Ex Parte Gleichauf

Board of Patent Appeals and Interferences

Sep 16, 2010

10061901 (B.P.A.I. Sep. 16, 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.
10/061,901 02/01/2002 Paul Gleichauf 50325-0606 8863
29989 7590 09/17/2010
HICKMAN PALERMO TRUONG & BECKER, LLP
2055 GATEWAY PLACE
SUITE 550
SAN JOSE, CA 95110
EXAMINER
HENNING, MATTHEW T
ART UNIT PAPER NUMBER
2431
MAIL DATE DELIVERY MODE
09/17/2010 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 GLEICHAUF
_____________

Appeal 2009-006345
Application 10/061,901
Technology Center 2400
______________

Before JOHN C. MARTIN, JOSEPH F. RUGGIERO,
and CARL W. WHITEHEAD, JR., Administrative Patent Judges.

MARTIN, 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.
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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 2, 4-6, 15, 17, 18, 20-22, and 27, which are all of the
pending claims.2
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

A. Appellant’s invention
Appellant’s invention is a method and system for storage and
transmission of data by applying a one-time pad. Specification [0001].3
The Specification, in the “Background of Invention” section, explains
that in a typical network system, such as a Metropolitan Area Network
(MAN) or a Wide Area Network (WAN), multiple users have access to and
communicate over a shared communication network, that many computer
applications require transmission of confidential or sensitive data over these
shared networks, and that “such applications must regard the networks as
public unless great care is taken to protect them” (id. at [0003]).
A one-time pad (OTP) is a non-repeating random string of characters,
symbols, or letters that cannot be broken given infinite time and resources

2 Claims 7, 23, and 26 were canceled by an amendment that accompanied
the initially filed Appeal Brief, filed on May 6, 2008, and was approved for
entry by the Examiner (Answer 2, para. 4).
3 Citations herein to Appellant’s Specification are to the Application as filed
rather than to corresponding Patent Application Publication 2003/0149869
A1.

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(id. at [0013]-[0014]). Each letter on the pad is used only once to encrypt
one corresponding plaintext character (id. at [0014]). There is one copy of
the pad at the transmitter and one at the receiver and, after use, the pad is
never re-used (id.). While an important advantage of the one-time-pad is
that there is no key to crack, the difficulty has always been in sharing the
pad (id. at [0018]).
Appellant’s Figure 1, which illustrates the invention, is reproduced
below.

Figure 1 is a block diagram illustrating a system for securely
transmitting and storing data by applying an OTP (id. at [0031]).
“Network 110 is non-secure, and may comprise one or more local area
networks, wide area networks, metropolitan area networks, storage
networks, internetworks, or a combination of the foregoing” (id. at [0038]).
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Sending host 100 has plaintext data 102 and OTP data 104 that are to be
communicatively coupled to an encryption engine 106, which has a
ciphertext output 106A and a keystream output 106B (id. at [0039]). First
data path 108A carries ciphertext from output 106A of sending host 100, and
second data path 108B carries an OTP keystream from output 106B of the
sending host (id. at [0040]). Decryption engine 126 receives ciphertext from
data path 108A and the OTP keystream from data path 108B and performs
an XOR operation to obtain plaintext data 124 (id. at [0041]). As the
ciphertext is decrypted, the keystream is concurrently replaced in the storage
with the resulting plaintext (id. at [0065]), thereby achieving savings in
storage (id. at [0022]).
The security of the system lies in the truly random nature of the
keystream and the use of “physically separate routing paths” for the
keystream and ciphertext (id.). These paths are also referred to as
“physically separate communication channels” (id. at [0023]). One of the
questions before us is whether the Application as filed discloses routing the
keystream and ciphertext through a “public” network.
Appellant’s Figure 5 reproduced below.
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Figure 5 is a flow diagram illustrating a method of separately routing
the keystream and the ciphertext (id. at [0057]). In block 502, separation of
the first and second physically separate routed paths between a sending host
and receiving host “preferably involves separation at a physical network
layer one [sic], and does not merely involve establishing a virtual tunnel, for
example” (id.). Such physical layer separation can be accomplished, for
example, using multi-protocol label switching (MPLS) or by source routing
under version 6 of Internet Protocol (IPv6) (id.). In an MPLS network,
incoming packets are assigned a “label” by a label edge router (LER) (id. at
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[0058]). Packets are forwarded along a label switched path (LSP), where
each label switch router (LSR) makes forwarding decisions based solely on
the contents of the label (id.). Thus, the keystream and data stream can be
transmitted across physically separate network paths by labeling the
keystream with one MPLS label and labeling the data stream with a second
MPLS label, as indicated by block 508A and block 510 (id. at [0060]).

B. The claims
The independent claims before us are claims 1, 15, 17, and 27, of
which claim 1 reads as follows:
1. A method for securely storing data by applying a one-
time pad, the method comprising the computer implemented
steps of:
receiving a first data stream comprising a keystream of
truly randomly generated characters;
receiving a second data stream comprising ciphertext,
wherein the first and second data streams are received on two
routed communication channels, wherein the ciphertext
comprises a source text that is encrypted by applying the
keystream to the source text using an exclusive-OR operation,
wherein the two routed communication channels are physically
separate from one another;
establishing both of the two routed communication
channels through a public packet switched internetwork;
decrypting the ciphertext using the keystream, resulting
in creating and storing decrypted data that is equivalent to the
source text;
wherein the keystream is received and stored in advance
of receiving the ciphertext, and wherein the stored keystream is
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replaced in the same storage location with the decrypted data as
the ciphertext is decrypted.
Claims App. (Br. 244) (emphasis added).

C. The references
The Examiner’s rejections are based on the following references:
Douceur US 6,021,203 Feb. 1, 2000
Shah US 2002/0035556 A1 Mar. 21, 2002
Golasky US 2003/0074599 A1 Apr. 17, 2003
Pierce US 6,680,783 B1 Jan. 20, 2004
Elliott US 7,068,790 B1 Jun. 27, 2006
E. Rosen et al., Multiprotocol Label Switching Architecture, Request for
Comments: 3031, Network Working Group (Jan. 2001) [hereinafter Rosen].
DARPA Internet Program Protocol Specification, Information Sciences
Institute (Sept. 1981) [hereinafter DARPA].

D. The rejections
1. All of the claims on appeal stand rejected under the 35 U.S.C.
§ 112, first paragraph, written description requirement. Final Action 6.
2. Claims 1, 2, 15, 17, 18, and 27 stand rejected under 35 U.S.C.
§ 103(a) for obviousness over Douceur in view of Elliott and Pierce. Id. at
7.

4 References herein to the Appeal Brief are to the corrected Appeal Brief
filed September 5, 2008.
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3. Claims 4 and 20 stand rejected under 35 U.S.C. § 103(a) for
obviousness over Douceur in view of Elliott, Pierce, Golasky, and Shah. Id.
at 15-16.
4. Claims 5 and 21 stand rejected under 35 U.S.C. § 103(a) for
obviousness over Douceur in view of Elliott, Pierce, and Rosen. Id. at 17.
5. Claims 6 and 22 stand rejected under 35 U.S.C. § 103(a) for
obviousness over Douceur in view of Elliott, Pierce, and DARPA. Id. at 18.

ANALYSIS OF THE § 112 REJECTION
The Examiner finds that the Application as filed fails to describe
routing the keystream and the ciphertext through respective communications
channels in a public internetwork. Final Action 2. “Adequate written
description means that, in the specification, the applicant must ‘convey with
reasonable clarity to those skilled in the art that, as of the filing date sought,
he or she was in possession of the [claimed] invention.’” Hyatt v. Dudas,
492 F.3d 1365, 1370 (Fed. Cir. 2007) (quoting Vas-Cath, Inc. v. Mahurkar,
935 F.2d 1555, 1563-64 (Fed. Cir. 1991) (brackets in original)). For the
following reasons, Appellant’s arguments do not persuade us of error in the
Examiner’s position.
The arguments for support made in the Brief were previously
presented at pages 10-14 of the September 25, 2007, “Reply to Office
Action” and addressed as follows in the Final Action. In response to the
argument that the MPLS techniques discussed in paragraph [0022] of the
Specification for creating physically separate keystream and ciphertext
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channels would have been understood to be commonly used in public packet
switched internetworks, the Examiner stated that “MPLS does not require a
public internetwork, and there is no suggestion in this paragraph, or any
other that the channels should be limited to being established through a
public internetwork.” Final Action 2. In response to Appellant’s reliance on
the discussion of using VPNs (virtual private networks) in paragraphs [0057]
and [0059], the Examiner similarly stated that “VPN’s do not require a
public internetwork.” Id. at 2-3. Appellant also relies on the description of
network 101 (Fig. 1) in paragraphs [0038], [0039], and [0049] as a “non-
secure” network that can include, among other things, WAN and/or MAN
technologies, which Appellant (according to the Examiner) alleges are
public networks. Id. at 3. The Examiner responded by stating that
“[a]lthough the examiner does not necessarily agree with that allegation, the
examiner points out that the argument is irrelevant, as neither this paragraph,
nor any other, discloses that both channels are established through the WAN
and/or MAN technologies.” Id.
Regarding Appellant’s reliance on the discussion of the Internet in
paragraphs [0077]-[0078], the Examiner agrees that the Internet is a public
network but found that these paragraphs describe “how one could obtain the
invention, and not how the invention operates” and thus do not provide
support for the two physically separate channels being established through
the Internet. Id. Finally, in response to Appellant’s reliance on the
description in paragraph [0061] of using the “IP-STRICT-ROUTE
OPTION” of IPv6 to create the separate paths, the Examiner stated that “IP-
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STRICT-ROUTE-OPTION can be used in private networks, and therefore
does not require, nor suggest that the channels are through a public
internetwork.” Id. at 3-4.
The Brief, at pages 10-13, repeats the above arguments without
specifically addressing any of the Examiner’s above-noted criticisms of
those arguments, criticisms that are repeated at pages 16-18 of the Answer.
Instead, Appellant argues that the “Examiner’s arguments are unreasonably
formalistic and literal, and are unsupported by well-established case law”
and points out that “[t]he written description requirement of Section 112
does not demand that the specification exactly reproduce the claim
language.” (Br. 13.) The Examiner responded by expressing agreement
with this principle and stating that “this feature should have been disclosed,
not necessarily word for word but at least in some way shape or form, by the
specification.” (Answer 18-19.)
Appellant also argued that “[p]ractitioners receiving applicant’s
disclosure would recognize, at least from the above-referenced paragraphs,
that one useful context of the claims is packet-switched networking and that
a packet-switched internetwork can be used for communicating ciphertext
and keystream.” (Br. 14.) The Examiner responded that “supporting both
channels being routed through packet switched networks does not inherently
support them being routed through a public packet switched internetwork.”
(Answer 19.)
In the Reply Brief, Appellant argues that the artisan would have
recognized that the network through which the keystream and ciphertext can
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be routed can be public or non-public. (See, e.g., Reply Br. 2-3 (“[S]imply
because on occasion a packet switched internetwork can be a non-public
internetwork, a skilled artisan would not necessarily understand Appellant’s
disclosure to provide only a non-public internetwork. Either alternative is
fairly covered by the disclosure as a whole.” (emphasis added)).) This and
similar other new arguments in the Reply Brief are entitled to no
consideration because they were not necessitated by a new point in the
Answer and thus should have been made in the opening Brief. See Ex parte
Borden, 93 USPQ2d 1473, 1473-74 (BPAI 2010) (“informative”5) (absent a
showing of good cause, the Board is not required to address an argument
newly presented in the Reply Brief that could have been presented in the
principal Brief on Appeal).
Because Appellant’s arguments do not persuade us that the Examiner
erred in finding that the application as filed fails to disclose routing the
keystream and ciphertext through a “public packet switched internetwork,”
as required by each of the independent claims (viz., claims 1, 15, 17, and 27),
we will sustain the rejection of those claims and dependent claims 2, 4-6, 18,
and 20-22.

5 Designated as an “Informative Opinion” at the following Board website:
http://www.uspto.gov/ip/boards/bpai/decisions/inform/index.jsp.
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THE 103(a) REJECTION OF CLAIMS 1, 2, 15, 17, 18, AND 27
(DOUCEUR, ELLIOTT, AND PIERCE)
Douceur’s invention is a coercion-resistant one-time-pad (OTP)
cryptosystem. Douceur, title. Douceur’s system provides coercion
resistance by facilitating the use of decoy messages that can be revealed
when duress is exerted on a party to reveal an encryption key (col. 3, ll. 6-9).
Figure 1 of Douceur, which depicts a prior-art system, is reproduced
below.

Figure 1 is a block diagram illustrating the operation of a prior art
OTP cryptosystem (col. 1, ll. 28-30). The random bits of the key 14 are
transmitted over a “secure channel 16,” which is presumed to be secure
against eavesdroppers, to a receiver 12 (col. 1, ll. 36-38). The sender 10
encrypts the message by exclusive ORing (XORing) the random bits of the
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key 14 with the message to produce cyphertext and then transmits the
cyphertext 18 over a “publicly accessible channel 20” from the sender 10 to
the receiver 12 (col. 1, ll. 39-43). The receiver 12, having already received
the random bits of key 14, uses it to decipher the cyphertext (col. 1, ll. 44-
46). The sender destroys the pad after encrypting the message, and the
receiver destroys the pad after decrypting the message (col. 1, ll. 21-23).
The Examiner bases the rejection on Figure 4, which depicts
Douceur’s invention and is reproduced below.

Figure 4 is a block diagram that provides an overview of the operation
of Douceur’s system (col. 3, ll. 16-18). Communications between the sender
42 and the receiver 44 occur in two stages, which may occur roughly
contemporaneously (col. 3, ll. 23-26). In a first stage, n OTP keys 46 for
decrypting OTP-encrypted messages are transmitted over a secure channel
48 from the sender to the receiver (col. 3, ll. 26-29). The second stage of
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transmissions includes the transmission of n cyphertexts 50 including low
security messages over a publicly accessible channel 52 to the receiver 44
(col. 3, ll. 29-32). The Examiner (Final Action 7) finds that column 3, line
61, to column 4, line 5, describes routing the keystream and the cyphertext
through a public network. Appellant does not deny that the cited references
disclose or suggest routing the keystream and cyphertext through a public
packet switched internetwork.
The Examiner, comparing claim 1 to Figure 4, finds that Douceur fails
to disclose (1) that the two communication channels are “physically
separate” from one another, (2) that the two communication channels are
established through a “public packet switched internetwork,” (3) that the
keystream is stored prior to receiving the ciphertext, and (4) that the stored
keystream is replaced in the same storage location with the decrypted data as
the ciphertext is decrypted. Final Action 8. Because Appellant’s arguments
regarding claim 1 and the other independent claims are limited to the
obviousness of differences (1) and (4), the following analysis addresses only
those two differences.

A. Difference (1) – the “physically separate” channels limitation
A review of the prosecution history reveals the basis for the
Examiner’s finding that Douceur fails to describe the two communication
channels as “physically separate” from one another. In a September 22,
2005, Office Action, claim 1 (as well as other claims), which at that time
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recited “two physically separate routed communication channels,”6 was
rejected for anticipation by Douceur. The Examiner stated that
[f]or argument[’]s sake, if we interpret the limitation to mean that
the communication channels were “physically separate”, Douceur
still meets this limitation. This can clearly be seen in Fig. 4 where
the “Secure Channel” and the “Publicly Accessible Channel” are
shown to be physically separate. As such, the examiner does not
find the argument persuasive. The examiner suggests the
following claim language “wherein the two routed communication
channels are physically separate from one another” in order to
limit the claim to two channels that are separate physically from
each other.
(September 22, 2005, Office Action at 2-3.) We understand this passage to
be suggesting how to amend the claim language to require that the
communication channels be physically separate, the interpretation argued by
Appellant, while also finding that the claim language thus amended would
read on Douceur.
Appellant responded by amending claim 1 and the other independent
claims in the manner suggested by the Examiner and stating that “[t]he
claims feature the ‘wherein’ clause suggested by the Office Action.
Applicant understands the claim language was suggested to distinguish over
Douceur.” February 28, 2006, “Supp. Reply to Office Action” at 9. For the
reasons given above, Appellant’s conclusion that the Examiner suggested
the new claim language as a way to distinguish over Douceur appears to be
incorrect. However, as explained below, the Examiner subsequently had a

6 July 21, 2005, “Reply to Office Action” at 2.
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change of heart and agreed with Appellant’s following explanation of why
the amended claim language does not read on Douceur:
Douceur FIG. 4 does not anticipate routing on physically separate
paths, as claimed. Douceur FIG. 4 represents secure channel 48
and publicly accessible channel 52 with separate lines, but no part
of Douceur teaches that the channels 48, 52 should be routed on
physically separate paths. A secure channel and a publicly
accessible channel can be physically routed on the same path
using, for example, GRE encapsulation, IPSec encapsulation, or
other techniques to maintain one of the channels as secure even
though the channels are on the same path. The channels of
Douceur might be physically routed on the same physical path or
channel because network nodes make identical path selection
decisions for each of the Douceur channels at the time of
establishing them. Nothing in Douceur would suggest, to a skilled
artisan, that channels 48, 52 should be physically separately
routed, as described and claimed by Applicants.
Id. at 9-10 (emphasis added). The Examiner, apparently persuaded by this
reasoning, found in the next Office Action that “Douceur fail[s] to disclose
that the two channels were physically separate from one another” and relied
on Kurihara U.S. Patent 6,928,420 for a teaching of using a private line for
the decryption key and commercial line for the encrypted data (the claims at
that time did not require that both channels be through a “public” network).
May 19, 2006, Office Action at 5. In the rejections under review in this
appeal, the Examiner relies on Elliott rather than Kurihara for such a
teaching.
Elliott discloses systems and methods for distributing encryption keys
in quantum cryptographic networks (Elliott, col. 1, ll. 16-19), which, as
explained below, are optical networks. Quantum cryptographic techniques
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have been conventionally applied to distribute keys from a single photon
source to a single photon detector, either through fiber optic strands or
through the air (col. 1, ll. 42-45). Conventional quantum cryptographic
techniques require a direct connection to anyone with whom one wishes to
exchange keying material (col. 1, ll. 50-52). Therefore, according to Elliott,
there exists a need for systems and methods which can provide “any to any”
connectivity while eliminating the need for a direct connection between
parties distributing quantum key material, and which can sustain key
distribution even with link failure and/or when eavesdropping exists on the
link (col. 1, l. 65 – col. 2, l. 3).
Elliott’s Figure 1 is reproduced below.

Figure 1 illustrates an exemplary network 100 in which systems and
methods distribute encryption keys via quantum cryptographic mechanisms
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consistent with Elliott’s invention (col. 3, ll. 60-63). Network 100 can
include QKD (quantum key distribution7) endpoints 105a and 105b
connected via sub-network 110 and QKD sub-network 115 (col. 3, ll. 63-
65). Sub-network 110 can include one or more networks of any type,
including a local area network (LAN), MAN, WAN, Internet, or Intranet
(col. 4, ll. 3-6). Elliott explains that “QKD endpoints 105a and 105b may
each include a host or a server” and that endpoints 105a and 105b which
include servers can connect to LANs 120 or 125, which can further connect
with hosts 130a-130c and 135a-135c, respectively (col. 3, l. 65 – col. 4, l.
28).
Figure 2 is reproduced below.

7 Elliott, col. 2, ll. 9-10.
8 In the quotations herein from the references, bolding of the reference
numerals is omitted.
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Figure 2 illustrates an exemplary diagram of QKD sub-network 115,
which can include one or more QKD switches 205a-205m interconnected via
one or more links that may carry light throughout the electromagnetic
spectrum (col. 4, ll. 23-27).
The Examiner characterizes Elliott as
teach[ing] that encrypted traffic can be transmitted over one
network including LAN’s, WAN’s, Internet, and Intranet, while
the encryption key is transmitted over an optical Quantum Key
Distribution network in order to detect eavesdropping of the keys
and to be able to route around the eavesdropping (See Elliott Col.
3 Line 60 – Col. 4 Line 20).
Final Action 8. Appellant countered that “the Office Action does not argue,
and Elliott does not disclose, two channels that must be physically separate
from one another” (emphasis altered) and also that “[i]ndeed, Elliott states at
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column 3, lines 63-65 that sub-network 100 and sub-network 115 form part
of one network 100.” (Br. 16.) We agree with the Examiner (Answer 20-
22) that although Elliott does not characterize sub-networks 100 and 115 as
physically separate from each other, a person having ordinary skill in the art
would have understood that to be the case for several reasons. First, these
sub-networks are depicted in Figure 1 as non-overlapping. Second, sub-
network 110 is described as including one or more networks of any type,
including a LAN, MAN, WAN, Internet, or Intranet, whereas QKD sub-
network 115 is described as an optical network including one or more QKD
switches. Third, Elliott’s description of sub-networks 110 and 115 as parts
of a single network 100 does not imply that the sub-networks are not
physically separate from each other.
Appellant’s argument that “there is no reason that the QKD switches
of sub-network 115 cannot participate in sub-network 110 and communicate
encrypted traffic” (Br. 16) is unpersuasive. Even assuming for the sake of
argument that an ordinarily skilled artisan would have recognized that QKD
sub-network 115 can be used to carry the encrypted traffic as well as the key
data, the artisan would have understood Elliott to be disclosing that the
encrypted traffic and the key data can be carried by separate sub-networks
110 and 115, respectively. Nor are we persuaded by Appellant’s argument
that “[n]either reference [of Douceur and Elliott] describes or suggests
applicant’s fundamental recognition that maximum security is achieved by
requiring physically separate routed paths” (id. (emphasis omitted).) It is not
necessary to the rejection for Elliott to characterize sub-networks 110 and
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115, which are clearly physically separate from each other, as providing
“maximum” security. Appellant’s observation that “Elliott does not state
that sub-network 110 and sub-network 115 cannot physically overlap each
other” (Reply Br. 4 (emphasis added)), while correct, is unpersuasive
because an artisan would have understood that sub-networks 110 and 115 do
not (or at least, need not) overlap. Appellant’s argument that “[s]ince Elliot
[sic] does not say that encrypted traffic and keys must be on different
physical channels, Elliott cannot anticipate the claims” (id. (emphasis
added)) is unpersuasive for two reasons. First, as explained above, an
artisan would have understood Elliott to be disclosing physically separate
sub-networks. Second, because the rejection is based on obviousness, it is
sufficient for the use of physically separate channels to have been rendered
obvious by Elliott and Douceur.
The Examiner concluded that it would have been obvious to employ
the teachings of Elliott in Douceur’s OTP cryptosystem by “sending the one-
time pad over a switched quantum optical network and sending the
encrypted data over a separate network such as the Internet” in order to
provide a secure means for transmitting the OTP key and to be able to detect
if the key has been eavesdropped. Final Action 9. Appellant argues that
“[Douceur’s] decoy mechanism teaches away from Applicant’s technique,
which does not require a decoy approach because of the additional security
introduced by guaranteeing use of physically separately routed channels.”
(Br. 15 (emphasis omitted).) The Examiner responded that
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[s]imply because Douceur teaches a way of securing the
keystream against interception, [that] does not teach against
combination with another teaching for securing the keystream.
Rather, as would be readily apparent to the ordinary person skilled
in the art, combining multiple protection schemes to a data
transmission, will, generally, increase the security of the
transmission, and therefore would be desirable.
(Answer 20.) The Reply Brief does not contain a response to the Examiner’s
position, let alone demonstrate either (1) that Douceur discourages the use of
physically separate channels or (2) that the use of such channels would
render Douceur inoperative. As explained in In re ICON Health & Fitness,
Inc., 496 F.3d 1374, 1381 (Fed. Cir. 2007):
“A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be discouraged
from following the path set out in the reference, or would be led in
a direction divergent from the path that was taken by the
applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994); see
KSR [Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007)]
(explaining that when the prior art teaches away from a
combination, that combination is more likely to be nonobvious).
Additionally, a reference may teach away from a use when that
use would render the result inoperable. McGinley v. Franklin
Sports, Inc., 262 F.3d 1339, 1354 (Fed. Cir. 2001).
For the foregoing reasons, Appellant has not persuaded us of error in
the Examiner’s reliance on Douceur and Elliott for a suggestion of routing
Douceur’s keystream data and cyphertext over physically separate channels.

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B. Difference (4) – replacing the stored keystream with the decrypted data
as the ciphertext is decrypted
Having found that Douceur fails to disclose replacing the stored
keystream in the same storage location at the receiver with the decrypted
data as the ciphertext is decrypted, the Examiner relies on Pierce to cure this
deficiency. Final Action 8.
Pierce discloses a method for printing a postage indicium and, more
particularly, a method for printing an IBIP (Information-Based Indicia
Program9) indicium using a personal computer. Pierce, col. 1, ll. 20-24.
Figure 3 of Pierce is reproduced below.

Figure 3 is an envelope printed with a sample IBIP indicium (col. 3, ll.
57-58).

9 Pierce, col. 1, l. 26.
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In an IBIP system, a host PC includes application software that
requests postage from the PSD (postage security device), creates an indicium
when postage is returned with other information from the PSD, and then
requests the printer to print the indicium (col. 2, ll. 58-62). It has been found
that conventional safeguards in such application software, which are
intended to prevent multiple copies of an indicium, can be circumvented and
that multiple copies of an indicium can be printed (col. 2, ll. 63-66). In
accordance with Pierce’s invention, the data associated with a valid indicium
is destroyed as soon as a single printable image has been rendered (col. 3, ll.
17-19). This is accomplished by overwriting the printable image data in the
PC memory with “other information” (col. 3, ll. 33-35, 43-45).
The Examiner, in addition to finding that Douceur discloses
destroying the OTP after it has been used (Douceur, col. 1, ll. 21-23), relies
on Pierce for a teaching of destroying Douceur’s OTP by writing over it with
“other information.” Final Action 9. The Examiner further reasoned that
“because the decrypted message contained the same number of bits as the
one time pad to be overwritten, the decrypted message would be new data
containing the proper number of bits, available immediately upon decryption
of the message, and therefore a ‘perfect candidate’ for the job” (id. at 9-10).
Appellant has responded with several arguments. The first argument
is that “Pierce comes from an entirely different field of endeavor (printing
postage labels) and is not analogous art. A skilled artisan in the networking
field would have had no reason to consult Pierce . . . .” (Br. 16.) This
argument is unpersuasive because “[a] reference is reasonably pertinent if,
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even though it may be in a different field from that of the inventor’s
endeavor, it is one which, because of the matter with which it deals, logically
would have commended itself to an inventor’s attention in considering his
problem.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). We agree with
the Examiner that Douceur and Pierce are analogous art because “both prior
art references are within the same technological art, computing, data storage,
and data transmission, as the instant application,” and because “both
Douceur and Pierce, as well as the instant application, deal with the storage
of secure data.” (Answer 22.)
Appellant also argues that Pierce’s “‘overwriting the printable image
with other information’ . . . is not the same as replacing keystream with data
usable in the system, such as decrypted data.” (Br. 17.) This argument is
unpersuasive because Pierce’s “other information” is presumably useful
information. Furthermore, we agree with the Examiner that because the
decrypted message has the same number of bits as the OTP, it would have
been obvious to replace the OTP with the decrypted message.
Finally, Appellant argues that
[i]n Pierce, a data object is deleted from memory “once a printable
graphic image has been created”—that is, after the printable
graphic image has been created. In sharp contrast, in the claimed
approach [the] keystream is replaced with decrypted data as the
ciphertext is decrypted—at the same time.
(Id.) This argument is unpersuasive because the Examiner does not rely on
Pierce for the timing of when to replace the OTP with the decrypted data.
Instead, as noted above, the Examiner reasoned that the decrypted message
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is “available immediately upon decryption of the message, and therefore a
‘perfect candidate’ for the job [of overwriting the OTP].” Final Action 9-10.
We understand this statement to mean that it would have been obvious to
perform this overwriting operation as soon as the message has been
decrypted. This position of the Examiner is not contrary to Pierce. Pierce
discloses overwriting of the stored printable image data as soon as that data
has been used for its intended purpose of printing an IBIP indicium. The
Examiner’s position is that it would have been obvious to overwrite
Douceur’s OTP with the decrypted text as soon as the OTP has served its
purpose of being used to decrypt the cyphertext.
Appellant therefore has not persuaded us of error in the Examiner’s
conclusion that it would have been obvious in Douceur as modified in view
of Elliott to replace the stored keystream data with the decrypted data as the
ciphertext is decrypted.

C. Conclusion regarding the obviousness rejection of claims 1, 2, 15, 17,
18, and 27
For the foregoing reasons, we will sustain the rejection of claim 1 for
obviousness over Douceur, Elliott, and Pierce, the rejection on this ground
of the other independent claims (viz., claims 15, 17, and 27), as to which
Appellant treats as standing or falling with claim 1 (Br. 19), and the rejection
on this ground of dependent claims 2 and 18, which are not separately
argued. In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987).

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THE § 103(a) REJECTIONS OF THE DEPENDENT CLAIMS
A. Claims 4 and 20
Claim 4 reads as follow:
4. A method as recited in Claim 1, further comprising
the steps of receiving and storing the keystream in a first
storage device of a storage area network (SAN) shared storage
infrastructure at a receiver and receiving and storing the
ciphertext in a second storage device of the SAN shared storage
infrastructure at the receiver that is physically separate from the
first storage device.
The Examiner relies on Golasky as teaching that SANs provide
increased storage capacity and more rapid access to data (citing paragraph
[0003]) and on Shah as teaching that in an encryption/decryption system,
storing the keys in a separate server than the encrypted data provides added
protection from illicit access to the protected content (citing paragraph
[0071]). Final Action 16.
Appellant’s argument that the rejection is based on an excessive
number of references (five) (Br. 20) is unpersuasive. As pointed out by the
Examiner (Answer 23-24), reliance on a large number of references in a
rejection does not, without more, weigh against the obviousness of the
claimed invention. In re Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991).
Appellant argues that “Shah paragraph 71 merely states that
encryption keys can be stored physically separate from a database server
hosting encrypted data. Shah does not suggest that a receiver of data, as
claimed, should store a received ciphertext and keystream in separate
locations.” (Br. 20.) We agree with the Examiner that “[w]hile the preferred
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embodiment of Shah does pertain to a host, the teachings of Shah regarding
the separate storage of encryption keys from encrypted data does neither
pertain solely to storage of data on a host nor suggest this to be the case.”
(Answer 24.) Furthermore, to the extent that Appellant is arguing that Shah
fails to disclose receiving transmitted keystream and ciphertext, that
argument is unpersuasive because the Examiner relies on Douceur and
Elliott for such a teaching.
Appellant next argues that
nothing in Shah can reasonably suggest Applicant’s claimed use
of first and second storage devices in a shared storage
infrastructure at the receiver. It is well known in the art that
SAN architectures provide logical separation but that a shared
storage architecture often involves storing data on the same
physical machines or in the same physical infrastructure. Shah
teaches away from such an approach by requiring physical
separation. Because Shah describes physical separation, a skilled
artisan would have no reason to combine Shah with Golasky or to
contemplate storing keys and ciphertext in a shared storage
infrastructure.
(Br. 20-21.) This argument is unpersuasive for several reasons. First, the
assertion that is well known in the art that shared storage in SAN
architectures “often” involves storing data on the same physical machines or
in the same physical infrastructure is not supported by any evidence. See
Estee Lauder Inc. v. L’Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997)
(“[A]rguments of counsel cannot take the place of evidence lacking in the
record.”). Second, the assertion itself concedes that it was known that SAN
architectures can provide storage on physically separate devices. Third, as
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pointed out by Examiner (Answer 24), Golasky explains in paragraph [0021]
that storage device 14 can be “one or a collection of” hard disks, RAID
devices, optical or magnetic medium, or any other suitable type of non-
volatile storage. For these reasons, Appellant has failed to demonstrate that
a skilled artisan would have had no reason to combine Shah with Golasky or
to contemplate storing keys and ciphertext in a shared storage infrastructure.
Finally, Appellant argues:
The Office Action also fails to establish any reason to
combine Golasky and Shah with Douceur. At most, Douceur
inherently provides for storing the OTP and ciphertext in logically
separate files or memory locations, but not physically separate
devices. Douceur, in fact, discloses no storage devices at all. A
skilled artisan knowing of Douceur would have no reason to
consider the storage approach of claim 4, or to consider Golasky
or Shah.
(Br. 21.) This argument is unpersuasive because Douceur’s failure to
disclose storage devices does not amount to a teaching away from using
storage devices. We agree with the Examiner that a person having ordinary
skill in the art, when implementing the system of Douceur, would have
looked to Shah and Golasky for teachings that can be used for the storage of
keys and ciphertext.
For the foregoing reasons, we will sustain the rejection of claims 4
and 20.

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B. Claims 5 and 21
Dependent claims 5 and 21 stand rejected for obviousness over
Douceur, Elliott, Pierce, and Rosen. Regarding these claims, Appellant
argues that the references fails to disclose two routed communication
channels that are physically separate from one another (Br. 21) and that
Rosen fails to remedy the alleged failure of the other references to disclose
or suggest replacing the stored keystream with the decrypted data as the
ciphertext is decrypted (id. at 22). As explained above in the discussion of
claim 1, the other references are not deficient in these respects.
The rejection of claims 5 and 21 is therefore sustained.

C. Claims 6 and 22
Dependent claims 6 and 22 stand rejected or obviousness over
Douceur, Elliott, Pierce, and DARPA. Regarding these claims, Appellant
argues that DARPA fails to remedy the alleged failure of the other
references to disclose or suggest replacing the stored keystream with the
decrypted data as the ciphertext is decrypted (id.). As explained above in the
discussion of claim 1, the other references are not deficient in this respect.
The rejection of claims 6 and 22 is therefore sustained.

DECISION
The rejection of claims 1, 2, 4-6, 15, 17, 18, 20-22, and 27, which are
all of the claims on appeal, for failure to satisfy the written description
requirement of 35 U.S.C. § 112, first paragraph, is sustained. Also, the
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rejections of these claims under 35 U.S.C. § 103(a) for obviousness over the
prior art are sustained.
The Examiner’s decision that these claims are unpatentable to
Appellant is therefore 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). See 37 C.F.R.
§ 1.136(a)(1)(v) (2010).

AFFIRMED

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