Ex Parte Breslau et al

Patent Trial and Appeal Board

Mar 24, 2016

12816061 (P.T.A.B. Mar. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/816,061 06/15/2010
35525 7590 03/28/2016
IBM CORP (YA)
C/O YEE & AS SOCIA TES PC
P.O. BOX 802333
DALLAS, TX 75380
FIRST NAMED INVENTOR
Frank C. Breslau
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.
AUS920100018US1 2576
EXAMINER
AL HASHEM!, SANA A
ART UNIT PAPER NUMBER
2156
NOTIFICATION DATE DELIVERY MODE
03/28/2016 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):
ptonotifs@yeeiplaw.com
mgamez@yeeiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANK C. BRESLAU, BENJAMIN BRIGGS, and
ORI POMERANTZ1
Appeal2014-004206
Application 12/816,061
Technology Center 2100
Before CARLA M. KRIVAK, MICHAEL J. STRAUSS, and
JAMES W. DEJMEK, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify International Business Machines Corporation as the
real party in interest. App. Br. 2.
Appeal2014-004206
Application 12/816,061
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-20, which constitute all the claims pending in this application. 2
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse and enter a new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b).
THE INVENTION
Appellants' invention is directed to "managing collectively sensitive
data in cloud computing environments." Spec. i-f 1. Claim 1, reproduced
below with a dispositive limitation emphasized in italics, is illustrative of the
claimed subject matter:
1. A method of managing collectively sensitive data, the method
compnsmg:
dividing the collectively sensitive data into a first partition for
reassembly data, a second partition of the collectively sensitive data,
and a third partition of the collectively sensitive data, wherein each of
the second partition and the third partition are collectively
nonsensitive in isolation;
storing the first partition in a translation table in a secure
database, wherein the translation table is configured for use in
assembling the collectively sensitive data from the second partition
and the third partition;
storing the second partition of the collectively sensitive data in
a first database associated with a first cloud computing environment;
and
2 In this Opinion, we refer to Appellants' Appeal Brief ("App. Br.," filed
August 12, 2013), the Reply Brief ("Reply Br.," filed December 19, 2013),
the Final Office Action ("Final Act.," mailed March 11, 2013), and the
Examiner's Answer ("Ans.," mailed October 25, 2013).
2
Appeal2014-004206
Application 12/816,061
storing the third partition of the collectively sensitive data in a
second database associated with a second cloud computing
environment.
REJECTION
The Examiner rejected claims 1-20 under 35 U.S.C. § 102(e) as
anticipated by Casper et al. (US 2011/0276806 Al; Nov. 10, 2011 (filed
May 6, 2011)) ("Casper"). Final Act. 2---6.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments the Examiner has erred in rejecting independent claims 1, 9, and
17 under 35 U.S.C. § 102(e) as anticipated by Casper. We agree with
Appellants' conclusions as to this rejection of the claims. 3
Appellants contend Casper does not disclose "dividing the collectively
sensitive data into a first partition for reassembly data, a second partition of
the collectively sensitive data, and a third partition of the collectively
sensitive data" (hereinafter the "disputed limitation"), as recited in claim 1.
App. Br. 6-9. In particular, Appellants argue there is no text from Casper's
Provisional Application (61/332,795) (herein after "Casper '795") that
corresponds to the Examiner's reliance on paragraph 76 of Casper to
disclose the disputed limitation. App. Br. 7 (citing Casper i-fi-174, 76-77;
Casper '795, 23:14--26, 24:5-8). Appellants argue "[t]herefore, paragraph
[0076] of the cited Casper reference cannot be used in rejecting Claim 1 as
3 We note Appellants raise additional contentions of error but we do not
reach them as our resolution of this contention is dispositive of the appealed
rejections under 35 U.S.C. § 102(e).
3
Appeal2014-004206
Application 12/816,061
the filing date of this cited Casper reference does not predate the filing date
of the present application." App. Br. 7.
In response, the Examiner finds Figure 2, page 17, page 22, lines 19-
21, and page 23, lines 17-23 of Casper '795 provide text that corresponds to
paragraph 76 of Casper. Ans. 5 (citing Casper '795, 17, 22:19-21, 23:17-
23; Figure 2). Further, the Examiner finds "page 20, lines 5-10 of the
Provisional Application disclose the step of dividing the disk space to secure
and unsecure spaces with multiple partitions." Ans. 5 (citing
Casper '795, 20:5-10).
We are unpersuaded that the Examiner's cited sections from
Casper '795 disclose "dividing the collectively sensitive data," from the
disputed dividing limitation. Although, page 17 and page 20, lines 5-10 of
Casper '795 disclose dividing disk space 205 into separate drives, and
identifying each separate drive as either unsecure or secure disk space, we
are unable to identify any disclosure of dividing data as claimed. Instead,
we agree with Appellants that Casper '795's "disk space can be partitioned
into multiple 'drives' without regard to the underlying data." Reply Br. 3
(citing Casper '795, 20:5-10) (emphasis in original).
Further, although, page 22, lines 19-21 of Casper '795 discloses a
client's issued request for an encrypted virtual disk, and page 23, lines 17-
23 of Casper '795 discloses encrypting a virtual disk using "encryption
technology" including an encryption password or key, we are unable to
identify any disclosure of dividing data as claimed. Instead, we agree with
Appellants that page 22, lines 19-21 and page 23, lines 17-23 of
Casper '795 does not disclose the "claimed 'dividing' aspects of Claim,
[sic] 1." Reply Br. 3 (citing Casper '795, 22:19-21, 23:17-23).
4
Appeal2014-004206
Application 12/816,061
Therefore, in the absence of clear evidence and/or a persuasive line of
technical reasoning explaining why Casper discloses the disputed limitation,
we do not sustain the rejection of independent claim 1 and, for the same
reasons we do not sustain the rejection of independent claims 9 or 17, or the
rejections of dependent claims 2-8, 10-16, and 18-20. Therefore, we are
constrained by this record to reverse the rejection of these claims.
NEW GROUND OF REJECTION
We enter new ground of rejection pursuant to our authority under 37
C.F.R. § 41.50(b). We reject claims 9-16 under 35 U.S.C. § 101 as being
directed toward non-statutory subject matter.
Claims 9-16 recite a computer readable storage medium. Appellants'
Specification describes that "a computer readable storage medium may be
any tangible medium that can contain or store a program for use by or in
connection with an instruction execution system, apparatus, or device."
Spec. i-f 18 (emphasis added).
Therefore, we find Appellants' invention encompasses non-
transitory propagating signals, which are unpatentable under 35 U.S.C. §
101. See In re Nuijten, 500 F.3d 1346, 1355 (Fed. Cir. 2007) (transitory
embodiments are not directed to statutory subject matter); Interim
Examination Instructions for Evaluating Subject Matter Eligibility Under 35
U.S.C. § 101, p. 2 (Aug. 24, 2009), available at
http://www.uspto.gov/web/offices/pac/dapp/opla/2009 08-25_interim_101_
instructions.pdf. See also David J. Kappos, Subject Matter Eligibility of
5
Appeal2014-004206
Application 12/816,061
Computer Readable Media, 1351 OFF. GAZ. PAT. OFFICE 212 (Feb. 23,
2010).4
DECISION5
We reverse the Examiner's decision to reject claims 1-20.
We newly reject claims 9-16 under 35 U.S.C. § 101.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that "[a] new ground of
rejection ... shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that the Appellants, 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 ....
4 A claim drawn to such a computer readable storage medium that covers
both transitory and non-transitory embodiments may be amended to narrow
the claim to cover only statutory embodiments to avoid a rejection under 35
U.S.C. § 101 by adding the limitation "non-transitory" to the claim.
5 In the event of further prosecution, we suggest the Examiner consider
whether claims 9-20 clearly recite the invention or are indefinite under 35
U.S.C. § 112, second paragraph. Specifically, we invite the Examiner to
consider whether "the collectively sensitive data" introduced in independent
claims 9 and 17 lacks clear antecedent basis.
6
Appeal2014-004206
Application 12/816,061
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
REVERSED
37 C.F.R. § 41.50(b)
7