Ex Parte Sela et al

Patent Trial and Appeal Board

Oct 18, 2017

12775956 (P.T.A.B. Oct. 18, 2017)

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.
12/775,956 05/07/2010 Rotem Sela 10519/1597 1197
(MSA-1339C-US)
67813 7590
BGL/
P.O. BOX 10395
CHICAGO, IL 60610
EXAMINER
MERCADO, RAMON A
ART UNIT PAPER NUMBER
2132
MAIL DATE DELIVERY MODE
10/18/2017 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 PATENT TRIAL AND APPEAL BOARD
Ex parte ROTEM SELA, MICHAEL HOLTZMAN,
and AVRAHAM SHMUEL
Appeal 2017-002461
Application 12/775,9561
Technology Center 2100
Before JOHNNY A. KUMAR, JOHN A. EVANS, and
CARL L. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—10, 12—24, and 26—28, which constitute all the
pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The real party in interest is identified as SanDisk IL, LTD. App. Br. 2.
Appeal 2017-002461
Application 12/775,956
STATEMENT OF THE CASE
Appellants’ invention relates to enforcing a file protection policy by a
storage device. Abstract; Spec. 1:3—5. Claim 1 is exemplary of the matter
on appeal (emphasis added):
1. A method of enforcing a file protection policy by a storage
device, the method comprising:
in a storage device operatively coupled with a host device, the
storage device including a memory and a memory controller for
managing the memory, the memory storing a file system that contains
a file protection policy for protecting a file stored in the memory,
performing by the memory controller:
receiving the file protection policy from a content provider that
is external to the storage device and the host device, the file
protection policy defining whether or not file protection is active for
the file stored in the storage device that the content provider
transmitted to the storage device and the file protection policy
comprising an address of memory blocks that store the file protection
policy;
providing the file protection policy to enable the host device to
comply with the file protection policy; and
protecting the file protection policy within the file system to
prevent unauthorized changes to the file protection policy.
App. Br. 7 (Claims Appendix).
REJECTIONS
Claims 1—10, 12, 13, 15—24, 26, and 27 stand rejected2 under
35 U.S.C. § 103(a) as being unpatentable over Yagawa (US 2006/0010301
2 The Heading of the Rejection does not recite claims 23, 24, and 27, which
claims depend directly or indirectly from independent claim 15, but the
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Application 12/775,956
Al; pub. Jan. 12, 2006) in view of NPL’09 (Software Protection Dongle,
Oct. 31, 2009) (“NPL’09”). Final Act. 5-10.
Claims 14 and 28 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yagawa, NPL’09, and Grynberg (US 2007/0271472 Al;
pub. Nov. 22, 2007). Id. at 10—12.
ANALYSIS
Appellants argue the Examiner errs in finding the combination of
Yagawa and NPL’09 teaches the limitations of claim 1. App. Br. 4—5; Reply
Br. 3^4. According to Appellants, the Examiner concedes Yagawa does not
teach the limitation “receiving the file protection policy from a content
provider that is external to the storage device and the host device” (also
referred to by Appellants as “external management entity”) and errs in
finding that one of ordinary skill in the art would understand that the
NPL’09 dongle would serve as the external management entity. Id.
In particular, Appellants argue the Examiner has not shown that
combining Yagawa with the NPL’09 dongle would cure the deficiency of
Yagawa because “in order to combine Yagawa and NPL’09 to perform the
actions at a management entity external to a storage device and a host, the
action[s] in Yagawa that are performed on a file system server would instead
need to be performed on a NPL’09 [dongle]” and “the simplistic dongle of
NPL’09 would not be able to implement the functions of the storage system
of Yagawa in order to generate and update a locked block bitmap containing
context of the rejection includes these claims. See Final Act. 5, 10; App. Br.
6.
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Application 12/775,956
a current status of memory blocks at a storage device.” App. Br. 4—5; Reply
Br. 3^4.
The Examiner finds the combination of Yagawa and NPL’09 teaches
the limitations of claim 1 and NPL’09 teaches the external management
entity. Final Act. 5—8; Ans. 2—5. Regarding the “simplistic dongle
assertion,” the Examiner finds the NPL’09 dongle has the necessary
capabilities to perform the actions of the claimed external management
entity. Ans. 3^4. The Examiner finds NPL’09 teachings include, for
example: dongles are used for digital rights management; dongles are active
devices with microprocessors to handle transactions with a host; essential
parts of software may be stored and executed on the dongle; thousands of
lines of important computer program code can be ported into the dongle; the
NPL’09 dongle is a complex computing environment capable of storing and
executing thousands of lines or code, and even completed applications; and
“[therefore, a person of ordinary skill in the art would have known, at the
time of the invention, to store Yagawa's file protection policy external to the
storage and the host device in a dongle.” Ans. 3^4 (citing NPL’09, pgs. 1—
3).
The Examiner finds “NPL'09 discloses that a more innovative modem
dongle is designed with a code porting mechanism, meaning you can
transfer part of your important program code or license enforcement into a
secure hardware environment [second to last paragraph under Issue section
on p. 3]” and “[a]s such, the examiner has provided plenty of evidence that
any part of the software of Yagawa (i.e. lock bitmap, etc.) can be ported into
a dongle with predictable results.” Id. at 4.
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Application 12/775,956
Appellants further argue the Examiner errs in finding Yagawa teaches
the claim 1 limitation “the file protection policy comprises an address of
memory blocks that store the file protection policy.” App. Br. 5; Reply Br.
4. According to Appellants, the Yagawa metatable is “not the same as the
locked block bitmap (the purported file protection policy).” Id. (citing
Yagawa 63, 64); see also Reply Br. 4.
The Examiner finds Yagawa’s lock block bitmap is the file protection
policy and the address of memory blocks that store the file protection policy
is the address of the lock block bit map. Ans. 4—5. In particular, the
Examiner finds:
In other words, address of memory blocks that store the file
protection policy is metadata of the lock block bitmap. Yagawa
discloses extent metadata (such as memory address, block size,
write protect status, and retention period) as well as metadata
relating to the specific data files (such as file memory address,
file block size, and file type) [|[0033]. Therefore, it would have
been obvious to a person of ordinary skill in the art to provide
metadata for the locked block bitmap (such as memory address,
bitmap size, status, etc.).
Id. at 5.
The Examiner finds one of ordinary skill would combine the teachings
of Yagawa’s system and NPL’09 dongle because of the additional security
provided and the combination would yield a predictable result. Final Act. 6—
7; Ans. 3—5. In particular, the Examiner finds:
Yagawa clearly teaches the storage system and file protection
policies of claim 1. The issue of non-obviousness resides in
whether it would have been obvious to a person of ordinary skill
in the art to take a portion of the Yagawa’s application that
implements the storage and file protection policies (i.e. the lock
block bitmap) and move it external to the storage and host.
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NPL'09 explicitly teaches that for security purpose portions of
code/software/applications may be ported or extracted to an
external hardware (e.g. dongle); stored and executed in the
external hardware. Therefore, the examiner sustains that the
invention of claim 1 is obvious over the prior art.
Ans. 5.
We are not persuaded by Appellants’ arguments and agree, instead,
with the Examiner’s findings and conclusions. Appellants interpret the
teachings of the cited references unreasonably narrowly and present no
persuasive evidence that the Examiner’s findings regarding the teaching of
Yagawa and NPL’09 are unreasonable. Moreover, Appellants present no
persuasive evidence that the Examiner’s interpretation of the phrase “content
provider that is external. . .” to include the NPL’09 dongle is unreasonable
or overbroad. We note the term is not defined in the Specification and is
used in exemplary fashion. Spec. 6—7, 17 (“Management entity 140 may be
a service provider or a content provider, or the like” and “described
exemplary embodiments”). Claim terms in a patent application are given the
broadest reasonable interpretation consistent with the Specification, as
understood by one of ordinary skill in the art. In re Crish, 393 F.3d 1253,
1256 (Fed. Cir. 2004).
Moreover, Appellants argue the references individually whereas the
rejection is based on the combination of the references. In re Keller, 642
F.2d 413, 426 (CCPA 1981) (“[0]ne cannot show non-obviousness by
attacking references individually where, as here, the rejections are based on
combinations of references” (citations omitted)); In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986).
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As stated by the Supreme Court, the Examiner’s obviousness rejection
must be based on:
“[S]ome articulated reasoning with some rational underpinning
to support the legal conclusion of obviousness” .... [Hjowever,
the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)).
The Examiner’s findings are reasonable because the skilled artisan
would “be able to fit the teachings of multiple patents together like pieces of
a puzzle” since the skilled artisan is “a person of ordinary creativity, not an
automaton.” KSR, 550 U.S. at 420-21.
On this record, Appellants do not present sufficient or persuasive
evidence that the combination of the cited references was “uniquely
challenging or difficult for one of ordinary skill in the art” or “represented an
unobvious step over the prior art.” Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 419-21).
Nor have Appellants provided objective evidence of secondary
considerations, which our reviewing court guides “operates as a beneficial
check on hindsight.” Cheese Sys., Inc. v. Tetra Pak Cheese & Powder Sys.,
Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
In view of the above, we sustain the rejection of claim 1, and
independent claim 15 which is commensurate in scope and for which
Appellants rely on the same arguments. We also sustain the rejection of
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dependent claims 2—10, 12—14, 16—24, and 26—28 as these claims are not
argued separately. See 37 C.F.R. § 41.37(c)(l)(iv).
DECISION
We affirm the Examiner’s decision rejecting claims 1—10, 12—24, and
26-28.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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