Ex Parte Murthy

Board of Patent Appeals and Interferences

Sep 15, 2010

10926497 (B.P.A.I. Sep. 15, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PURNA C. MURTHY
____________

Appeal 2009-006681
Application 10/926,497
Technology Center 2400
____________

Before JOHN C. MARTIN, KARL D. EASTHOM, and CARL W.
WHITEHEAD, Administrative Patent Judges.

EASTHOM, 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
Appellant appeals under 35 U.S.C. § 134 from the rejection of claims
1-4, 18-19, and 21-27. Claims 5-17 and 20 have been cancelled. No other
claims are pending. (App Br. 5.) We have jurisdiction under 35 U.S.C. §
6(b).
We affirm-in-part.
The Disclosed Invention2
The disclosed invention calculates data error recovery information to
recover data that may be lost as a result of failures of one or more disk
drives. (Spec. 8.) The invention calculates the data error recovery
information by performing multiplication operations using coefficients, the
data to be written to the disks, and encryption keys so that the result of the
multiplication operations has the same number of bits as the coefficients.
(Spec. 8, 12.) The invention “determine[s] whether one particular
encryption key produces valid results for all possible multiplications.”
(Spec. 13:23-24.) Encryption keys can have greater than four bits. (Spec.
12.)
The specification also discloses the striping of data across multiple
drives. “With reference to Fig. 1A, data D is the combination of the smaller
portions of data being [d0 , d1 , d2]. Placing small portions on each drive of a
multiple drive system is known as striping.” (Spec. 2:21-23.) The
specification further discloses rotating between different drives that store the
parity information for a block of data so that “no one hard drive becomes the
receptacle for all those parity writes.” (Spec. 4:19-20.) “Manufacturers

2 The ensuing description constitutes findings of fact.
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address this problem by rotating the parity drive. That is, rather than having
designated data and parity drives, the particular hard drive containing the
parity information shifts for each block of parity data.” (Spec. 4:16-18.)
Exemplary claim 1 follows:
1. A computer system comprising:
a processor;
a main memory coupled to the processor; and
a plurality of data drives coupled to the processor and configured to
operate in a fault tolerant mode;
said computer system configured to calculate data error recovery
information based on greater than four bit encryption keys and encrypted
resultant multiplication; and
said computer system is configured to write the data error recovery
information to at least one of the plurality of data drives.
The Examiner relies on the following prior art references:
Callison US 5,737,744 Apr. 7, 1998

Den Boer US 6,298,136 B1 Oct. 2, 2001

Luby US 6,320,520 B1 Nov. 20, 2001

The Examiner rejected claims 26 and 27 for failing to meet the written
description requirement of 35 U.S.C. § 112.
The Examiner rejected claims 1-3, 18, 19, 21-23 and 25-27 as obvious
under 35 U.S.C. § 103(a) based on Callison and Den Boer.
The Examiner rejected claims 4 and 24 as obvious under 35 U.S.C. §
103(a) based on Callison, Den Boer, and Luby.

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ISSUES
Appellant’s responses to the Examiner’s positions present the
following issues:
1. Did the Examiner err in finding that claims 26 and 27 fail to meet
the written description requirement of 35 U.S.C. § 112?
2. Did the Examiner err in finding that independent claims 1, 21, and
26 are obvious based on Callison and Den Boer?

FINDINGS OF FACT (FF)
Callison
1. Callison discloses a disk controller board that “performs hardware
assisted exclusive OR (XOR) operations to generate parity bits associated
with the fault tolerance scheme used by a disk array system.” (Col. 2, ll. 22-
25.)
2. “The disk controller board 10 is connected either to an EISA bus or
a PCI bus 100, which provides the communications channel to the other
components of a host computer system.” (Col. 3, ll. 22-24; Figure 1.) The
host includes a memory. (Col. 3, l. 49.)
Den Boer
3. A portion of Den Boer’s abstract follows:
A method and apparatus for cryptographically converting
a digital input data block into a digital output data block. The
apparatus has an input for supplying the input data block and a
further input for supplying a code conversion digital key K1.
Cryptographic processing merges a selected part M1 of the
digital input data block with the key K1 to produce a data block
B1 which is non-linearly dependent on M1 and K1.

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4. Den Boer discloses the use of encryption keys having more than
four bits in a cipher function. (Col. 5, ll. 44-65.)
5. “It is an object of the invention to provide a cryptographic method
and apparatus of the kind set forth which is more robust against
cryptanalytic attacks.” (Col. 2, ll. 48-50.) “As such, adding the key bits to
the data is an integrated part of the non-linear operation, making the system
more immune against modern attacks, such as differential cryptanalysis.”
(Col. 2, ll. 61-64.)
PRINCIPLES OF LAW
The Examiner bears an initial burden of factually supporting an
articulated rejection. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
On appeal, Appellant may rebut the Examiner’s findings and reasoning with
opposing evidence or argument. Failure to do so may constitute a waiver of
potential arguments. See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI
2010) (precedential) (“If an appellant fails to present arguments on a
particular issue — or, more broadly, on a particular rejection — the Board
will not, as a general matter, unilaterally review those uncontested aspects of
the rejection.”); Hyatt v. Dudas, 551 F.3d 1307, 1313-14 (Fed. Cir. 2008)
(the Board may treat arguments appellant failed to make for a given ground
of rejection as waived); 37 C.F.R. § 41.37(c)(1)(vii).
The written description requirement under 35 U. S. C. § 112, ¶1
follows:

The specification shall contain a written description of
the invention, and of the manner and process of making and
using it, in such full, clear, concise, and exact terms as to enable
any person skilled in the art to which it pertains, or with which
it is most nearly connected, to make and use the same and shall
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set forth the best mode contemplated by the inventor of
carrying out his invention.

“‘[T]here must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.’” KSR Int’l
Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (citation omitted).
ANALYSIS
Issue 1- Claims 26-27
The Examiner asserts that claims 26 and 27 do not meet the written
description requirement of the first paragraph of 35 U. S. C. § 112 because
“there is no disclosure of the limitation, ‘to stripe the first parity datum and
the second parity datum across the disk drives’ [as recited in independent
claim 26,] or ‘to stripe the subsets of the block of data, the first parity datum
and the second parity datum across the disk drives [as recited in dependent
claim 27]’ .” (Ans. 4.) The Examiner also points out that these limitations
do not appear in any original claims as filed. (See Ans. 15-16.)
Appellant asserts that the specification does disclose these claim
limitations. (App. Br. 11-13; Reply Br. 3.) Appellant argues that the
specification discloses the striping of a data block because it explains that
small portions of the data block are placed on each drive of a multiple drive
system. (App. Br. 12.) As indicated supra, the claim limitations identified
by the Examiner, however, recite more than the striping of a data block; they
also recite the striping of the first parity datum and the second parity datum.
Appellant also argues that the specification discloses the striping of
parity information. (App. Br. 12; Reply Br. 3.) But the portion of the
specification cited by Appellant does not mention that small portions of each
of the first parity datum or the second parity data are placed on different
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drives of a multiple drive system. Rather, the specification explains only
that the parity drive is rotated so that a particular hard drive does not become
the receptacle for all parity writes. (Supra at 2-3.) In other words, “the
particular hard drive containing the parity information shifts for each block
of parity data.” (Id. at 4.)
Appellant also argues that the “MPEP expressly mandates that
examiners examine the entire specification when assessing compliance with
the written description requirement.” (App. Br. 11.) This argument does not
demonstrate how the specification provides support for the striping of the
first or second parity datum.
In addition, Appellant traverses the Examiner’s rejection because,
contrary to the Examiner’s assertion in the Final Office Action, “[n]either
claim 26 nor claim 27 uses the term ‘strip.’” (App. Br. 12.) The Examiner
explained that “[t]he term ‘strip’ should have been [spelled] ‘stripe’.” (Ans.
16.) The Examiner’s explanation is persuasive.
Based on the foregoing discussion, we will sustain the Examiner’s
rejection of claims 26 and 27 as invalid for failing to meet the written
description requirement.
Issue 2- Claims 1-4, 18, 19, and 21-27
Appellant asserts that independent claim 1 is not obvious over the
combination of Callison and Den Boer. (App. Br. 13-17.) Appellant argues
that there is no motivation to combine Callison with Den Boer to address the
“problem to be solved by the present invention, and thus the references are
not properly considered together.” (Id. at 16.) Appellant explains that Den
Boer fends off attacks such as differential cryptanalysis (FF 5) while the
claimed invention calculates data error recovery information. (App. Br. 16.)
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Appellant also argues that combining Den Boer with Callison would change
the principle of operation of Callison because Callison discloses hardware
acceleration of XOR calculations for parity information (FF 1), while Den
Boer discloses “non-linearly merging two data blocks, which is clearly not
solely an XOR operation” (FF 3). (App. Br. 16-17.) In addition, Appellant
argues that even if Callison and Den Boer were combined, the combination
would not disclose the calculation of “data error recovery information based
on greater than four bit encryption keys and encrypted resultant
multiplication. (Id. at 15 (emphasis omitted).) Appellant explains that the
combination would only suggest the encryption of data to protect “against
attack by differential cryptanalysis.” (Id.)
The Examiner explains that “[e]rror correction and security are both
mechanisms to attempt to protect and guarantee data integrity.” (Ans. 18.)
But the Examiner’s explanation fails to demonstrate that one of ordinary
skill in the art would be motivated to use the encrypted multiplication
disclosed in Den Boer to compute data recovery information as recited in
claim 1. In addition, the Examiner does not respond to Appellant’s
argument that combining Den Boer with Callison would change the
principle of operation of Callison. (Ans. 18-19.)
Accordingly, the Examiner’s explanation falls short of “‘some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness,’” as mandated by KSR, 550 U.S. at 418 (citation
omitted).
Therefore, we will not sustain the Examiner’s obviousness rejection of
independent claim 1 and claims 2, 3, 18, 19, and 25 dependent therefrom.
Similar to claim 1, independent claims 21 and 26 require the generation of
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parity information based on an encryption key. Accordingly, we also will
not sustain the Examiner’s obviousness rejection of independent claims 21
and 26 and claims 22, 23, and 27 dependent therefrom. We also will not
sustain the obviousness rejection of claims 4 and 24 based on the additional
reference to Luby because the Examiner does not assert that Luby cures the
above-described deficiency in the under-lying combination based on
Callison and Den Boer.
CONCLUSION
The Examiner erred in finding that claims 1-4, 18, 19, and 21-27 are
obvious based on combinations involving Callison, Den Boer, and/or Luby.
The Examiner did not err in finding that claims 26 and 27 do not satisfy the
written description requirement of the first paragraph of 35 U.S. C. § 112.
DECISION
We affirm the Examiner’s decision rejecting claims 26-27. We
reverse the Examiner’s decision rejecting claims 1-4, 18, 19, and 21-25.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136. See 37 C.F.R.
§ 1.136(a)(1)(v).

AFFIRMED-IN-PART

KMF

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