloses an all or nothing
transformation. Appellants do not persuasively rebut the Examiner's
reasoning that one of ordinary skill in the art would have found it obvious to
apply Rivest's all or nothing encryption to an encryption key to increase
security by adding another layer of encryption. Ans. 5-6. We therefore
disagree that the Examiner's reasoning is "insufficient to support a
conclusion of obviousness." Reply Br. 5.
In view of the foregoing, we are unpersuaded of error in the
Examiner's decision to reject claim 1. Because Appellants do not present
separate arguments for the rejections of the remaining claims, we sustain the
Examiner's rejections of all pending claims.
DECISION
We sustain the Examiner's decision to reject claims 1-30.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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