Security First Corp.

Patent Trials and Appeals Board

Feb 2, 2022

2020005547 (P.T.A.B. Feb. 2, 2022)

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. 14/713,792 05/15/2015 Mark S. O'Hare T00538-C2 1112 33438 7590 02/02/2022 TERRILE, CANNATTI & CHAMBERS, LLP P.O. BOX 203518 AUSTIN, TX 78720 EXAMINER ANDERSON, MICHAEL D ART UNIT PAPER NUMBER 2433 NOTIFICATION DATE DELIVERY MODE 02/02/2022 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): USPTO@dockettrak.com celeste@tcciplaw.com tmunoz@tcciplaw.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, and DON MARTIN Appeal 2020-005547 Application 14/713,792 Technology Center 2400 Before JASON V. MORGAN, JAMES B. ARPIN, and PHILLIP A. BENNETT, Administrative Patent Judges. BENNETT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 2-9, 12-22, and 25-34, all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Security First Corp. Appeal Br. 3. Appeal 2020-005547 Application 14/713,792 2 CLAIMED SUBJECT MATTER The claims are directed to “securing data in the cloud.” Spec. ¶ 2. Claim 2, reproduced below with the disputed limitation in italics, is illustrative of the claimed subject matter: 2. A method of securing a virtual machine, the method comprising: providing at least one of a software application and a processing device, in a first computing environment, accessible to applications running in a client computing environment, the at least one of the software application and the processing device being configured to perform one or more security operations in response to receiving a request from an application; receiving by a computing system a security operation request from an application running in a first virtual machine operating in the client computing environment, wherein the security operation request comprises at least one of: a request to encrypt or decrypt a data set indicated by the application running in the virtual machine, and a request to generate a plurality of shares, each share comprising a distribution of data from an encrypted data set; and performing, by the at least one of a software application and a processing device, the security operation in response to receiving the request from the application running in the virtual machine. Appeal Br. 11 (Claims Appendix). Appeal 2020-005547 Application 14/713,792 3 REFERENCES2 The Examiner relies on these references: Name Reference Date Orsini US 8,009,830 B2 Aug. 30, 2011 Lee US 8,738,932 B2 May 27, 2014 REJECTION3 Claims 2-9, 12-22, and 25-34 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Lee and Orsini. Final Act. 7. ISSUES First Issue: Has the Examiner erred in finding Lee and Orsini teach or suggest “performing, by the at least one of a software application and a processing device, the security operation in response to receiving the request from the application running in the virtual machine,” as recited in claim 2? Second Issue: Has the Examiner erred in finding that a person of ordinary skill in the art would have combined the teachings of Lee with those of Orsini to achieve the invention recited in claim 2? ANALYSIS First Issue In rejecting claim 2 as obvious, the Examiner relies on the combined teachings of Lee and Orsini. The Examiner finds that Lee teaches most limitations of the claim. Final Act. 7-8. The Examiner relies on Orsini as 2 Citations to the references are to the first named inventor only. 3 The double patenting rejection has been withdrawn. Ans. 13-14 (“Claims 2-34 rejected on the ground of nonstatutory double patenting . . . has been withdrawn due to the terminal disclaimer filed 4/23/2019.”). Appeal 2020-005547 Application 14/713,792 4 teaching the limitations relating to generating a plurality of shares, concluding that it would have been obvious to combine the pertinent teachings of Orsini with those of Lee. Final Act. 8. Appellant argues the Examiner has failed to show the cited references teach or suggest “performing, by the at least one of a software application and a processing device, the security operation in response to receiving the request from the application running in the virtual machine,” as recited in claim 2. Appeal Br. 7-9. Specifically, Appellant contends the Examiner errs in finding that Orsini teaches “virtual encryption,” and as a result, “Orsini cannot cure the deficiency of Lee.” Appeal Br. 8-9. In the Answer, the Examiner clarifies that Lee is relied upon, in part, for the disputed limitation. Specifically, the Examiner explains that Lee’s description of receiving a request for an attestation report, and the subsequent generation and encryption of that report teaches “performing, by the at least one of a software application and a processing device, the security operation in response to receiving the request from the application running in the virtual machine.” Ans. 15. Appellant has not filed a Reply Brief responding to the Examiner’s explanation. We are not persuaded the Examiner has erred. Lee describes an application environment that “can work with computer platforms which support multiple operating systems executing on a single processor.” Lee col. 6, ll. 28-31. Lee further teaches the use of a hypervisor that is configured to provide security for virtual machines running within the environment. Lee col. 6, ll. 45-48 (“The hypervisor 14 gives the VMs the illusion they each have unrestricted access to all hardware resources, while retaining ultimate control on how the resources are used.”). Appeal 2020-005547 Application 14/713,792 5 Lee’s hypervisor creates this secure virtual environment by “instruct[ing] the processor to execute the at least one on-chip instruction to create a secure memory area for a software area for a software module” (Lee Abstract), and Lee further discloses that when an operating system is loaded into a virtualized memory space, a secure_launch hypercall may be invoked to “provide secure memory and/or disk areas for a software module forming part of a larger software system, either an application or an operating system.” Lee col. 7, l. 64-col. 8, l. 2. Lee also discloses that “[a]t any point during runtime, a security-critical OS or application module may invoke a new secure_launch hypercall to request a secure execution compartment from the hypervisor.” Lee col. 8, ll. 60-63. This capability in Lee teaches an application running in a virtual machine requests a security operation. Lee further teaches that the hypervisor provides data security by instructing the processor such that the processor “encrypts data written to, and decrypts data read from, the external memory using the at least one encryption key.” Lee Abstract. As such, Lee teaches that the security operation includes an encryption/decryption request, and that the security operation is performed “in response to receiving the request from the application running in the virtual machine,” as claimed. Lee’s security scheme is deficient only in that it does not teach generating shares of data as part of the requested security operation. Orsini addresses this deficiency. Orsini establishes that it was known in the art for requested security operations to involve generating shares. Orsini col. 6, ll. 39-43 (“[U]sing any suitable parsing and splitting algorithm to generate shares of data.”). As such, we are not persuaded that Examiner has erred in Appeal 2020-005547 Application 14/713,792 6 determining that the combined teachings of Lee and Orsini teach or suggest the disputed limitation of claim 2. Second Issue Appellant also challenges the combination of Lee and Orsini. Appellant argues the Examiner’s rationale in support of combining Lee and Orsini is insufficient. Appeal Br. 9. Appellant asserts that the Examiner’s reasoning “is merely conclusory, and the Examiner fails to explain precisely how teachings of Orsini can be combined with virtual processors of Lee.” Id. We are not persuaded of reversible error. In the Answer, the Examiner determines that it would have obvious “to modify Lee’s virtual processor based security system with Orsin[i]’s secure data parser method in system in which a plurality of data is virtually encrypted and securely parsed and split into multiple portions in order to provide additional security as suggested by Orsin[i].” Ans. 17. Contrary to Appellant’s assertion, we agree with the Examiner that a person of ordinary skill in the art, possessing the teachings of Lee and Orsini, would have understood that Lee’s security scheme would be improved by applying Orsini’s data parser. In fact, Orsini expressly contemplates applying its teachings, teaching “integration of the secure data parser of the present invention into any suitable system where data is stored or communicated.” Orsini col. 6, ll. 33-35. As such, we are not persuaded the Examiner has erred in making the proposed combination, and we sustain the rejection of claim 2. Remaining Claims Appellant presents no separate arguments for patentability of any other claims. See Appeal Br. 9. Accordingly, we sustain the Examiner’s Appeal 2020-005547 Application 14/713,792 7 rejection of these claims for the reasons stated above. See 37 C.F.R. § 41.37(c)(1)(iv). CONCLUSION We affirm the Examiner’s decision to reject the claims under 35 U.S.C. § 103(a). DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 2-9, 12-22, 25-34 103(a) Lee, Orsini 2-9, 12-22, 25-34 TIME PERIOD FOR RESPONSE 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