Ex Parte Starr et al

Patent Trial and Appeal Board

Jun 16, 2014

12641681 (P.T.A.B. Jun. 16, 2014)

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.
12/641,681 12/18/2009 Matthew Thomas Starr 3023735 US03 1064
67070 7590 06/16/2014
Spectra Logic Corporation
6285 Lookout Road
Boulder, CO 80301
EXAMINER
HERZOG, MADHURI R
ART UNIT PAPER NUMBER
2438
MAIL DATE DELIVERY MODE
06/16/2014 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 MATTHEW THOMAS STARR,
JEFF ROBERT BOYTON, and
NATHAN CHRISTOPHER THOMPSON
____________

Appeal 2012-001893
Application 12/641,681
Technology Center 2400
____________

Before ROBERT E. NAPPI, CARL W. WHITEHEAD JR., and
ROBERT J. WEINSCHENK, Administrative Patent Judges.

WEINSCHENK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-12 and 14-21. Claim 13 is canceled (App. Br. 32). We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

STATEMENT OF THE CASE
Introduction
Appellants’ invention relates to storing encrypted data along with a
message authentication code and moniker associated with a decryption key
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on a mobile medium adapted for use in a data storage library (Spec.
¶ [0002]).
Claim 1, which is illustrative, reads as follows:
1. A data storage library comprising:
a plurality of drives;
a controller device adapted to encrypt a first data package
received from the client in accordance with a first key;
the controller device further adapted to transmit the
encrypted first data package, a first moniker associated with the
first key and a first message authentication code generated
based on the first data package to one of the plurality of drives
for storage to a cooperating mobile storage medium;
the controller device further adapted to decrypt the first
data package when used in combination with the first key
associated with the first moniker and confirm successful
decryption of the first data package via the first message
authentication code.
Rejections on Appeal
Claims 14-17 stand rejected under 35 U.S.C. § 112, ¶ 2, as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which applicants regard as the invention (see Ans. 5-6).
Claims 1, 5-11, and 18-21 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Shirouzu (US 2004/0103292 A1; published May 27,
2004) and Handbook of Applied Cryptography (1997) (hereinafter,
“Menezes”) (see Ans. 6-18).
Claims 2-4 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shirouzu, Menezes, and Goodman (US 2005/0071591 A1;
published Mar. 31, 2005) (see Ans. 18-20).
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Claims 12, 14, and 17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Shirouzu, Menezes, and Bharat (US 6,577,735 B1;
issued June 10, 2003) (see Ans. 21-26).
Claim 15 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shirouzu, Menezes, Bharat, and Goodman (see Ans. 26-
27).
Claim 16 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shirouzu, Menezes, and Bolt (US 2002/0144048 A1;
published Oct. 3, 2002) (see Ans. 27-28).
Issue on Appeal
Did the Examiner err in rejecting Appellants’ claims as being obvious
over the asserted combinations of references because those combinations do
not teach or suggest the disputed limitations recited in Appellants’ claims?
Did the Examiner err in rejecting claims 14-17 as being indefinite for
reciting both an apparatus and a method?

ANALYSIS
We review the Examiner’s rejections in light of Appellants’
contentions that the Examiner erred. We refer herein to Appellants’ Appeal
Brief filed May 31, 2011 (“App. Br.”), the Examiner’s Answer mailed
August 15, 2011 (“Ans.”), and Appellants’ Reply Brief filed September 15,
2011 (“Reply Br.”).
Rejections under 35 U.S.C. § 103(a)
With respect to claim 1, Appellants argue Shirouzu does not teach a
first moniker associated with the first key (App. Br. 10-11). Specifically,
Appellants argue claim 1 requires a first moniker directly associated with the
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first key, but the Examiner only points to a moniker in Shirouzu indirectly
associated with the first key (App. Br. 11). Appellants’ argument is not
persuasive. We agree with the Examiner (Ans. 29) the claim term
“associated,” when given its broadest reasonable interpretation, encompasses
both direct and indirect associations. The portions of the Specification cited
by Appellants (App. Br. 11) do not compel a narrower interpretation.
With respect to claim 1, Appellants admit Menezes teaches a message
authentication code, but argue Menezes does not teach transmitting the
message authentication code along with a moniker for storage to a
cooperating mobile storage medium (App. Br. 11-12; Reply Br. 6).
Appellants’ argument is not persuasive. The Examiner concludes it would
have been obvious to one of ordinary skill in the art at the time of the
invention to store the message authentication code along with the encrypted
data because the message authentication code must be stored with the data in
order to subsequently be used for its intended purpose of confirming the
successful decryption of the data (Ans. 30). We find the Examiner’s
conclusion to be supported by articulated reasoning with some rational
underpinning. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
With respect to claim 4, Appellants argue Goodman’s teaching of
receiving a key from the client cannot be combined with Shirouzu because
Goodman teaches a single key and Shirouzu teaches dividing a key into
pieces (App. Br. 14). Appellants’ argument is not persuasive. As the
Examiner explains (Ans. 32), Shirouzu teaches creating a single key and
subsequently splitting the key into pieces before it is stored (Shirouzu
¶¶ [0052], [0053]). Therefore, Goodman’s teaching of receiving a single
key from the client can be combined with the teachings of Shirouzu at least
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because the system of Shirouzu can receive a single key from the client and
then split the key into pieces for storage.
With respect to claim 6, Appellants argue Shirouzu does not teach
knowledge of the key in at least two separate locations because the key is
not known when it is divided into pieces and stored in multiple locations
(App. Br. 15). Appellants’ argument is not persuasive. As the Examiner
explains (Ans. 32-33), Shirouzu teaches storing key data elements in the key
data table (Shirouzu ¶ [0053]) and, at the same time, storing key data
elements in the memory (Shirouzu ¶¶ [0058], [0062]). We agree with the
Examiner that, under the broadest reasonable interpretation of the claim
language, there is knowledge of the key in the key data table and the
memory because they contain all the key data elements that form the key.
With respect to claim 7, Appellants argue Shirouzu does not teach
storing two encrypted data packages on a common medium because
Shirouzu teaches storing an encrypted data package to “a lot of different
tapes” (App. Br. 16; Reply Br. 7-8). Appellants’ argument is not persuasive.
We conclude claim 1’s term “mobile storage medium,” when given its
broadest reasonable interpretation, encompasses multiple tapes. Appellants
do not identify any evidence that compels a narrower interpretation. Further,
Shirouzu teaches storing an encrypted data package on one magnetic tape
cartridge, MCk (Shirouzu ¶ [0063]), not to a lot of different tapes as
Appellants contend.
With respect to claim 9, Appellants argue Shirouzu does not teach the
first moniker and first key are replaced by a second moniker associated with
a second key after a predetermined amount of time (App. Br. 18-19). We
agree with Appellants. The Examiner concludes all controllers in Shirouzu
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are tied up until the encryption process for the first data is finished, and thus
the second data will undergo encryption at a different time (Ans. 34-35).
However, the Examiner does not cite to any support in Shirouzu for that
conclusion or explain why it would be inherent. Further, the Examiner
concludes it would be inherent to replace the first moniker and first key with
a second moniker and second key, but does not identify any support for that
conclusion (Ans. 13-14, 35). For example, the Examiner does not explain
why the system in Shirouzu could not store the second moniker and second
key in a different location, rather than replacing the first moniker and first
key. Therefore, we do not sustain the Examiner’s rejection of claim 9.
With respect to claim 12, Appellants present the same arguments
addressed above with respect to claim 1 (App. Br. 20). For the reasons
discussed above, Appellants’ arguments are not persuasive.
With respect to claim 14, Appellants argue Menezes does not teach
transmitting the first message authentication code from a controller device to
the one of a plurality of drives (App. Br. 21). For the reasons discussed
above with respect to claim 1, Appellants’ argument is not persuasive.
With respect to claim 18, Appellants argue Shirouzu does not teach
generating one unique encryption key from a moniker (App. Br. 25).
Appellants’ argument is not persuasive. As the Examiner explains (Ans.
37), Shirouzu teaches using the cartridge specific data, or moniker, to
generate the key data based on the individual key data elements (Shirouzu
¶¶ [0073], [0075], [0076]). Appellants also argue Shirouzu does not teach
storing the encrypted data and the moniker on the mobile medium (App. Br.
26). Appellants’ argument is not persuasive. As the Examiner explains
(Ans. 15), Shirouzu teaches storing the cartridge specific data, or moniker, to
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the magnetic tape cartridge MCk (Shirouzu ¶ [0063], Fig. 7) and storing the
encrypted data to the same magnetic tape cartridge (Shirouzu ¶ [0063]).
Appellants also argue it would not have been obvious to store a message
authentication code on the mobile medium because each tape cartridge in
Shirouzu has a different portion of the encrypted data (App. Br. 26).
Appellants’ argument is not persuasive for the reasons discussed above with
respect to claim 1. Further, Shirouzu teaches storing all of the encrypted
data on one magnetic tape cartridge, MCk (Shirouzu ¶ [0063]), not storing
different portions on different cartridges as Appellants contend.
Because Appellants’ arguments regarding claims 1, 4, 6, 7, 12, 14,
and 18 are not persuasive, we sustain the Examiner’s rejections of those
claims under 35 U.S.C. § 103(a). Appellants present no separate arguments
for claims 2, 3, 5, 8, 10, 11, 15-17, and 19-21 (App. Br. 13, 15, 17, 19, 22-
24, 27). As a result, we also sustain the Examiner’s rejections of those
claims under 35 U.S.C. § 103(a).
Rejections under 35 U.S.C. § 112, ¶ 2
Appellants argue the Examiner erred in rejecting claims 14-17 under
35 U.S.C. § 112, ¶ 2, because claim 12 is a method claim and so are claims
14-17 (App. Br. 22-24; Reply Br. 4). Appellants’ argument is not
persuasive. Claim 12 recites “a data storage library,” which is an apparatus.
Claims 14-17 recite a “method,” which is a method. Because claims 14-17
depend from claim 12, claims 14-17 recite both an apparatus and a method.
Therefore, we sustain the Examiner’s rejection of claims 14-17 under
35 U.S.C. § 112, ¶ 2. See Rembrandt Data Techs., LP v. AOL, LLC, 641
F.3d 1331, 1339 (Fed. Cir. 2011).

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DECISION
The decision of the Examiner rejecting claims 1-8, 10-12, and 14-21
under 35 U.S.C. § 103(a) is affirmed.
The decision of the Examiner rejecting claim 9 under 35 U.S.C.
§ 103(a) is reversed.
The decision of the Examiner rejecting claims 14-17 under 35 U.S.C.
§ 112, ¶ 2 is affirmed.
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).

AFFIRMED-IN-PART

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