Ex Parte Buckingham et al

Board of Patent Appeals and Interferences

Jan 23, 2012

11493908 (B.P.A.I. Jan. 23, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JONATHAN PETER BUCKINGHAM, GREGORY KEITH
TREZISE, and ANDREW HANA
____________________

Appeal 2010-004012
Application 11/493,908
Technology Center 2100
____________________

Before HOWARD B. BLANKENSHIP, ST. JOHN COURTENAY III,
and THU A. DANG, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

A. INVENTION
Appellants’ invention relates to a data transfer device for exchanging
data between a host device and a removable data storage item, wherein data
are encrypted or decrypted by the data transfer device during data exchange
(Spec. 1, ll. 4-6).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
1. A data transfer device for storing data to a removable data
storage item, the data transfer device being operable to:

receive data to be stored as one or more records;

encrypt the records to create pseudo-records;

format the pseudo-records; and

store the formatted pseudo-records to the removable data
storage item.

C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Southwell US 6,378,007 B1 Apr. 23, 2002
Kuehnel US 2003/0204717 A1 Oct. 30, 20003
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Tamai US 2004/0215955 A1 Oct. 28, 2004

Claims 1-9 and 12-20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Southwell in view of Kuehnel.
Claims 10 and 11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Southwell and Kuehnel in further view of Tamai.

II. ISSUE
The dispositive issue before us is whether the Examiner has erred in
finding that the combination of Southwell and Kuehnel would have taught or
suggested a “data transfer device being operable to: receive data to be stored
as one or more records; encrypt the records to create pseudo-records; format
the pseudo-records; and store the formatted pseudo-records to the removable
data storage item” (claim 1, emphases added). In particular, the issue turns
on whether the combined teachings would have taught or suggested a data
transfer device that is capable of receiving data to be stored, encrypting the
stored data, formatting the encrypted data, and then storing the formatted
data to a removable data storage item.

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Southwell
1. Southwell discloses a tape drive 800 which includes a formatter
820 that encodes record data as fixed length codewords (Abstract; Fig. 8).
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2. Southwell discloses that it is known for a storage apparatus
such as a tape drive to receive host computer data, arrange the data Records
into fixed-sized groups, and once the groups data are formed, the tape drive
stores the groups to tape, typically, after applying some form of error
detection/correction coding (col. 1, ll. 32-43).
3. Typically, the host computer data Records are encoded or
compressed to form a continuous encoded data stream in each group (col. 1,
ll. 45-47).
Kuehnel
4. Kuehnel discloses a computing device 100 that may include
additional storage (removable and non-removable) including, but not limited
to, magnetic and optical disks and tape (p. 2, ¶ [0022]; Fig. 2).
5. When the sender/computing device 100 gets data that it wishes
to send to the receiver 102, the sender 100 then encrypts the data along with
the data integrity check information using the agreed-upon encoding scheme
(p. 3, ¶ [0023]) and then encodes the pseudo data using an encoding scheme
different from the scheme agreed upon with the receiver 102 (p. 3, ¶ [0024]).
6. In particular, the sender 100 includes a real-data encoder 402
that receives a real-data stream 400 from one or more applications and
divides the real-data stream 400 into packets (p. 3, ¶ [0026]).

IV. ANALYSIS
Claim 1-9 and 12-20
As to independent claim 1, Appellants contend that “Keuhnel fails to
teach or suggest a data transfer device that receives records and then
encrypts the records to create pseudo-records” and “[n]owhere does Kuehnel
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teach or even suggest a data transfer device that stores data to a removable
data storage item” (App. Br. 14). In the Reply Brief, Appellants admit that
“Southwell discusses a formatter that encodes the data records;” however,
Appellants contend that “[f]ormatters are not encrypters” (Reply Br. 2,
emphasis omitted).
However, the Examiner explains that “Kuehnel is a secondary
reference that … teaches ‘encrypt[ing] the records to create ‘pseudo-
records’. . . . [a]lthough it was not necessary to use a secondary reference
[since] Southwell discloses each limitation of claim 1” (Ans. 16). The
Examiner explains that “[e]ncoding data is not different from encrypting
data because both processes involve transforming information” whereas
“[e]ncrypting makes data unreadable” (Ans. 17) and “[e]ncoded data could
be unreadable too.” (Ans. 18).
To decide whether the combined teachings of Southwell and Kuehnel
would have taught or suggested a “data transfer device being operable to[]
receive data to be stored as one or more records; encrypt the records to
create pseudo-records; format the pseudo-records; and store the formatted
pseudo-records to the removable data storage item” as recited in claim 1, we
begin our analysis by giving the claim its broadest reasonable interpretation
consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054
(Fed. Cir. 1997). However, we will not read limitations from the
Specification into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993).
Claim 1 does not define as to what the term “pseudo-records” is to be,
include or represent other than that the pseudo-records are created from
encrypting the received data. Accordingly, we give “pseudo-records” its
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broadest but reasonable interpretation as records resulting from encrypting
the received data.
Furthermore, claim 1 does not define as to what a “data transfer
device” is to be, include or represent, and merely requires that the data
transfer device is “operable to” perform the recited steps. We conclude that
such “operable to” language merely represents a statement of intended use of
the transfer device which does not limit the claim. Particularly, an intended
use will not limit the scope of the claim because it merely defines a context
in which the invention operates. Boehringer Ingelheim Vetmedica, Inc. v.
Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Thus, we
give “data transfer device” its broadest reasonable interpretation as any
device for data transfer that is capable of receiving data to be stored,
encrypting the stored data, formatting the encrypted data, and then storing
the formatted data to a removable data storage item, as consistent with the
Specification and as specifically defined in claim 1.
Southwell discloses a tape drive that includes a formatter that encodes
record data (FF 1). According to Southwell, it is known for a storage
apparatus, such as a tape drive, to receive data, store data as records, and
store the data records in tape after encoding and formatting (FF 2). That is,
the data records are encoded or compressed (FF 3). As Appellants admit,
“Southwell discusses a formatter that encodes the data records” (Reply Br.
2).
Alhough Appellants contend that “[f]ormatters are not encrypters”
(Reply Br. 2), we disagree. As the Appellants admit, Southwell’s formatter
“encodes the data records” (id.). We find no error with the Examiner’s
finding that “[e]ncoding data is not different from encrypting data because
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both processes involve transforming information” (Ans. 17). In view of our
claim construction above, we find that Southwell’s tape drive for data
transfer that includes a formatter to comprise “a data transfer device” that is
capable of receiving data to be stored, encrypting the stored data, formatting
the encrypted data, and then storing the formatted data to a removable data
storage item, wherein records result from encrypting of the received data.
Furthermore, we agree with the Examiner’s finding that Kuehnel also
teaches encrypting records “to create ‘pseudo-records’” (Ans. 16). That is,
Kuehnel creates pseudo records by encoding/encrypting data records (FF 5).
Thus, we conclude that Southwell in view of Kuehnel would have at least
suggested a “data transfer device being operable to[] receive data to be
stored as one or more records; encrypt the records to create pseudo-records;
format the pseudo-records; and store the formatted pseudo-records to the
removable data storage item” as required by claim 1. The Supreme Court
has stated that “[t]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
We note that though Appellants contend that “Keuhnel fails to teach
or suggest a data transfer device that receives records and then encrypts the
records to create pseudo-records” (App. Br. 14), Keuhnel discloses a
sender/computing device that gets data that it wishes to send to the receiver
and then encrypts the data (FF 5). In particular, the sender of Keuhnel
includes a real-data encoder that receives a real-data stream from one or
more applications for encoding (FF 6). Thus, contrary to Appellants’
contention, we find Keuhnel’s sender/computing device to comprise a “data
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transfer device” that “receives” records and then “encrypts” the records as
required by claim 1.
Similarly, we also note that though Appellants contend that
“[n]owhere does Kuehnel teach or even suggest a data transfer device that
stores data to a removable data storage item” (App. Br. 14), Kuehnel
discloses that the computing device may include additional storage
(removable and non-removable) including, but not limited to, magnetic and
optical disks and tape (FF 4). As discussed above, we find Keuhnel’s
computing device to comprise a “data transfer device” wherein Keuhnel’s
computing device stores data to a removable data storage item such as
magnetic and optical disks and tape.
Accordingly, we find that Appellants have not shown that the
Examiner erred in rejecting claim 1 over Southwell in view of Keuhnel.
Appellants do not provide arguments for independent claims 17 and 19
separate from claim 1. Therefore, independent claims 17 and 19, and claims
2-8, 12-15, 18 and 20 depending respectfully from claims 1, 17 and 19, also
fall with claim 1 over Southwell in view of Keuhnel.
As for dependent claim 9, Appellants repeat that “encoding data is
very different than encrypting data” (App. Br. 15). However, the Examiner
contends that “[e]ncoding data is not different from encrypting data because
both processes involve transforming information.” (Ans. 17).
As noted above with respect to claim 1 from which claim 9 depends,
we find no error in the Examiner’s reasoning that encoding data is at least
suggestive of encrypting data, because both encoding and encrypting involve
some form of data transformation.
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As discussed above, we find both Southwell and Keuhnel disclose
“encrypting data” and conclude that Southwell in view of Keuhnel would
have at least suggested encrypting data. As pointed out by the Examiner
(Ans. 7), Southwell teaches compressed data that can be encoded. (Col. 2, l.
35). Therefore, we are in accord with the Examiner’s legal conclusion that
the combined teachings of the cited references would have rendered obvious
the claimed function of compressing records prior to encryption, within the
meaning of dependent claim 9. We, therefore, find no error in the
Examiner’s rejection of claim 9 over Southwell in view of Keuhnel.
Similarly, as to claim 16, though Appellants repeat that “[t]here is no
teaching or suggestion whatsoever that the tape drive in Southwell would
perform all the steps” (App. Br. 16, emphasis added), as discussed above
with respect to claim 1 from which claim 16 depends, we find no error in the
Examiner’s conclusion that Southwell in view of Keuhnel would have
suggested such recited “data transfer device” or “tape drive” that performs
all the claimed steps. In particular, as discussed above, we find that
Southwell’s tape drive including a formatter is capable of performing the
recited steps (FF 1-3). We therefore also find no error in the Examiner’s
rejection of claim 16 over Southwell in view of Keuhnel.

Claims 10 and 11
As for claims 10 and 11, Appellants merely contend that “Tamai fails
to cure these deficiencies [of Southwell and Keuhnel]” (App. Br. 16).
However, as noted above with respect to claims 1-9 and 12-20, we find no
deficiencies with respect to Southwell and Keuhnel. We, therefore, also
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affirm the Examiner’s rejection of claims 10 and 11 over Southwell and
Keuhnel further in view of Tamai.

V. CONCLUSION AND DECISION
The Examiner’s rejection of claims 1-20 under 35 U.S.C. § 103(a) is
affirmed.
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).

AFFIRMED

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