Ex Parte Ibrahim et al

Board of Patent Appeals and Interferences

May 31, 2012

10827218 (B.P.A.I. May. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte WAEL M. IBRAHIM and MANUEL NOVOA
_____________

Appeal 2010-003199
Application 10/827,218
Technology Center 2400
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Before ERIC S. FRAHM, KALYAN K. DESHPANDE, and
JUSTIN T. ARBES, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-003199
Application 10/827,218

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STATEMENT OF CASE
Introduction
This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1-18, 45, 46, 48, and 49. Claims 19-44 and 47 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
Invention
The invention is directed to a trusted platform module for providing
hardening security in a platform by protecting storage keys and a storage
root key using encryption (¶¶ [0001]-[0003] and [0026]). Appellants
disclose and claim a system including an interface to connect the system to
the trusted platform, and logic for storing a storage root key and performing
cryptographic key maintenance (Abs.; ¶ [0033]; Fig. 1; claims 1, 5, and 45).
Migration and maintenance of storage keys is performed using a key storage
hierarchy and a non-migratable storage root key (¶ [0003]), and can
compromise security (¶ [0002]). Claim 1 is representative of the invention
and is reproduced below with (emphasis added):
1. A system, comprising:

a logic configured to perform cryptographic key maintenance for a
trusted platform to which the logic is bound in a one-to-one manner,
where the cryptographic key maintenance includes migrating a non-
migratable storage root key from a root of a key storage hierarchy
associated with a trusted platform module associated with the trusted
platform; and

an interface configured to facilitate operably connecting the system to
the trusted platform.

Appeal 2010-003199
Application 10/827,218

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Examiner’s Rejections
(1) The Examiner has rejected claims 1-18, 45, 46, 48, and 49 under
both 35 U.S.C. § 112, first paragraph, and 35 U.S.C. § 112, second
paragraph (Final Rej. 2-3). Because the Examiner has withdrawn both of the
§ 112 rejections (Ans. 2 and 9), we will not further address these rejections
or Appellants’ arguments directed thereto.
(2) The Examiner has also rejected claims 1-18, 45, 46, 48, and 49
under 35 U.S.C. § 103(a) as being unpatentable over Challener (US
2003/0105965 A1) and Cromer (US 7,191,464 B2). (Ans. 3-9).

ISSUES1
With regard to claims 1 and 45, Appellants argue (App. Br. 12-25;
Reply Br. 2-5), inter alia, the Examiner’s obviousness rejection is in error
because Challener fails to teach or suggest “migrating a non-migratable
storage root key from a root of a key storage hierarchy,” as recited in claim
1, and as similarly recited in claim 45. Appellants also argue (App. Br. 13-
16; Reply Br. 3), that Challener discloses that non-migratable keys cannot be
migrated (see ¶ [0026]), and that Challener’s only disclosure of a storage
root key (see ¶ [0027]) does not teach or suggest migrating the storage root
key.
The Examiner relies upon Challener’s Figures 2-4 and paragraphs
[0027], [0029]-[0033], and [0043] as teaching cryptographic key

1 We recognize that Appellants’ arguments present additional issues. Some
of the arguments presented by the additional issues are not persuasive;
Footnote continued on next page.
Appeal 2010-003199
Application 10/827,218

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maintenance including migrating a non-migratable storage root key from a
root key storage hierarchy (Ans. 3-4 and 9-12). The Examiner also
determines (Ans. 10-11) that Challener (see ¶¶ [0030] and [0031]) discloses
a non-migratable key (step 202) that a customer provides (i.e., migrates or
transfers) to a credit card company (step 205).
Accordingly, the first issue is: Did the Examiner err in rejecting
claims 1-4, 7-18, 45, 46, 48, and 49 because Challener fails to teach or
suggest “migrating a non-migratable storage root key from a root key
storage hierarchy,” as recited in representative claim 1, and as similarly
recited in independent claim 45?
With regard to claim 5, Appellants argue (App. Br. 17), inter alia, the
Examiner’s obviousness rejection is in error because Challener and Cromer
fail to teach or suggest a logic and interface that “comprise part of a USB
token” (claim 5).
The Examiner relies upon Challener’s Abstract and paragraphs
[0003]-[0031] as teaching or suggesting a USB token as recited in claim 5.
Ans. 5 and 12.
Accordingly, the second issue is: Did the Examiner err in rejecting
claims 5 and 6 because Challener fails to teach or suggest “the logic and the
interface comprise part of a USB token,” as recited in claim 5, and as
similarly recited in dependent claim 6?

nonetheless we were persuaded of error by this issue and as such we do not
reach the additional issues as this issue is dispositive of the appeal.
Appeal 2010-003199
Application 10/827,218

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ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments in the Appeal Brief (App. Br. 12-25) and the Reply Brief (Reply
Br. 2-5) that the Examiner has erred. We agree with Appellants’ above
contentions regarding Challener as it relates to claims 1, 5, and 45, and
highlight and address specific findings and arguments for emphasis as
follows.
Challener discloses two types of keys: (1) migratable keys that can be
moved by the owner of the system to other systems, and (2) non-migratable
keys that cannot be cloned or migrated to another system even by the owner
(¶ [0026]). Challener also discloses a non-migratable storage key K1 for
encrypting other keys so that the trusted platform module can read the other
keys (¶ [0027]). Challener describes a storage root key that is an ancestor of
every other key (¶ [0027]), and discloses providing (i.e., migrating) the non-
migratable public portions of (1) a storage key K1 (¶ [0030]), and (2) a
signing key K2 (¶ [0031]) to a credit card company. However, Challener is
completely silent as to migrating a non-migratable storage root key.
Thus, Challener only migrates a non-migratable storage key and a
non-migratable signing key, and does not migrate a non-migratable storage
root key from a key storage hierarchy as recited in claims 1 and 45. In view
of the foregoing, we are persuaded by Appellants’ argument that the
Examiner has not shown that Challener teaches logic configured to perform
cryptographic key maintenance for a trusted platform by migrating a non-
migratable storage root key, as recited in claim 1, and as similarly recited in
claim 45. Accordingly, we will not sustain the Examiner’s rejection of
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Application 10/827,218

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independent claims 1 and 45, and claims 2-4, 7-18, 45, 46, 48, and 49,
depending respectively therefrom.
We also agree with Appellants (App. Br. 17) that Challener’s Abstract
and paragraphs [0003]-[0031] are silent as to a logic and interface
comprising part of a USB token, as recited in claims 5 and 6. Challener fails
to teach or suggest the logic and interface are part of a USB token.
Accordingly, we will not sustain the Examiner’s rejection of independent
claim 5, and claim 6 depending therefrom.

CONCLUSION
Appellants have persuaded us of error in the Examiner’s decision to
reject claims 1-18, 45, 46, 48, and 49 under 35 U.S.C. § 103(a) as being
unpatentable over Challener and Cromer.

ORDER
The decision of the Examiner to reject claims 1-18, 45, 46, 48, and 49
is reversed.

REVERSED

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