Ex Parte Li et al

Board of Patent Appeals and Interferences

Apr 6, 2010

10872723 (B.P.A.I. Apr. 6, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte YI Q. LI, EZZAT A. DABBISH, and DEAN H. VOGLER
____________________

Appeal 2008-0038001
Application 10/872,723
Technology Center 2100
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Decided: April 6, 2010
____________________

Before JEAN R. HOMERE, STEPHEN C. SIU, and
DEBRA K. STEPHENS, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 Filed on June 21, 2004. The real party in interest is Motorola, Inc. (App.
Br. 2.)
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I. STATEMENT OF THE CASE
Appellants appeal2 under 35 U.S.C. § 134(a) (2002) from the
Examiner’s final rejection of claims 1 through 6 and 8 through 19. (App. Br.
2.) Claim 7 has been canceled. (Id.) We have jurisdiction under 35 U.S.C.
§ 6(b) (2008).
We affirm.

Appellants’ Invention
Appellants invented a method and system for securely backing up data
stored in an electronic device (e.g. a cellular phone) such that the backed up
data can only be recovered to the user device that was used to perform the
backup. (Spec. 1, ll. 6-18, ll. 24-29.) As depicted in Figure 1, upon
receiving backup data from a user interface (105), the electronic device
(100) uses a cryptographic key (110) and an integrity function (125) to
encode its unique and unalterable identification with the back up data.
(Spec. 4, ll. 17-28.) The electronic device (100) subsequently uses its
unique ID and integrity function to decode and restore the backed up data.
(Id. at ll. 5-8, Spec. 6, ll. 18-25.)

2 We note that Appellants’ appeal is specifically directed to the rejection of
independent claims 1, 18 and 19, while omitting any discussion of the other
rejected claims. In deciding this appeal, we have considered only those
arguments that Appellants submitted in the Appeal and Reply Briefs.
Arguments that Appellants could have made but chose not to make in the
Briefs are deemed to have been waived. See In re Watts, 354 F.3d 1362,
1368 (Fed. Cir. 2004).
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Illustrative Claim
Independent claim 1 further illustrates the invention. It reads as
follows:
1. A method for secure data backup and recovery of an
electronic device having a device identification that is unique
and unalterable, comprising:
identifying backup data;
encoding a backup data set that comprises the backup
data and the device identification for integrity and
authentication using a cryptographic key and an integrity
function;
generating decoded backup data and a decoded device
identification and verifying integrity by decoding a retrieved
backup data set using the cryptographic key and the integrity
function;
verifying authenticity by matching the decoded device
identification to the device identification; and
restoring the backup data with the decoded backup data
only when the integrity and authenticity have been verified.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Yamauchi 2003/0074569 A1 Apr. 17, 2003
Bells 2005/0137983 A1 Jun. 23, 2005

ALFRED J. MENEZES ET AL., HANDBOOK OF APPLIED CRYPTOGRAPHY,
22-23, 27-28, 31-33, 321-23 (CRC Press 1996) (hereinafter “Menezes”).

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Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
1. Claims 1 through 6, 8 through 15, and 17 through 19 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Yamauchi and Menezes.
2. Claim 16 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Yamauchi, Menezes, and Bells.

Appellants’ Contentions
Appellants contend that the combination of Yamauchi and Menezes
does not render independent claim 1 unpatentable. (App. Br. 4, Reply Br. 2-
3.) According to Appellants, Yamauchi’s teaching of cryptographically
protecting a content key and ID is self sufficient, and would not further
benefit from Menezes’ disclosure of using an additional integrity function.
(Id.) In Appellants’ view, the proffered modification would probably cause
Yamauchi’s content key and ID to fail, and would further result in
unnecessary computational costs due to the introduction of random noise
therein. (Id.)

Examiner’s Findings
The Examiner finds that incorporating Menezes’ disclosure of using
an integrity function into Yamauchi’s system would provide the benefits of
data integrity to Yamauchi’s encoding/decoding of the content key, ID and
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back up data in a similar fashion as disclosed in Appellants’ invention.
(Ans. 13-14.)

II. ISSUE
Have Appellants shown that the Examiner erred in finding that the
combination of Yamauchi and Menezes would result in providing data
integrity to the encryption/decryption of backup data, as recited in
independent claim 1?

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Yamauchi
1. As shown in Figures 1 and 2, Yamauchi discloses a backing up
storage medium (2) to be used with a content reproduction device (1) having
a unique ID and an encryption/decryption key (content key) to encrypt or
decrypt backup data. (Paras. [0005], [0017], and [0019].)
2. Yamauchi discloses restoring backed up data only to a
reproduction apparatus having the unique ID that was used to derive the
back up data. (Para. [0023].)
Menezes
3. Menezes discloses that digital signatures and data integrity are
cryptographic uses of hash functions. (P. 33.) They offer the benefits of
saving time and space. (Id.) When used for data integrity, the hash function
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re-computes the hash value using the input at hand and compares it for
equality with the original hash value to ensure that it has not been altered.
(Id.)

IV. PRINCIPLES OF LAW
Obviousness
“On appeal to the Board, an applicant can overcome a rejection [under
§ 103] by showing insufficient evidence of prima facie obviousness or by
rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.” In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)
(citation omitted).

V. CLAIM GROUPING
Appellants argue the patentability of claims 1, 18 and 19 together.
Claim 1 is representative. In accordance with 37 C.F.R. § 41.37(c)(1)(vii)
(2008) , we consider claims 1 through 6 and 8 through 19 as standing and
falling with claim 1.

VI. ANALYSIS
Independent claim 1 requires, in relevant part, encoding/decoding
backup data using a cryptographic key and an integrity function. As set
forth in the Findings of Fact section, supra., Yamauchi discloses a
reproduction apparatus that contains a unique ID and uses a cryptographic
key in conjunction therewith to encrypt/decrypt backup data. (FF. 1.)
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Further, Menezes discloses that integrity functions are used for verifying the
integrity of encoded/decoded data. (FF. 3.) We find that one of ordinary
skill in the art would have readily recognized that the incorporation of
Menezes’ integrity function into Yamauchi’s system would enable it to
determine whether the encoded backup data matches the decoded backup
data to thereby detect any alteration in the original backup data. (FF. 2-3.)
In their arguments, Appellants argue adding an integrity function to the
content key of Yamauchi would not provide an advantage since the content
key performs this function (Reply Br. 2); however, Appellants have not
indicated where Yamauchi teaches or suggests the content key performs an
integrity check when encrypting or decrypting. Therefore, similarly to the
benefits set forth in Appellants’ Specification, we find that the incorporation
of the integrity function in Yamauchi’s system would provide the combined
system with the benefits of ensuring that the original backed up data is being
restored to the same data and only being restored by the same device that
was used in deriving it. Thus, we are not persuaded by Appellants’ argument
that the integrity function is unnecessary in Yamauchi’s system; that it
would fail; and that it would thus require additional processing. It follows
that Appellants have not shown that the Examiner erred in concluding that
the combination of Yamauchi and Menezes renders claim 1 unpatentable.

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VII. CONCLUSION OF LAW
Appellants have not established that the Examiner erred in rejecting
claims 1 through 6 and 8 through 19 as being unpatentable under
35 U.S.C. § 103(a).

VIII. DECISION
We affirm the Examiner's rejection of claims 1 through 6 and 8
through 19.

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) (2009).

AFFIRMED

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