Ex Parte Abbott

Board of Patent Appeals and Interferences

Sep 28, 2010

10046058 (B.P.A.I. Sep. 28, 2010)

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.
10/046,058 01/10/2002 Paul Harry Abbott GB920010007US1 (224) 9940
46320 7590 09/28/2010
CAREY, RODRIGUEZ, GREENBERG & PAUL, LLP
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON, FL 33487
EXAMINER
BROWN, CHRISTOPHER J
ART UNIT PAPER NUMBER
2439
MAIL DATE DELIVERY MODE
09/28/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PAUL HARRY ABBOTT
_____________

Appeal 2009-007435
Application 10/046,058
Technology Center 2400
____________

Before CARLA M. KRIVAK, THOMAS S. HAHN,
and ELENI MANTIS MERCADER, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-007435
Application 10/046,058

2
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s non-final rejection of claims 1-34. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.

INVENTION
Appellant’s claimed invention is directed to fragmenting a key or
certificate (Fig. 1: 150) into non-uniform fragments (Fig. 1: 152, 154) based
on a pre-determined algorithm (Fig. 2: 200). The fragments are intermixed
and stored to a disk (Fig. 2: 280). The location for storing the fragments is
also determined by the algorithm. See generally Spec. 5; Figs. 1, 2.
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A method for storage of security keys and certificates in a data
processing system comprising:
providing at least one entity (150) in the form of a key or certificate
for storage in a storage means;
fragmenting the entity into fragments (152, 154) of non-uniform
length according to a predetermined algorithm (200);
storing the fragments (152, 154) in the storage means (280);
wherein fragments (152, 154) of the at least one entity (150) are
intermixed within the storage means.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Appeal 2009-007435
Application 10/046,058

3
Bahls US 5,706,513 Jan. 6, 1998
Kausik US 2001/0008012 A1 Jul. 12, 2001
Henson US 7,003,108 B2 Feb. 21, 2006
Hash Collision, http://en.wikipedia.org/wiki/Hash_collision (last
visited May 12, 2006).
The following rejections are before us for review:
1. The Examiner rejected claims 1, 2, 4-9, 11-14, 16-24, 26-31, 33,
and 34 under 35 U.S.C. § 103(a) as unpatentable over Kausik in view of
Bahls.
2. The Examiner rejected claims 10 and 32 under 35 U.S.C. § 103(a)
as unpatentable over Kausik in view of Bahls.
3. The Examiner rejected claims 3, 15, and 25 under 35 U.S.C.
§ 103(a) as unpatentable over Kausik in view of Bahls and further in view of
Henson.

ISSUE
The pivotal issues are:
1. Whether the combination of Kausik in view of Bahls teaches
fragmenting a key or a certificate as recited in claim 1;
2. whether Bahls teaches the algorithm that determines the location
for storing the fragments is also the same algorithm that determines how the
entity is to be fragmented as recited in claim 5; and
3. whether the Examiner provided adequate factual support in
response to Appellant’s traversal of the Examiner’s Official Notice.
Appeal 2009-007435
Application 10/046,058

4
PRINCIPLES OF LAW
The Examiner’s articulated reasoning in the rejection must possess a
rational underpinning to support the legal conclusion of obviousness. In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). The Supreme Court stated that
“‘[r]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(quoting Kahn, 441 F.3d at 988).

ANALYSIS
Analysis with respect to the rejections of claims 1-4, 6-9, 11-15, 17-
26, 28-31, 33, and 34.
Appellant argues that the Examiner failed to establish any reasonable
basis for explaining why one having ordinary skill in the art would look to
fragment entities in the form of a key (App. Br. 5). Appellant notes that
Bahls’s “private key A” which is specifically generated for Obj. 1 is stored
with each of the fragments of Obj. 1 (i.e., Seg. 1, Seg. 2, and Seg. 3) (App.
Br. 6).
We agree with Appellant. At best, Bahls teaches that a private key is
stored with each of the segments (i.e., with the 2nd through the Nth segments
of the object on the staging queue 108 and with the 1st segment of the object
on the ready queue 106) of a data object (col. 3, ll. 41-65). There is no
teaching in Bahls of segmenting or fragmenting keys. On the contrary, all
Appeal 2009-007435
Application 10/046,058

5
the keys, whether private or public generated in Bahls, are stored with their
corresponding appropriate segments of Object data (col. 3, ll. 41-65). While
we agree with the Examiner (Ans. 8) that Bahls is concerned with the finite
amount of memory and segments the data objects for storage at different
storage mediums, Bahls’s teaching value does not extend to also segmenting
the associated keys of those segments.
Thus, the Examiner’s articulated reasoning (Ans. 9) in the rejection
for modifying Kausik in view of Bahls (i.e., segmenting the keys or
certificates due to the limited storage) does not provide a rational
underpinning to support the legal conclusion of obviousness. See Kahn, 441
F.3d at 988.
For the above reasons, we will reverse the Examiner’s rejection of
claim 1 and for similar reasons the rejections of claims 2, 4, 6-9, 11-14, 17-
24, 26, 28-31, 33, and 34. We will also reverse the Examiner’s rejection of
claims 3, 15, and 25 as Henson does not cure the above cited deficiencies.
Analysis with respect to the rejection of claims 5, 16, and 27.
Appellant argues that Bahls does not teach the algorithm recited in
claims 5, 16, and 27 that determines the location for storing the fragments is
also the same algorithm that determines how the entity is to be fragmented
(App. Br. 6-8). We are persuaded by Appellant’s argument.
The Examiner asserts it is inherent that Bahls’s algorithm, which
determines the manner of splitting the data object based upon the size of the
storage location, also determines the storage location. We are not persuaded
by the Examiner’s inherency argument because it is not necessary that a
Appeal 2009-007435
Application 10/046,058

6
single algorithm in Bahls determines the splitting based on size and location.
It could be the case that two separate algorithms are used, one determining
the splitting based on size and a second one determining where to store the
fragments based on their size.
Thus, we will also reverse the Examiner’s rejection of claims 5, 16,
and 27.
Analysis with respect to the rejection of claims 10 and 32.
Appellant traverses the Examiner’s taking Official Notice that when a
collision occurs the object is stored immediately following the occupied spot
as recited in claims 10 and 32 (App. Br. 8-9). Appellant acknowledges the
Examiner’s response (App. Br. 9) with the article titled “Hash Collision”
reciting that the “most popular ways of dealing with this are . . . searching
other array indices nearby for an empty space.” However, Appellant further
asserts the Examiner did not provide any factual support for the rationale to
combine Kausik and Bahls (App. Br. 9).
We find that the Examiner did not adequately respond to Appellant’s
traversal because the Hash Collision article, at best, teaches that when a
collision occurs the object is stored nearby, and not immediately following
the occupied spot as claimed. The Examiner did not provide any rationale as
to why one skilled in the art would modify the “nearby” teaching to combine
it with Kausik and Bahls to arrive at the claimed immediately following the
occupied spot.
Thus, we will also reverse the Examiner’s rejection of claims 10 and
32.
Appeal 2009-007435
Application 10/046,058

7
CONCLUSIONS
1. The combination of Kausik in view of Bahls does not teach
fragmenting a key or a certificate;
2. Bahls does not teach the algorithm that determines the location for
storing the fragments is also the same algorithm that determines how the
entity is to be fragmented; and
3. the Examiner did not provide adequate factual support in response
to Appellant’s traversal of the Examiner’s relying on Official Notice.

ORDER
The decision of the Examiner to reject claims 1-34 is reversed.

REVERSED

babc

CAREY, RODRIGUEZ, GREENBERG & PAUL, LLP
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON, FL 33487