Ex Parte Wei

Patent Trial and Appeal Board

Aug 30, 2013

10997357 (P.T.A.B. Aug. 30, 2013)

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.
10/997,357 11/23/2004 Bo-Er Wei 120448-168180 4432
60172 7590 08/30/2013
SCHWABE, WILLIAMSON & WYATT, P.C.
1420 FIFTH AVENUE, SUITE 3400
SEATTLE, WA 98101-4010
EXAMINER
WYSZYNSKI, AUBREY H
ART UNIT PAPER NUMBER
2434
MAIL DATE DELIVERY MODE
08/30/2013 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte BO-ER WEI
____________________

Appeal 2011-003074
Application 10/997,357
Technology Center 2400
____________________

Before ROBERT E. NAPPI, DEBRA K. STEPHENS, and
MIRIAM L. QUINN, Administrative Patent Judges.

Per curiam.

DECISION ON APPEAL

Appeal 2011-003074
Application 10/997,357

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 4-7 and 10-15. We have jurisdiction under 35 U.S.C. § 6(b).
Claims 2, 3, 8, 9, 16, and 17 are objected to and claims 18-23 have been
allowed.
We REVERSE and enter a NEW GROUNDS OF REJECTION
UNDER 37 C.F.R. § 41.50(b).

Introduction

According to Appellant, the invention relates to a system and method
for data encryption systems and methods (Abstract).

Exemplary Claim

Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A data encryption system, comprising:

a storage device adapted to store data D, the storage
device including:

an encryption/decryption module adapted to randomly
generate a device key seed Sd according to a time interval
between two specific operations on the storage device,
and adapted to apply the generated device key seed Sd to
data encryption of the data D,

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wherein the storage device is adapted to randomly
generate the device key seed Sd in response to interrupts
that notify the storage device of occurrence of the two
specific operations.

REFERENCES
Yim
Lee
Khare
Nakano
US 6,810,387 B1
US 6,836,483 B1
US 2005/0208891 A1
US 7,533,275 B2
Oct. 26, 2004
Dec. 28, 2004
Sep. 22, 2005
May 12, 2009

REJECTIONS
The Examiner made the following rejections:

(1) Claims 1, 7, and 15 stand rejected under 35 U.S.C § 103(a) as
being unpatentable over Yim, Nakano, and Lee (Ans. 3-5).
(2) Claims 4-6 and 10-12 stand rejected under 35 U.S.C § 103(a) as
being unpatentable over Yim, Nakano, and Lee (Ans. 5-6).
1

(3) Claim 13-14 stands rejected under 35 U.S.C § 103(a) as being
unpatentable over Yim, Nakano, and Khare (Ans. 6).

1
The rejection of claims 4-6 and 10-12 is stated as being rejected under 35
U.S.C § 103(a) as being unpatentable over Yim and Nakano (Ans. 3).
However, since these claims depend from independent claims 4 and 7,
respectively, we determine the rejection was meant to state: Claims 4-6 and
10-12 stand rejected under 35 U.S.C § 103(a) as being unpatentable over
Yim, Nakano, and Lee.
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ISSUE 1
35 U.S.C. § 103(a): Claims 1, 4-7, 10-12, and 15
Appellant asserts the invention is not obvious over Yim, Nakano, and
Lee (App. Br. 5-11). Specifically, Appellant contends Yim does not teach
generating a “key seed” or applying the generated device key seed Sd to data
encryption of the data, but instead, only teaches generating a “random
number” and using the random number to newly encrypt the decrypted key
and output the newly encrypted key (App. Br. 5-6; Reply Br. 3-4).
Appellant additionally argues Nakano also does not teach generating a
“key seed” according to a time interval between two specific operations on
the storage device, but instead teaches generating “pseudo-data” to be placed
on a data bus during certain time periods (App. Br. 7). In Nakano, Appellant
asserts, a control signal is supplied to a pseudo-data generating circuit 19
and, in response, the pseudo-data generating circuit generates “random
number data” (App. Br. 7-8). Appellant further argues that the pseudo-data
is generated after the end of a read cycle period or after the end of a write
cycle period; however, Nakano does not teach generating the pseudo-data
according to a time interval between two specific operations and in response
to interrupts that notify of occurrence of two operations (App. Br. 7-8; see
also Reply Br. 4-5).
Issue 1: Has the Examiner erred in finding the combination of Yim,
Nakano, and Lee teaches or suggests “randomly generate a device key seed
Sd according to a time interval between two specific operations . . . in
response to interrupts that notify the storage device of occurrence of the two
specific operations,” as recited in claim 1?
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ANALYSIS
Appellant has not explicitly defined the term “seed” in their
Specification. Appellant has not persuaded us the Examiner erred in the
interpretation of “seed,” and, thus, has not persuaded us of error in the
Examiner’s finding that Yim teaches a seed as recited.
Further, applying a broad, but reasonable interpretation, in light of the
Specification, we interpret “according to” as “depending on,” and interpret
“generate” as “to bring into existence.”
In light of these interpretations, we agree with Appellant that the
Examiner has not shown the combination of Yim, Nakano, and Lee teaches
or suggests the disputed limitation. Specifically, the Examiner relies on
Nakano’s read/write cycle to teach a predetermined period of time when
pseudo data is generated according to that predetermined time period
between the read/write cycle period (Ans. 8). However, we disagree with
the Examiner that the generation of the pseudo data in Nakano is in response
to the control signals (interrupts) that notify the storage device of occurrence
of the two operations.
Accordingly, we are persuaded the Examiner erred in finding the
combination of Yim, Nakano, and Lee teaches or suggests “randomly
generate a device key seed Sd according to a time interval between two
specific operations . . . in response to interrupts that notify the storage device
of occurrence of the two specific operations,” as recited in independent
claim 1, and commensurately recited in independent claims 7 and 15.
Dependent claims 4-6 and 10-12 thus stand with their respective
independent claims. Therefore, we cannot sustain the rejection of claims 1,
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4-7, 10-12, and 15 under 35 U.S.C. § 103(a) for obviousness over Yim,
Nakano, and Lee.

REJECTIONS OF CLAIMS 1, 7, AND 15 UNDER 37 C.F.R. § 41.50(b)

We make the following new grounds of rejection using our authority
under 37 C.F.R. § 41.50(b).
Rejections:
Claims 1, 7, and 15 are rejected under 35 U.S.C. § 112, first paragraph
for written description.
Claims 1, 7, and 15 are rejected under 35 U.S.C. § 112, first paragraph
for lack of enablement.
Claim 15 is rejected under 35 U.S.C. § 101 as being directed to non-
statutory subject-matter.

ANALYSIS
Written Description:
Claim 1 recites an encryption/decryption module adapted to randomly
generate a device key seed Sd according to a time interval between two
specific operations. Appellant’s Specification describes generating a device
key seed as being shown in step s202 of Figure 2 (Fig. 2; see also Spec. 5, l.
28 – Spec. 6, l. 13). This disclosure states:
When the storage device 120 receives the request, in step S202, a
device key seed Sd is randomly generated according to the time of a
specific operation or the interval between two specific operations on
the storage device 120, and in step S203, the device key seed Sd is
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transmitted to the host 110. It is understood that if the device key seed
Sd is generated according to the interval between two specific
operations, the two operations may be of different type.
The interval can be measured using the MCU (Micro Control
Unit) tick number of the storage device 120.

Spec. 6, ll. 4-13; see also Spec. 3, ll. 14-18. However, Appellant has not
disclosed an algorithm (in the form of a mathematical formula, in prose, or
as a flow chart, or in any other manner that provides sufficient structure) or
any further description as to how the measured interval is used in acquiring
the device key seed.
To satisfy the written description requirement, the disclosure must
reasonably convey to skilled artisans that Appellant had possession of the
claimed invention as of the filing date. Ariad Pharms., Inc. v. Eli Lilly &
Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).
Because we find that Appellant’s Specification does not disclose any
such algorithm or description necessary to perform the claimed function, we
find the invention as recited in claims 1, 7, and 15 is unpatentable under 35
U.S.C. § 112, first paragraph, for lack of a written description.

Enablement:
“[T]he specification of a patent must teach those skilled in the art how
to make and use the full scope of the claimed invention without ‘undue
experimentation.”’ In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993); see
also In re Wands, 858 F. 2d 731, 736 -37 ( Fed. Cir. 1988). In reaching the
conclusion that experimentation is undue, many factors must be weighed,

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including the quantity of experimentation necessary and the relative skill of
those in the art. Wands, 858 F. 2d at 737.

Here, we find the Specification provides minimal guidance on how to
generate a device key seed. Although we agree with the Examiner that use
of a seed was well-known at the time of the invention, the value of that seed
could be determined by various methods. As discussed above, Appellant’s
Specification describes generating a device key seed as being shown in step
s202 of Figure 2 (Fig. 2; see also Spec. 5, l. 28 – Spec. 6, l. 13).
However, Appellant’s Specification does not describe how the
measure interval is used to acquire Sd. Thus, little direction or guidance is
provided to an ordinarily skilled artisan as to finding the value of Sd. As
such, given the breadth of the recitation in the claim, an ordinarily skilled
artisan would have almost unlimited algorithms available.
Because we find that Appellant’s Specification does not disclose how
to acquire Sd, we find the invention as recited in claims 1, 7, and 15 is
unpatentable under 35 U.S.C. § 112, first paragraph, for lack of enablement.
Statutory Subject Matter:

Claim 15 recites a tangible computer readable medium having stored
thereon, computer instructions. In the Specification, page 9, line 12 through
line 18, Appellant describes that the data encryption methods of the present
invention may be “embodied in the form of program code transmitted over
some transmission medium . . . via any other form of transmission.” As
such, a broad but reasonable interpretation of computer readable medium
would include signals per se. Therefore, since the claim covers a signal per
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se, the claims are rejected under 35 U.S.C. § 101 as covering non-statutory
subject matter. See Ex parte Merewether, 2013 WL 3291360, 6-7
(precedential); In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007)
(transitory embodiments are not directed to statutory subject matter); Subject
Matter Eligibility of Computer Readable Media, supra; U.S. Patent &
Trademark Office, Interim Examination Instructions for Evaluating Subject
Matter Eligibility Under 35 U.S.C. § 101, Aug. 24, 2009; p. 2, available at
http://www.uspto.gov/web/offices/pac/dapp/opla/2009-08-
25_interim_101_instructions.pdf ; U.S. Patent & Trademark Office,
Evaluating Subject Matter Eligibility Under 35 USC § 101 (August 2012
Update); pp. 11-14, available at
http://www.uspto.gov/patents/law/exam/101_training_aug2012.pdf.

The Board of Patent Appeals and Interferences is a review body rather
than a place of initial examination. We have made the rejection regarding
independent claims 1, 7, and 15 under 37 C.F.R. § 41.50(b). We leave it to
the Examiner to determine the appropriateness of any further rejections
based on these or other references. Our decision not to enter a new ground
of rejection for all claims should not be considered as an indication
regarding the appropriateness of further rejection or allowance of the non-
rejected claims.

DECISION
The Examiner’s rejection of claims 1, 4-7, 10-12, and 15 under 35
U.S.C. § 103(a) as being unpatentable over Yim, Nakano, and Lee is
reversed.
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In a new ground of rejection, we reject claims 1, 7, and 15 under 35
U.S.C. § 112, first paragraph for written description; claims 1, 7, and 15
under 35 U.S.C. § 112, first paragraph for lack of enablement; and claim 15
under 35 U.S.C. § 101 as being directed to non-statutory subject-matter.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (2010). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the examiner, in
which event the proceeding will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

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) (2011).

REVERSED; 37 C.F.R. § 41.50(b)

ELD