Ex Parte Spencer

Patent Trial and Appeal Board

May 22, 2013

10689157 (P.T.A.B. May. 22, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ANDREW M. SPENCER
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Appeal 2010-011818
Application 10/689,157
Technology Center 2400
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Before, ROBERT E. NAPPI, JASON V. MORGAN, and
DANIEL N. FISHMAN, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-011818
Application 10/689,157
2

This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1 through 15, and 28 through 29. Claims 16 through 26 have been
withdrawn. Claims 27 and 30 have been canceled.
We reverse.
INVENTION
The invention is directed to a removable storage device which has
encryption keys that are used to encrypt data, where the device also includes
a master encryption key which has been used to encrypt the encryption keys.
See page 2 of Appellant’s Specification. Claims 1 and 281 are representative
of the invention and reproduced below:
1. A removable information storage device suitable for use with a
host, comprising:
a non-volatile memory configured to store a master encryption
key; and
a non-volatile magnetic memory configured to store encryption
keys which have been encrypted using the master encryption key and
to store data which has been encrypted using the encryption keys.

28. A method of decrypting encryption keys in an information
storage device, comprising:
reading encrypted encryption keys from a magnetic random
access memory;
reading a master encryption key from a first non-volatile
memory;
decrypting each one of the encryption keys using the master
encryption key;
encrypting data using the encryption keys; and
writing the encrypted data to the magnetic random access
memory.

Appeal 2010-011818
Application 10/689,157
3

REJECTIONS AT ISSUE
The Examiner has rejected claim 1 under 35 U.S.C. § 102(b) as being
anticipated over Eisele (U.S. 5,159,182, Oct. 27, 1992). Answer 72.
The Examiner has rejected claims 2 through 15, 28 and 29 under 35
U.S.C. § 102(b) as being anticipated over Eisele and in the alternative under
35 U.S.C. § 103(a) as unpatentable over Eisele. Answer 7-10.

ISSUES
Claim 1
Appellant argues on pages 10 through 14 of the Appeal Brief, and
pages 4 through 7 of the Reply Brief, that the Examiner’s rejection of
independent claim 1 is in error.3 These arguments present us with the
dispositive issue: did the Examiner err in finding that Eisele teaches a non-
volatile memory configured to store encrypted keys which have been
encrypted using a master key and data encrypted using the keys?

Claim 28
On pages 18 through 22 of the Appeal Brief Appellant asserts the
rejection of independent claim 28 is in error applying the arguments similar
to those presented with respect to claim 1. Thus with respect to claim 28 we
are presented with the same issue as claim 1.

1 We note that the claims appendix to the Brief does not contain the popper
copy of claim 28. This is the proper version of claim 28 as submitted in the
September 15, 2008, amendment. See Answer 3-4.
2 Throughout this opinion we refer to the Examiner’s Answer mailed on
June 15, 2010.
Appeal 2010-011818
Application 10/689,157
4

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions that the Examiner has erred. Further, we have reviewed the
Examiner’s response to Appellant’s arguments. We agree with Appellant’s
conclusion that the Examiner erred in finding that Eisele teaches a non-
volatile memory configured to store encrypted keys which have been
encrypted using a master key and data encrypted using the keys. The
Examiner cites to Eisele’s teaching of using a portable storage device as an
encryption and decryption machine, described in col. 5, ll. 12-25, as teaching
this claim limitation. Answer 11-13. While we concur with the Examiner
that this is a teaching of storing a key and data encrypted using the key, we
do not find that this teaching also includes a master key that is used to
encrypt the keys as recited in independent claims 1 and 28. Accordingly, we
will not sustain the Examiner’s anticipation rejection of claims 1 and 28.
With respect to the Examiner’s obviousness rejection, the Examiner
has not provided evidence to show that it was known to store keys to encrypt
data, the encrypted data and a master key which is used to encrypt the keys.
Accordingly, we will not sustain the Examiner’s rejection of claims 2
through 15.

3 Throughout this opinion we refer to Appellant’s Appeal Brief filed on
March 29, 2010 and Reply Brief filed on July 22, 2010.
Appeal 2010-011818
Application 10/689,157
5

DECISION
We will not sustain the Examiner’s rejection of claims 1 through 15
28 and 29.
The decision of the Examiner to reject claims 1 through 15, 28, and 29
is reversed.

REVERSED

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