Ex Parte Rowe

Board of Patent Appeals and Interferences

Aug 2, 2007

09794486 (B.P.A.I. Aug. 2, 2007)

The opinion in support of the decision being entered today is not binding
precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RICK ROWE
____________

Appeal 2007-1241
Application 09/794,486
Technology Center 2100
____________

Decided: August 2, 2007
____________

Before JAMES D. THOMAS, LEE E. BARRETT, and JAY P. LUCAS,
Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal involves claims 1-13 and 15-23. We have jurisdiction
under 35 U.S.C. §§ 6(b) and 134(a).
We affirm.

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Representative independent claim 1 is reproduced below as best
representative of the disclosed and claimed invention:
1. A method of a securely storing data at a remote location
comprising:

establishing a communication link between a user computing device
and a server located remotely from said user computing device;

transmitting information from said user computing device to said
server which identifies a user of the user computing device;

transmitting user data which the user wishes to be remotely stored
from the user computing device to the server via the communication link;

associating identifying information regarding the user with the
transmitted data once the transmitted user data has been received by said
server;

obtaining encryption key information from said user for use in
encrypting said user data;

encrypting the transmitted user data at said server with a key based
upon said encryption key information obtained from said user;

identifying said keys as said user’s key and storing said key at a data
storage device of said server for later use in decrypting said user data; and

storing the encrypted transmitted user data and associated identifying
information at said data storage device, whereby said identifying
information can be utilized to identify said user data at a later time.

The following references are relied on by the Examiner:
Ballantyne US 5,867,821 Feb. 2, 1999
Chapman US 6,173,402 B1 Jan. 9, 2001
(filed Mar. 4, 1998)

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Serbinis US 6,584,466 B1 Jun. 24, 2003
(filed Apr. 7, 1999)
Bacha US 6,839,843 B1 Jan. 4, 2005
(filed Dec. 10, 1999)

Claims 1-4, 6 and 8 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Bacha. Claims 5, 7, 9-13 and 15-23 stand rejected under 35
U.S.C. § 103(a). As evidence of obviousness, the Examiner relies upon
Bacha alone for claim 5. Bacha is combined with Ballantyne for claims 7
and 9. Bacha is combined with Chapman and Ballantyne for claims 10-13
and 15. Bacha is combined with Chapman for claims 16-20, and is
combined with Serbinis and Ballantyne for claims 21-23.
Rather than repeat the positions of the Appellant and the Examiner,
reference is made to the Brief and Reply Brief for the Appellant’s positions,
and to the Answer for the Examiner’s positions.

OPINION
Regarding the rejection of independent claim 1 under 35 U.S.C.
§ 102(e) as being anticipated by Bacha, Appellant argues that Bacha
discloses “a system and method where the user must have a vault application
which serves to encrypt data before it is transmitted for storage” (Br. 14) and
that claim 1 recites a method where “encryption of the data occurs at the
remote server” (Br. 14). The Examiner points to column 6, lines 29-30 as
anticipating “encrypting the transmitted user data at said server” (Answer 4).
Both Appellant and the Examiner appear to agree that the document
encryption occurs in the user’s vault (Br. 15; Answer 22).
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Therefore, the disagreement between Appellant and the Examiner is
essentially regarding the location of the user’s vault application. Appellant
argues that a “user who wishes to store [a] document must have a ‘vault
application’ at their own computer which allows them to encrypt and
package the data before it is sent for storage” (Br. 13) and equates the
application server vault to “the remote server” (Br. 15). The Examiner
asserts that the vault controller and the application server, as parts of the
document repository system, “may be on the same machine” and equates
the document repository system to “the server/remote server" (Answer 22).
We disagree that the portion of Bacha cited by the Examiner (col. 5,
ll. 47-57), which merely states that the application server may be on the
same machine as the database it administers, adequately supports the
assertion that the user’s vault is located at the server. However, we find that
Bacha does, in fact, teach that the user’s vault is located remotely from the
user, at the server, as discussed below.
We note that Bacha discloses a similar prior art system, shown in
Figure 1, which is described as a system where “[a] document originator 100
can deposit documents via its connection 102 with a remote document
repository service 104, such as a database, administered by a third party”
(emphasis added)(col. 3, ll. 58-60). Later, Bacha describes his invention,
shown in Figure 2, by stating “[a]s in the system of FIG. 1, in the [preferred
embodiment], a document originator 200 can deposit documents via its
connection 202 with a document repository service 204” (emphasis
added)(col. 5, ll. 36-38). Bacha additionally teaches that “[e]ach vault on a
server has a unique encryption key”(emphasis added)(col. 4, ll. 52-53).
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Furthermore, Bacha teaches an alternative embodiment in which “the
document originator may sign and/or encrypt the document … before
submitting it to his vault for storage. However, the document … will be re-
signed and re-encrypted by the user’s vault, as any other document would be
handled” (emphasis added)(col. 7, ll. 43-49). These sections of Bacha
unambiguously show that the vaults shown in Figure 2 are located remote
from the clients, at the document repository system, described by Bacha as a
server (col. 4, ll. 33-50), and that the encryption occurs in the vault at the
server side. After carefully reviewing the entirety of Bacha, we find no
disclosure teaching or suggesting that the user vaults either are or could be
located at the user’s own computers, as asserted by Appellant (Br. 13).
Therefore, since the user vault is located at the document repository
system, which is a server remote from the client, we find that Bacha
anticipates the claimed limitation “encrypting the transmitted user data at
said server”.
Regarding Appellant’s note that “[c]laim 1 requires a method where
the user provides data used to encrypt the data, and where the user’s
encryption key is stored at the server” (Br. 14), we note that Appellant has
not provided any substantive arguments directed to this assertion, merely
noting that this feature allows the user to forget the key. The Examiner
pointed to column 6, lines 52-54 in support of this limitation (Answer 5).
We agree with the Examiner that Bacha teaches the user providing data used
to encrypt the data and storing, at the server, the encryption key used to
encrypt the data (col. 6, ll. 51-54; Fig.3, 304).
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Regarding the rejection of dependent claim 2, Appellant apparently
argues that the transmitted user data in Bacha is not in the form of a “data
file” (Br. 15). The Examiner points to column 4, lines 44-45 of Bacha
(Answer 6), which states “[t]his system relies on ... modern transmission
technology … that electronic transmission of documents and other data
will arrive intact and error free” (emphasis added) (col. 4, ll. 42-45). We
find that the language used by Bacha “documents and other data” makes it
clear that the documents disclosed throughout Bacha are, in fact, data files.
Additionally, we note that Bacha teaches implementing the invention on a
“general purpose computer system” such as a computer running “Microsoft
Windows 98 operating system” (col. 12, ll. 23-39). It is notoriously well
known in the art that computers running Microsoft Windows operating
systems send, receive, use and store data in the form of data files.
Regarding the rejection of dependent claim 3, Appellant argues that
the transmitted user data in Bacha does not contain “title information” (Br.
16). The Examiner points to column 3, lines 23-25 (Answer 6), which
teaches providing a search authority that allows users to search for
documents based on, among other things, “document identity”. We disagree
with Appellant and find that Bacha does teach information pertaining to
identification of remotely stored data. In order for the search authority to
locate documents based on a “document identity”, the documents must be
identifiable with that identity. We find that “document identity” falls well
within the broadest reasonable interpretation of the term “title information”.
Additionally, Bacha teaches implementing the invention on a “general
purpose computer system” such as a computer running “Microsoft Windows
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98 operating system” (col. 12, ll. 23-39). It is well known in the art that
computers operating Microsoft Windows send, receive, use and store data
identified using filenames. Therefore, the documents disclosed by Bacha
must include “title information” in the form of a filename in order to be
usable by the Microsoft Windows computer systems.
Regarding the rejection of dependent claim 6, Appellant argues that
“the Examiner’s rejection of Claim 6 based on col. 3, lines 64-67 of Bacha et
al. fails to adequately anticipate” since it doesn’t specify when the “read”
privilege is applied (Br. 17). Claim 6 recites “identifying said stored user
data as read-only after said data has been encrypted”. As noted by
Appellant, the Examiner relies upon column 3, lines 64-67 of Bacha
(Answer 6), which describes a prior art system similar to Bacha’s preferred
embodiment, and states that “[a]s the owner of the deposited documents …
the document originator may assign a business partner 106 to have a ‘read’
privilege” (emphasis added)(col. 3, ll. 60-64). Bacha discloses that the
preferred embodiment also allows the user to assign levels of access to
documents (col. 5, ll. 39-40). The above cited sections make it clear that the
documents have already been deposited by the time the read-only access is
designated. Since the documents are encrypted prior to being deposited (col.
6, ll. 55-57), the “read” privilege is assigned after encryption. Furthermore,
we note that Bacha teaches modifying the access control list of a document
already stored in the repository (col. 10, ll. 46-50).
Regarding the rejection of dependent claim 8, Appellant argues that
the communication between the user computing device and the server does
not “using the Internet” and that Bacha “specifically teaches a method of
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data storage performed over a ‘closed network’ which is contrary to using
the Internet” (Br. 17-18). The Examiner relies on column 1, lines 30-31
(Answer 7), a portion of the background essentially noting that the Internet
is a known open network. The Examiner supplements this with a citation to
column 4, lines 40-45 (Answer 26). Initially, we disagree with Appellant
that Bacha’s disclosure of a closed network is “contrary to using the
Internet”. The portion of Bacha relied upon by Appellant (col. 5, ll. 49-52)
merely states that the application server and the database repository may be
connected via a closed network. The relevant communication link is the one
between the user and the document repository system, not the link between
the application server and the database repository, which are both
components of the document repository system (col. 5, ll. 47-49). We agree
with the Examiner, since Bacha’s teaching that the document repository
system “provides an enhanced web server environment” (col 4., ll. 39-41)
that “relies on the modern transmission technology described in the
Background of the Invention” (col 4, ll. 42-45) as “the Internet and other
open networks” (col 1., ll. 29-30) may be accessed “though the client’s web
browser” (col. 4, ll. 48-50), adequately teaches that the communication link
between the client and the document repository system includes the Internet.
Appellant has not presented any substantive arguments directed
separately to the patentability of dependent claim 4, rejected under 35 U.S.C.
§ 102(e) as being anticipated by Bacha, or dependent claim 5, rejected under
35 U.S.C. § 103(a) as being unpatentable over Bacha alone. In the absence
of separate arguments with respect to these dependent claims, these claims
stand or fall with their representative independent claim. See In re Young,
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927 F.2d 588, 590, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991). See also
37 C.F.R. § 41.37(c)(1)(vii). Therefore, we will sustain the Examiner’s
rejection of these claims for the same reasons discussed supra with respect
to claim 1.
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598
(Fed. Cir. 1988). In so doing, the Examiner must make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17, 148
USPQ 459, 467 (1966). Furthermore, “‘there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness’ . . . . [H]owever, the 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. Teleflex Inc.,
127 S. Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007)(quoting In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)). In this appeal, we are satisfied the
examiner has met the requirements of the recent precedent, as embellished
upon here.
Appellant presents a general argument directed toward all pending
rejections under 35 U.S.C. § 103(a) (Br. 18-19). We note that Appellant has
presented no evidence or even a rationale in support of Appellant’s broad
assertions that “the Examiner has crossed the line into the realm of using
impermissible hindsight” (Br. 18) and “the Examiner has reached the result
of combining the references using subjective reasoning rather than objective
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facts.” (Br. 19). We further note that the Examiner presented numerous
rejections under 35 U.S.C. § 103(a), combining various references with
Bacha, and Appellant has failed to make any substantive arguments relating
to the content of the various references or the combinability of the references
with each other.
Regarding the rejection of dependent claims 7 and 9 under 35 U.S.C.
§ 103(a) as being obvious over Bacha in view of Ballantyne, claim 7 merely
recites “said transmitted user data comprises at least one graphic image file”,
Appellant argues that Bacha and Ballantyne are non-analogous art.
Appellant specifically argues that “the teaching of Ballantyne et al. is
incongruous with Bacha et al.” (Br. 19). The Examiner argues that Bacha
relates to the field of electronic data storage and provides a repository for
any type of data (Answer 26). The Examiner also argues that Ballantyne
teaches the “master library”, which is disclosed as a “data depository for …
text, graphics, still images, full motion video, and sound/audio information”
(col. 4, ll. 4-6).
We find that Bacha relates to a generic data storage system, and refers
generally to storage of “documents” (col. 5, ll. 36-37). One of ordinary skill
in the art would have realized that images would be an acceptable type of
document or, alternatively, be included in documents. Ballantyne also
relates to data storage, and teaches storage of a specific type of data,
including images, such as those recited in claim 7, in a “data depository”.
Additionally, we note that both Bacha (col. 6, ll. 55-57) and Ballantyne (col.
16, ll. 16-18) relate to encryption of stored personal data. Therefore, we
agree with the Examiner that Bacha and Ballantyne are analogous art, since
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they are both directed to systems for encrypted storage of user data.
Furthermore, it would have been obvious to one of ordinary skill in the art at
the time the invention was made to use a specific data type, such as graphic
image files taught by Ballantyne, inclusive of the generically disclosed
“documents” taught by Bacha.
Regarding the rejection of dependent claim 9, which merely recites
“at least a portion of said communications link includes a wireless
communication channel”, the Examiner acknowledges that Bacha fails to
specifically disclose use of a wireless network (Answer 9). The Examiner
relies upon Ballantyne and points to column 16, lines 44-47 (Answer 9),
which discloses distribution of various data types via several network types,
including wireless networks. Appellant argues that “[t]he Examiner’s
assertion misses the mark” because “the cited language is directed toward
wireless means for distributing compressed video … and not for … secure
document storage” (Br. 21). Ballantyne explicitly discloses using wireless
networks as an alternative to other network types for transmitting data (col.
16, ll. 44-49). It would have been obvious to one of ordinary skill in the art
at the time the invention was made that wireless networks, or any of the
other networks taught by Ballantyne would have been usable to transmit any
kind of data, and more specifically, to submit documents to the document
repository system of Bacha via the alternative communication medium.
Regarding the rejection of independent claim 10 and claims 11-13 and
15 under 35 U.S.C. § 103(a) as being unpatentable over Bacha in view of
Chapman and further in view of Ballantyne, Appellant argues as to claim 10
that “decryption takes place at the document originator’s vault and not the
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remote second computer” (Br. 22). We disagree for the reasons discussed
supra with respect to claim 1, primarily because the document originator’s
vault, where encryption/decryption of the deposited documents takes place,
is located at the second computer.
Appellant also argues that “there is no suggestion to combine the
teachings of Ballantyne et al. and Bacha et al.” and that “Ballantyne et al.’s
principal of permitting a document to be printed freely by a requestor
completely circumvents and undermines the security techniques which form
the foundation of Bacha et al.’s system and method.” (Br. 22). The
Examiner states that a user would be motivated to combine Bacha and
Ballantyne “to print out the user data, which is forwarded to the user for
review” (Answer 12) and that printing data into user readable form and
mailing the print-outs to the user is well-known in the art (Answer 23).
Initially, we note that Appellant has presented no arguments directed
to the teachings or combinability of the secondary reference Chapman with
Bacha. Accordingly, Appellant has waived any such arguments, and the
combinability and teachings of Chapman will not be addressed here.
As discussed supra with respect to claim 7, we find that Bacha relates
to a generic data storage system, and refers generally to storage of
“documents” (col. 5, ll. 36-37). Ballantyne also relates to data storage, and
teaches storage of a specific type of data, including images, in a “data
depository”. Additionally, we note that both Bacha (col. 6, ll. 55-57) and
Ballantyne (col. 16, ll. 16-18) relate to encryption of stored personal data.
Ballantyne teaches user requested printing of user specific data and mailing
the print-outs to a user. One of ordinary skill in the art, when made aware of
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the disclosures of Bacha and Ballantyne would have immediately recognized
the advantages of and been motivated to allow users to print documents
stored in the document repository. For example, and as noted by the
Examiner (Answer 12), this would have allowed the users to review the
printed documents without being connected to the document repository
system, as well as provided the users with physical back-up copies of the
documents.
Regarding Appellant’s argument regarding motivation to combine,
that permitting a document to be printed circumvents and undermines the
security techniques taught by Bacha (Br. 22), we disagree. Both Bacha (col.
6, ll. 55-57) and Ballantyne (col. 16, ll. 16-18) encrypt the stored personal
data. The data must be decrypted prior to printing, and it can only be
decrypted by authorized parties in both Bacha (col. 8, ll. 13-17) and
Ballantyne (col. 8, ll. 3-5). Therefore, permitting printing of documents as
taught by Ballantyne will not circumvent or undermine the security
techniques taught by Bacha, since the stored data will remain encrypted until
a print-out is requested, and will not be decrypted until the requestor is
authenticated and authorized.
Appellant has not presented any substantive arguments directed
separately to the patentability of dependent claims 11-13 and 15. In the
absence of a separate argument with respect to the dependent claims, those
claims stand or fall with the representative independent claim. See Young,
927 F.2d at 590, 18 USPQ2d at 1091. See also 37 C.F.R. § 41.37(c)(1)(vii).
Therefore, we will sustain the Examiner’s rejection of these claims as being
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obvious over Bacha in view of Chapman and Ballantyne for the same
reasons discussed supra with respect to claim 10.
Turning to the rejection of independent claim 16 and claims 17-20
under 35 U.S.C. § 103(a) as being unpatentable over Bacha in view of
Chapman, Appellant’s arguments as to claim 10 substantially mirror those
presented with respect to claim 1. Appellant again argues that Bacha
“teaches decryption at the document originator’s vault (after transmission of
the encrypted document from the remote server)” (Br. 23). We disagree for
the reasons discussed supra with respect to claim 1, primarily because the
document originator’s vault, where encryption/decryption of the deposited
documents takes place, is located at the second computer.
Appellant also argues that claim 16 is additionally allowable “for the
reason that it recites a specific technique of storing the
encryption/decryption key at the remote server, where the key can be
identified by a user password” (Br. 23). The Examiner relies upon Bacha for
teaching the storage of an encryption/decryption key at the remote server
and Chapman for teaching that the key is identifiable by receipt of a user-
provided password (Answer 15). We also note that Appellant has presented
no arguments directed to the teachings or combinability of the secondary
reference Chapman with Bacha. Accordingly, Appellant has waived any
such arguments, and the combinability and teachings of Chapman will not
be addressed here. Appellant has also failed to present substantive
arguments directed to storing the encryption/decryption key at the remote
server, merely asserting this as a reason why claim 16 should be allowed
(Br. 23). Nonetheless, Bacha teaches storing, at the server, the encryption
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key used to encrypt the data (col. 6, ll. 51-54; Fig.3, 304), as noted by the
Examiner (Answer 15).
Appellant has not presented any substantive arguments directed
separately to the patentability of dependent claims 17-20. In the absence of
a separate argument with respect to the dependent claims, those claims stand
or fall with the representative independent claim. See Young, 927 F.2d at
590, 18 USPQ2d at 1091. See also 37 C.F.R. § 41.37(c)(1)(vii). Therefore,
we will sustain the Examiner’s rejection of these claims as being obvious
over Bacha and Chapman for the same reasons discussed supra with respect
to claim 16.
Lastly, regarding the rejection of independent claim 21 and its
dependent claims 22 and 23 under 35 U.S.C. § 103(a) as being unpatentable
over Bacha in view of Serbinis and further in view of Ballantyne, Appellant
initially argues that claim 21 “is allowable for similar reasons to Claims 1,
10 and 16” (Br. 24). As discussed above, we see no deficiencies with
respect to the rejections of those claims.
Appellant additionally argues that “[t]he Examiner cites Bacha et al.
for the alleged anticipation of requesting ‘print-out from the second storage
computer.’” However, the Examiner need only rely on Bacha for the
request, generally, since the Examiner relied upon Ballantyne for teaching
requests specifically for printing documents (Answer 20). Therefore, to the
extent this argument asserts that the combined references fail to teach
requesting and generating a print-out of user data from the depository, we
disagree. We find that Ballantyne clearly teaches a user requesting a print-
out that is subsequently generated and delivered (col. 8, ll. 56-60).
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Appellant additionally argues that “Serbinis does not teach
establishing an account [to pay for storage and access fees], or for charging a
financial account for data access and storage” and that “Serbinis merely
discloses keeping a table of information regarding pricing and billing
information” (Br. 24-25). The Examiner points to column 6, lines 47-53 of
Serbinis for teaching creating a financial account from which funds are
withdrawn corresponding to a data storage fee (Answer 19). At column 6,
lines 47-53, Serbinis teaches creating an account for storing information
including billing information, “such as the user’s credit card number”, in a
database located at a document management services provider. We note that
this language indicates that a credit card number is merely exemplary of the
types of financial accounts that would have been usable by Serbinis. One of
ordinary skill in the art would have been aware of many alternative types of
accounts for billing a user. Serbinis additionally teaches charging the
account for data storage fees (col. 13, ll. 30-50). Therefore, we disagree
with Appellant, and find that Serbinis does teach establishing a financial
account for the purpose of charging a user for data storage.
Appellant’s Reply Brief presents substantially identical arguments to
those presented in the Appeal Brief. Appellant again argues that “the
encryption/decryption takes place at the document originator’s vault
environment and not at the server.” (Reply Br. 6). As discussed supra with
respect to independent claims 1, 10, 16 and 21, the document originator’s
vault is located at the server, as shown in Figures 1 and 2 and their
accompanying discussion (col.3, ll. 55-67; col. 5, ll. 33-63). This
relationship is clearly shown in Figure 2, which depicts the document
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originator’s vault 216 as being part of the document repository, which is
separated from the document originator (client) 200 by a network connection
208. Figure 2 makes it clear that all elements of the document repository
system are located remotely from the client, including the document
originator’s vault 216, the application server vault 220, the application
server 210 and the database 212 (see also col. 5, ll. 47-56). Appellant’s
remaining arguments all rest on the premise that the document originator’s
vault is located on the client side, and are not persuasive for the reasons
discussed above.
In summary, we sustain the Examiner’s rejections of claims 1-4, 6 and
8 under 35 U.S.C. § 102(e). We also sustain the Examiner’s separate
rejections of claims 5, 7, 9-13 and 15-23 under 35 U.S.C. § 103(a). The
rejections of these claims encompass all claims on appeal, and all rejections
are affirmed. Therefore, the decision of the Examiner is affirmed.

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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)(1)(iv).
AFFIRMED

KIS

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