Ex Parte Eisen et al

Patent Trial and Appeal Board

Mar 28, 2018

14004979 (P.T.A.B. Mar. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/004,979 09/13/2013
128144 7590
Rimon, P.C.
One Embarcadero Center
Suite 400
San Francisco, CA 94111
03/30/2018
FIRST NAMED INVENTOR
Philip Alan Eisen
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.
14-30030-US 5743
EXAMINER
AMBA YE, SAMUEL
ART UNIT PAPER NUMBER
2433
NOTIFICATION DATE DELIVERY MODE
03/30/2018 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):
uspto@rimonlaw.com
eofficeaction@appcoll.com
docketing.rimonlaw@clarivate.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PHILIP ALAN EISEN,
MICHAEL JAMES WIENER,
GRANT STEWART GOODES, and JAMES MUIR
Appeal2017-008759
Application 14/004,979
Technology Center 2400
Before CARLA M. KRIVAK, ERIC B. CHEN and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
KRIVAK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-10, 13-18, and 38---69. Claims 11, 12, and 19-37 have been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
Appeal2017-008759
Application 14/004,979
STATEMENT OF THE CASE
Appellants' invention is directed to "a change-tolerant method of
generating an identifier for a collection of assets in a computing environment
using a secret sharing scheme, such as can be used for node locking and
fingerprinting of computer systems" (Spec. i-f 1 ).
Independent claim 1, reproduced below, is exemplary of the subject
matter on appeal.
1. A change-tolerant method of generating an identifier
for a plurality of assets associated with a computing
environment, each of the assets having an asset parameter
associated therewith, the method comprising:
retrieving asset parameters for the plurality of assets;
generating a share corresponding to each asset parameter
to produce a plurality of shares;
applying a secret sharing algorithm to a plurality of
subsets of shares to generate a plurality of candidate identifiers
corresponding to the plurality of subsets of shares; and
selecting a candidate identifier from the plurality of
candidate identifiers as a final identifier for the plurality of
assets based at least in part on a frequency of occurrence of that
candidate identifier, wherein the final identifier is configured to
provide verification of the plurality of assets without requiring
individual verification of any shares in the plurality of shares.
REFERENCES and REJECTIONS
The Examiner rejected claims 1, 4--10, 13-15, 17, 38, 41-50, 52, 54,
55, 57----66, and 68 under 35 U.S.C. § 103(a) based upon the teachings of
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Application 14/004,979
Hughes (US 2008/0098482 Al; Apr. 24, 2008) and Obana (US
2010/0031128 Al; Feb. 4, 2010). 1
The Examiner rejected claims 2, 3, 39, 40, and 56 under 35 U.S.C.
§ 103(a) based upon the teachings of Hughes, Obana, and Alabraba (US
2004/0177168 Al; Sept. 9, 2004)).
The Examiner rejected claims 16, 18, 51, 53, 67, and 69 under 35
U.S.C. § 103(a) based upon the teachings of Hughes, Obana, and Michiels
(US 2009/0313480 Al; Dec. 17, 2009).
ANALYSIS
The Examiner finds Hughes teaches or suggests all the claim
limitations except it "does not expressly teach a number of subsets of the
plurality of shares to derive a plurality of candidates," but relies on Obana
for this limitation (Final Act. 3--4). The Examiner also finds "Hughes does
not expressly teach based at least in part on a frequency of occurrence of that
candidate identifier," and again relies on Obana (Final Act. 4--5). Thus, the
Examiner concludes, it would be obvious to modify Hughes system with
Obana's teachings of a secret sharing scheme that splits secret information
into a plurality of secret information shares and recovers "the secret
information only if the predetermined secret information shares are put
together (see Obana par. 0002)" (Final Act. 5). We do not agree.
We agree with Appellants contentions in the Appeal Brief (Br. 5-24).
Particularly, we agree with Appellants the Examiner erred in finding the
1 This section includes the correct grouping of the claims. Appellants'
grouping of the claims in the Appeal Brief (Br. 2) and the Examiner's
grouping of the claims in the Final Action are incorrect.
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Appeal2017-008759
Application 14/004,979
combination of Hughes and Obana discloses "applying 'a secret sharing
algorithm to a plurality of subsets of shares to generate a plurality of
candidate identifiers corresponding to the plurality of subsets of shares"'
(italics deleted, underline retained) (Br. 5). That is, Appellants contend,
their claims use the secret sharing algorithm applied to a plurality of subsets
resulting in generating "a plurality of IDs corresponding to the plurality of
subsets" (id.). Appellants then assert Hughes describes "setting thresholds
for selecting a secret S based on randomly generated numbers" rather than
teaching "applying a secret sharing algorithm to a plurality of subsets of
shares to generate a plurality of candidate identifiers corresponding to the
plurality ofsets ofshares" as claimed (Br. 7). Further, Appellants contend,
Hughes' i-f 97 recites "careful selection of S [bound secret] in step 306
ensures that only N matching elements of the set of congruencies are
required to produce the correct value for S" (Br. 9). Therefore, as paragraph
98 of Hughes states "[J]t is impossible to determine which, if any, possible
class primes and remainders match the desired hardware configuration
ahead of time" (Br. 9). Thus, Hughes teaches, rather than applying a secret
sharing algorithm, "each possible class prime and each possible class
remainder is tested by solving for a possible secret, and then that secret is
tested against a known cipher text" (id.). Hughes also does not teach the
''final identifier is configured to provide verification of the plurality of assets
without requiring individual verification of any shares in the plurality of
shares" as claimed (id.).
We also agree with Appellants that Hughes' derivation of values is
not commensurate with the claim language "applying a secret sharing
algorithm to a plurality of subsets of shares to generate a plurality of
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Appeal2017-008759
Application 14/004,979
candidate identifiers corresponding to the plurality ofsubsets ofshare" (Br.
10; Final Act. 3--4). The Examiner relies on Obana for teaching "a number
of subsets of the plurality of shares to derive a plurality of candidate
identifiers" (Final Act. 4) and finds Obana's generated cheater identifying
information Ai corresponds to the n secret information shares Vi (Final Act.
4--5). However, Appellants contend, in Obana there is a one-to-n
relationship where one "secret information" corresponds to n secret
information shares and the cheater identifying information does not teach or
suggest "a secret sharing algorithm is applied to the n secret information
shares" (Br. 12-13). That is, the generated cheater identifying information
Ai is used to identify false shares Vi when trying to recover secret
information using k Vi and when one or more of the k Vi may be a false Vi,
preventing recovery of S (Br. 13-14). Thus, the cheater identifying
information Ai does not correspond to a plurality of subsets of shares (Br.
14).
The Examiner responds by addressing Appellants' arguments on
pages 5 and 16 of their Brief with substantially the same reasons as set forth
on pages 3-5 of the Final Action (Ans. 4--6). The Examiner does not
address Appellants' reasonable arguments set forth above in the Answer.
Therefore, as Appellants have made reasonable arguments which the
Examiner has not addressed, we do not sustain the Examiner's rejection of
claims 1, 38, and 54, which include substantially the same limitations and
are argued together (Br. 5), and claims 2-10, 13-18, 39-53, and 55---69,
dependent therefrom.
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Application 14/004,979
DECISION
The Examiner's decision rejecting claims 1-10, 13-18, and 38---69 is
reversed.
REVERSED
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