Ex Parte Douceur et al

Board of Patent Appeals and Interferences

Jun 24, 2009

10855112 (B.P.A.I. Jun. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JOHN R. DOUCEUR, WILLIAM J. BOLOSKY
and MARVIN M. THEIMER
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Appeal 2008-005231
Application 10/855,112
Technology Center 2100
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Decided: June 24, 20091
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Before JAMES D. THOMAS, KENNETH W. HAIRSTON, and
HOWARD B. BLANKENSHIP, Administrative Patent Judges.

HAIRSTON, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-005231
Application 10/855,112

Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1 to 5. We have jurisdiction under 35 U.S.C. § 6(b).
We will sustain the obviousness-type double patenting rejection of
claim 5, and reverse the obviousness rejection of claims 1 to 4.2 Thus, we
affirm-in-part.
Appellants have invented a file system encryption method that
segments two or more identical files into a plurality of individual file
segments. For each file segment, the method computes a representation of
the file segment, and encrypts the file segment with its own representation to
define a cipher object that corresponds to the file segment. The method is
capable of ascertaining from individual cipher objects whether the
corresponding file segments are identical (Figs. 2 and 4; Spec. 4, 5, 15, 16).
Claim 1 is the only independent claim on appeal, and it reads as
follows:
1. A file system encryption method comprising:

segmenting two or more identical files into a plurality of individual
file segments;

for each file segment:
computing a representation of the file segment; and

encrypting the file segment with its own representation, said
encrypting defining a cipher object that corresponds to the file
segment; and

ascertaining from individual cipher objects whether the
corresponding file segments are identical.

2 The Examiner has withdrawn the 35 U.S.C. § 101 rejection of claims 1 to 8, and the 35
U.S.C. § 103(a) rejection of claims 5 to 8 (Ans. 3).
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Application 10/855,112

3

The evidence relied upon by the Examiner in rejecting the claims on
appeal is:
Whiting US 5,778,395 Jul. 7, 1998
Dickinson US 6,574,657 B1 Jun. 3, 2003
(filed May 3, 1999)
Douceur3 US 6,983,365 B1 Jan. 3, 2006

The Examiner rejected claim 5 under the judicially created doctrine of
double patenting over claim 1 of copending Application No. 09/565,821,
now U.S. Pat. No. 6,983,365 B1 to Douceur.
The Examiner rejected claims 1 to 4 under 35 U.S.C. § 103(a) based
upon the teachings of Dickinson and Whiting.
ISSUES
Double patenting
Appellants argue (App. Br. 6) that “the Office has not offered any
explanation as to how claim 5 of the present application merely constitutes
an obvious variation of the subject matter recited in claim 1 of the copending
application.” According to the Examiner (Ans. 5), “[t]he difference between
Claim 5 of the present application and Claim 1 of the copending application
is that Claim 5 of the present application discloses segmenting two or more
identical files into a plurality of individual file segments, and Claim 1 of
copending application discloses the encryptable objects.” The Examiner
concludes that it would have been obvious to one of ordinary skill in the art
“to have interpreted the file segments in Claim 5 of the present application

3 U.S. Pat. No. 6,983,365 B1 (App. Ser. No. 09/565,821) to Douceur is the
parent application to the subject divisional application.
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Application 10/855,112

4
as objects that particularly can be encryptable objects for using encryption as
a safeguard,” and that the skilled artisan would have understood that “file
segments are ‘objects’ that would have benefited form [sic, from] encryption
because encryption of file segments provides protection from unauthorized
access to the file segments.” (Ans. 5). Thus, the issue before us is: Have
Appellants shown that the Examiner erred by finding that the file segments
in claim 5 of the present application are an obvious variation of the
encryptable objects set forth in claim 1 of the copending application which
issued as U.S. Pat. No. 6,983,365 B1 to Douceur?
Obviousness
Appellants argue inter alia (App. Br. 19 and 20) that the applied
references fail to teach the step of segmenting two or more identical files
into a plurality of individual file segments. Thus, the issue before us is:
Have Appellants shown that the Examiner erred by finding that the applied
references teach the claimed step of segmenting two or more identical files
into a plurality of individual file segments?

FINDINGS OF FACT (FF)
Double patenting
1. Douceur teaches that a typical example of an encryptable object is a
file in a file system (col. 6, ll. 14 to 20; col. 7, ll. 55 to 58; col. 15, ll. 11 to
15; col. 15, ll. 35 to 43; Abstract).
Obviousness
2. Dickinson describes a method and apparatus for generating an
update file that is used to synchronize a local copy of a file on a user client’s
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5
computer with a current changed version of the file on a network server
drive (col. 1, ll. 18 to 21; col. 3, ll. 30 to 43; Abstract).
3. Figure 3 of Dickinson shows an earlier version of a file that is
broken into six segments A1 to A6, and the corresponding signatures 311 to
316 (i.e., representations) derived via a MD5 cryptographic hash function
(col. 8, ll. 1 to 22), whereas Figure 6 of Dickinson shows a changed version
of the file that is broken into seven segments B1 to B7, and the
corresponding signatures 611 to 617 (col. 9, ll. 32 to 40). Figure 8 of
Dickinson shows the currently changed version of the file and the segments
B2, B4, and B5 that are communicated from the server to the user’s
computer as an update file 801 (col. 9, l. 58 to col. 10, l. 16). Figure 9 of
Dickinson illustrates the creation of a current version 903 of the file at the
user’s computer from a copy of the earlier version 901 of the file using the
update file 902 (col. 10, ll. 17 to 37).
4. Whiting describes the encryption of a file with its own
representation (col. 5, ll. 35 to 40; Abstract).

PRINCIPLES OF LAW
Double patenting
Although the disclosure in the applied patent may not be used as prior
art, the disclosure in the patent may be used to determine the meaning of
terms in a claim, and to determine whether or not a claim in the application
merely defines an obvious variation of an invention disclosed and claimed in
the patent. In re Vogel, 422 F.2d 438, 441-42 (C.C.P.A. 1970).

Appeal 2008-005231
Application 10/855,112

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Obviousness
The Examiner bears the initial burden of presenting a prima facie case
of obviousness, and the Appellants have the burden of presenting a rebuttal
to the prima facie case. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
The Examiner’s articulated reasoning for combining the teachings of
the references must support a legal conclusion of obviousness. KSR Int’l
Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006)).

ANALYSIS
Double patenting
As indicated supra, it was noted by the Examiner (Ans. 5) that the
only difference between claim 5 of the subject application and claim 1 in the
patent to Douceur is that claim 5 segments two or more identical files into a
plurality of individual file segments, and claim 1 in the patent discloses two
or more encryptable objects. Inasmuch as the disclosure in the patent to
Douceur explains that a file in a file system is a typical example of an
encryptable object (FF 1), we find that claim 5 in the subject application
merely defines an obvious variation of an invention disclosed and claimed in
claim 1 of the applied patent to Douceur. Vogel, 422 F.2d at 441-42.
Accordingly, the obviousness-type double patenting rejection of claim 5 is
sustained.
Obviousness
The file encryption method of claim 1 is performed on two or more
identical files. As indicated supra, Dickinson’s method involves the
synchronization of an earlier version of a file on a user client’s computer
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with a currently changed version of the file on the server computer via the
use of an update file (FF 2 and 3). The synchronization step results in the
creation of a current version of the file at the user’s computer from the
earlier version of the file (FF 3). Thus, we agree with Appellants’ argument
(App. Br. 19 and 20) that Dickinson fails to teach the claimed step of
segmenting two or more identical files. The file encryption teachings of
Whiting are likewise silent as to the segmentation of two or more identical
files. In summary, the obviousness rejection of claims 1 to 4 is reversed
because Appellants have successfully rebutted the Examiner’s articulated
reasoning for combining the teachings of the applied references. See
Oetiker, 977 F.2d at 1445; KSR Int’l, 550 U.S. at 418.

CONCLUSIONS OF LAW
Double patenting
Appellants have not demonstrated that the Examiner erred by finding
that the file segments in claim 5 of the subject application are an obvious
variation of the encryptable objects set forth in claim 1 of Douceur.
Obviousness
Appellants have demonstrated that the Examiner erred by finding that
the applied references teach the claimed step of segmenting two or more
identical files into a plurality of individual file segments.

Appeal 2008-005231
Application 10/855,112

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ORDER
The decision of the Examiner rejecting claim 5 under the judicially-
created doctrine of obviousness-type double patenting is affirmed. The
decision of the Examiner rejecting claims 1 to 4 under 35 U.S.C. § 103(a) is
reversed.
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-IN-PART

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