Lenovo Enterprise solutions (singapore) PTE. LTD.

Patent Trials and Appeals Board

Mar 29, 2021

2019004438 (P.T.A.B. Mar. 29, 2021)

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.
14/723,418 05/27/2015 Gary D. Cudak XRPS920150008-US-NP 8339
127893 7590 03/29/2021
Streets Lawfirm, PC - Lenovo (Singapore) Pte. Ltd.
20319 Corbin Creek Drive
Cypress, TX 77433
EXAMINER
GIDDINS, NELSON S
ART UNIT PAPER NUMBER
2437
NOTIFICATION DATE DELIVERY MODE
03/29/2021 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):
jstreets@streetsiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte GARY D. CUDAK, CHRISTOPHER J. HARDEE,
and ADAM ROBERTS
____________________

Appeal 2019-004438
Application 14/723,4181
Technology Center 2400
____________________

Before MARC S. HOFF, ERIC S. FRAHM, and SCOTT E. BAIN,
Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a Final Rejection of
claims 1–3, 5–7, and 9–11.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellant’s invention is a method and system for trans-locality based
fixed storage security. The method includes storing, in memory of a fixed
disk, a key received from a key source over a computer communications

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant states that the real party in interest is Lenovo
Enterprise Solutions (Singapore) PTE. LTD. Appeal Br. 2.
2 Claims 4, 8, and 12 have been cancelled.
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network. When a request to access encrypted data is received from a
physically coupled computer, the key is retrieved from the key source and its
validity is determined. The method then comprises the steps of decrypting
the encrypted data and returning the decrypted data to the computer if the
retrieved key is valid. Abstract.
Claim 1 is reproduced below:
1. A method for trans-locality based fixed storage security,
the method comprising:
storing in memory of a fixed disk a key received from a
key source over a computer communications network;
subsequent to the receiving of the key from over the
computer communications network, receiving in firmware of
the fixed disk from a physically coupled computer by way of a
drive interface cable multiple different requests to access
encrypted data stored in the fixed disk;
responding to each of a multiplicity of requests to access
the encrypted data stored in the fixed disk by attempting to
retrieve the key received from the key source and if able to
retrieve the key, determining a validity of the retrieved key;
for each of the requests, on condition that the key is both
able to be retrieved and valid, decrypting the encrypted data
with the key and, if the decrypted data is still encrypted by a
locally generated key of the fixed disk, additionally decrypting
the decrypted data with the locally generated data and then
returning the decrypted data to the computer, but otherwise
denying the request; and,
periodically receiving a new key from over the computer
communications network, replacing the key stored in the
memory with the new key, decrypting the encrypted data with
the key stored in the memory and re-encrypting the decrypted
data with the new key.

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The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Thibadeau US 2005/0262361 A1 Nov. 24, 2005
Goodman US 2008/0063210 A1 Mar. 13, 2008
Aramaki US 2013/0191636 A1 July 25, 2013
Hayes US 2016/0004877 A1 Jan. 7, 2016

Claims 1–3, 5–7, and 9–11 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Thibadeau, Aramaki, Goodman, and Hayes. Final
Act. 6–7.3
Throughout this decision, we make reference to the Appeal Brief
(“Appeal Br.,” filed Jan. 15, 2019), the Reply Brief (“Reply Br.,” filed
May 15, 2019), the Final Office Action (“Final Act.,” mailed July 10, 2018),
and the Examiner’s Answer (“Ans.,” mailed Mar. 15, 2019) for their
respective details.
ISSUE
Does the combination of Thibadeau, Aramaki, Goodman, and Hayes
teach or suggest, if the decrypted data is still encrypted by a locally
generated key of the fixed disk, decrypting the decrypted data with the
locally generated data and then returning the decrypted data to the
computer?
ANALYSIS
Representative claim 1 recites, in pertinent part, “if the decrypted data
is still encrypted by a locally generated key of the fixed disk, additionally

3 The Examiner has withdrawn the previous rejection of claims 1–3, 5–7,
and 9–11 under 35 U.S.C. § 112(b). Ans. 3.
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decrypting the decrypted data with the locally generated data and then
returning the decrypted data to the computer, but otherwise denying the
request.” The other independent claims (5 and 9) recite the same limitation.
The Examiner finds that Thibadeau in combination with Aramaki and
Goodman does not explicitly teach this limitation, and cites Hayes for its
teachings. Final Act. 10.
Appellant argues that (a) the Examiner refers to the grid key of Hayes
as being equivalent to the claimed locally generated key of the fixed disk,
and (b) the grid key of Hayes is not locally generated in the fixed disk.
Appeal Br. 9. Appellant asserts that element 784 of Hayes generates the grid
key, and that element 784 is separate and remote from storage cluster 160
where the encrypted data is stored. Appeal Br. 9–10.
The Examiner finds that Hayes teaches that “in a storage grid 671
having three systems, e.g. three storage clusters, at least two of the systems
should be available in order to regenerate the storage key 902 needed to
encrypt or decrypt data. One of the systems can be the system on which the
data is stored (either the local system or the replica system).” Ans. 5
(emphasis omitted); Hayes ¶ 65. The Examiner further finds that “[a]n
external secret 904 is combined with a storage key 902, to generate a grid
key 906 that is applied to encrypt data prior to encryption with the storage
key 902.” Ans. 5 (emphasis omitted); Hayes ¶ 66.
Appellant replies to the Examiner’s Answer by pointing out Hayes’s
teaching that external secret 904 may be provided by a smart card or a key
server. Reply Br. 5–6 (citing Hayes ¶ 66). Because “the smart card is not the
storage cluster,” reasons Appellant, “it cannot be said that the grid key is
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produced locally in the storage cluster as asserted by the Examiner.” Reply
Br. 6 (emphasis omitted).
We disagree with Appellant’s arguments. Appellant does not dispute
Hayes’s teaching that storage key 902 is combined with external secret 904
to generate grid key 906. The claim language requires “a locally generated
key of the fixed disk” (emphasis added), which the Examiner equates to the
grid key of Hayes. Appellant has not identified disclosure in the
Specification to the effect that a “locally generated” key could not be a key
resulting from the combination of a storage key and an “external” secret.
Appellant has not cited any definition of “locally generated” that would
exclude a key produced by the combination of a storage key present on local
storage with “external” data.
The Examiner cites to a teaching in Hayes that its method “can be
performed using one or more processors, such as a processor of one or more
of the above embodiments,” and that “[a] grid key is generated from the
storage key and an external secret, in an action 1104.” Hayes ¶ 72; Ans. 7.
We agree with the Examiner that one of the disclosed “local” processors
may execute the steps of generating the grid key from the storage key where
the data is locally stored at the Non-Volatile Solid State Memory. Ans. 7.
Because we agree with the Examiner that the combination of
Thibadeau, Aramaki, Goodman, and Hayes teaches all the limitations of
independent claims 1, 5, and 9, we sustain the Examiner’s § 103 rejection of
claims 1–3, 5–7, and 9–11.
CONCLUSION
The combination of Thibadeau, Aramaki, Goodman, and Hayes
teaches, if the decrypted data is still encrypted by a locally generated key of
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the fixed disk, decrypting the decrypted data with the locally generated data
and then returning the decrypted data to the computer.
DECISION SUMMARY
The Examiner’s decision to reject claims 1–3, 5–7, and 9–11 is
affirmed.
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 5–7,
9–11
103 Thibadeau, Aramaki,
Goodman, Hayes
1–3, 5–7,
9–11

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