Ex Parte Kleidermacher et al

Patent Trial and Appeal Board

Oct 30, 2018

14205366 (P.T.A.B. Oct. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/205,366 03/11/2014
68368 7590 11/01/2018
Barcelo, Harrison & Walker, LLP
2901 W. Coast Hwy
Suite 200
Newport Beach, CA 92663
FIRST NAMED INVENTOR
David Noah Kleidermacher
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.
GHS-0020-P 1051
EXAMINER
TENG, LOUIS C
ART UNIT PAPER NUMBER
2492
NOTIFICATION DATE DELIVERY MODE
11/01/2018 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):
rey@bhiplaw.com
josh@bhiplaw.com
dwalker@bhiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID NOAH KLEIDERMACHER,
DANIEL JONATHAN HETTENA, and FRANK JOHN BANUL IV
Appeal 2018-003 645
Application 14/205,366 1
Technology Center 2400
Before MARC S. HOFF, ELENI MANTIS MERCADER, and
CATHERINE SHIANG, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1--4, 11, 12, 17-33, 40, 41, and 47-59, which are all the
claims pending and rejected in the application. 2 We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
1 Appellants identify Green Hills Software as the real party in interest. App.
Br. 2.
2 Claim 34 is not before us, as it is not properly rejected.
Appeal2018-003645
Application 14/205,366
STATEMENT OF THE CASE
Introduction
According to the Specification, the present invention relates to
"methods for obfuscating information for portable computing devices; and
more particularly to information-at-rest protection for portable computing
systems." Spec. ,r 3. Claim 1 is exemplary:
1. A portable computing device, comprising:
at least one operating system;
at least one virtualized storage device configured to be
accessed by the operating system;
at least one physical storage device configured not to be
directly accessible by the operating system; and
at least one virtualizing and obfuscating storage firmware
module configured for executing concurrently with the
operating system on a processor.
References and Rejections3
Claims 1--4, 11, 12, 18, 30-33, 40, 41, and 48 stand rejected under
35 U.S.C. § I02(b) as being anticipated by Conti (US 2007/0226795 Al;
published September 27, 2007). Final Act. 6-9.
Claims 17, 19-22, 47, and 49-52 stand rejected under 35 U.S.C.
§ I03(a) as being unpatentable over Conti and Vasilevsky (US
2009/0164994 Al; published June 25, 2009). Final Act. 10-12.
3 Throughout this opinion, we refer to the (1) Final Rejection dated August
25, 2016 ("Final Act."); (2) Amended Appeal Brief dated September 11,
2017 ("App. Br."); (3) Examiner's Answer dated December 28, 2017
("Ans."); and (4) Reply Brief dated February 20, 2018 ("Reply Br.").
2
Appeal2018-003645
Application 14/205,366
Claims 23-29 and 53-59 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Conti, Vasilevsky, and Croft (US 2007/0179955
Al; published August 2, 2007). Final Act. 12-15.
ANALYSIS 4
Anticipation
We have reviewed the Examiner's rejection in light of Appellants'
contentions and the evidence of record. We concur with Appellants'
contention that the Examiner erred in finding the cited portions of Conti
disclose "at least one virtualizing and obfuscating storage firmware module
configured for executing concurrently with the operating system on a
processor," as recited in independent claim 1. See App. Br. 5-7; Reply Br.
3-7.
The Examiner cites Conti's Figures 1 and 2 and paragraphs 78, 90, 98,
99, 125 155, 514, and 754 for teaching the disputed claim limitation. See
Final Act. 6-7; Ans. 3. We have reviewed the cited Conti portions, and they
do not describe "at least one virtualizing and obfuscating storage firmware
module configured for executing concurrently with the operating system on
a processor," as required by claim 1. Nor does the Examiner's finding that
Conti's separate components "collectively" perform the virtualizing and
obfuscating features (Ans. 3) explain why Conti discloses the disputed
limitation.
4 Appellants raise additional arguments. Because the identified issue is
dispositive of the appeal, we do not need to reach the additional arguments.
3
Appeal2018-003645
Application 14/205,366
Further, the Examiner's assertion that the disputed limitation is
"necessarily disclosed by Conti" (Final Act. 4) is unsubstantiated, as the
Examiner does not adequately explain how Conti necessarily discloses "one
virtualizing and obfuscating storage firmware module configured for
executing concurrently with the operating system on a processor" ( emphases
added).
Because the Examiner fails to provide sufficient evidence or
explanation to support the anticipation rejection, we are constrained by the
record to reverse the Examiner's rejection of claim 1.
Independent claim 30 recites a claim limitation that is substantively
similar to the disputed limitation of claim 1. See claim 30. Therefore, for
similar reasons, we reverse the Examiner's rejection of independent claim
30.
We also reverse the Examiner's anticipation rejection of
corresponding dependent claims 2--4, 11, 12, 18, 31-33, 40, 41, and 48.
Obviousness
The Examiner cites additional references for the obviousness rejection
of dependent claims 17, 19-29, 47, and 49-59. The Examiner relies on Conti
in the same manner discussed above in the context of claim 1, and does not
rely on the additional references in any manner that remedies the
deficiencies of the underlying anticipation rejection. See Final Act. 10-15.
Accordingly, we reverse the Examiner's obviousness rejection of
claims 17, 19-29, 47, and 49-59.
4
Appeal2018-003645
Application 14/205,366
DECISION
We reverse the Examiner's decision rejecting claims 1--4, 11, 12, 17-
33, 40, 41, and 47-59.
REVERSED
5