ALCATEL-LUCENT USA, INC.

Patent Trials and Appeals Board

Aug 27, 2020

2019003022 (P.T.A.B. Aug. 27, 2020)

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.
14/713,525 05/15/2015 Katherine H. GUO ALC 3979 6596
76614 7590 08/27/2020
Terry W. Kramer, Esq.
Kramer & Amado, P.C.
330 John Carlyle Street
3rd Floor
Alexandria, VA 22314
EXAMINER
WILLIAMS, JEFFERY L
ART UNIT PAPER NUMBER
2495
NOTIFICATION DATE DELIVERY MODE
08/27/2020 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):
mail@krameramado.com
nokia.ipr@nokia.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte KATHERINE H. GUO and KRISHAN K. SABNANI
____________________

Appeal 2019-003022
Application 14/713,525
Technology Center 2400
____________________

Before JOSEPH L. DIXON, MAHSHID D. SAADAT, and
DONNA M. PRAISS, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from a non-final
rejection of claims 1–20, which constitute all the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The claims are directed to a non-transitory machine-readable storage
medium including an enterprise file system to end user devices via a virtual
private network (VPN) with instructions for obfuscating metadata and

1 We use the word “Appellant” to refer to “applicant(s)” as defined in 37
C.F.R. § 1.42. The real party in interest is not identified in the Appeal Brief,
however, Alcatel-Lucent USA, Inc. is the recorded assignee of Application
14/713,525.
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2
encrypting at least a portion of the enterprise file system. Independent claim
1, reproduced below, is illustrative (disputed limitation italicized).
1. A non-transitory machine-readable storage
medium encoded with instructions for execution by an
enterprise server, the non-transitory machine-readable storage
medium comprising:
instructions for providing access to an enterprise file
system to end user devices via a virtual private network (VPN);
instructions for obfuscating metadata and encrypting at
least a portion of the enterprise file system to produce an
encrypted file system, wherein an encrypted file from the
encrypted file system is capable of being decrypted using a
decryption key;
instructions for transmitting the encrypted file system to
a content distribution network (CDN) server for storage and
access, wherein the CDN server is located outside the VPN and
both data and metadata are kept secret from a CDN operator;
and
instructions for transmitting the decryption key to an end
user device via the VPN.
Appeal Br. 14 (Claims Appendix). Claims 8 and 15, directed to an
enterprise server and a method performed by an enterprise server,
respectively, are also independent and, similar to claim 1, require
“obfuscating metadata and encrypting at least a portion of the
enterprise file system” and “both data and metadata are kept secret
from a CDN operator.” Id. at 16, 18.

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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Name Reference Date
Davis et al. (“Davis”) US 2014/0006465 A1 Jan. 2. 2014
Hook et al. (“Hook”) US 2014/0164776 A1 June 12, 2014
Taylor et al. “(Taylor”) US 2015/0023501 A1 Jan. 22, 2015

REJECTIONS
The Examiner maintains the following rejections:
Claim(s) 35 U.S.C. § Reference(s)
1–4, 8–11, 15–17 102(a)(1) Hook evidenced by Taylor
5–7, 12–14, 18–20 103 Hook, Davis

ANALYSIS
§ 102 Rejection of Claims 1–4, 8–11, and 15–17
Appellant argues independent claims 1, 8, and 15 together as a group
and relies on the dependency of claims 2, 9, and 16 from claims 1, 8, and 15,
respectively. Appeal Br. 6–7, 10. We select claim 1 as representative of the
grouped claims. Claims 2, 8, 9, 15, and 16 stand or fall with claim 1. See 37
C.F.R. § 41.37(c)(1)(iv).
Appellant contends the Examiner erred in finding Hook discloses
every element of claim 1 “because ‘obfuscated’ has been mistakenly equated
to be identical to ‘encrypted.’” Appeal Br. 6 (emphasis added). Appellant
directs us to the Specification’s paragraph 34 as separately disclosing
encryption and metadata obfuscation techniques that are used to keep data
and metadata secret from the CDN operator. Id. Appellant also directs us to
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Specification paragraphs 44 and 46 regarding “transformation” of filenames,
and paragraph 49 regarding “additional metadata protection” by splitting
“files into multiple blocks.” Id.
The Examiner provides dictionary definitions for the term “obfuscate”
and concludes “obfuscating metadata” recited in claim 1 “would broadly
encompass the idea of obscuring or concealing metadata.” Ans. 4. The
Examiner finds “encryption” is a specific technique for obscuring or
concealing information, therefore, “encryption” is a form of obfuscation. Id.
The Examiner cites a number of patent publications, including Taylor, as
evidence that a person having ordinary skill in the art would understand
“encryption” is a form of obfuscation. Id. at 5–6. Regarding Appellant’s
Specification, the Examiner directs us to paragraph 23 which refers to
encryption or other obfuscation techniques. Id. at 6. Because the Examiner
finds obfuscation is a broad genus of which encryption is a species, the
Examiner notes that the terms are not treated as being identical. Id. at 10–12.
We disagree with Appellant that the Examiner’s anticipation rejection
is based on an interpretation of “obfuscating” and “encrypting” being
identical. The Examiner finds that “encrypting” is one technique for
“obfuscating” metadata. Thus, the Examiner’s broadest reasonable
interpretation of “obfuscating” is that it has a broader meaning than
“encrypting” and overlaps “encrypting” rather than having an identical
meaning as Appellant argues. The Examiner’s finding is supported by a
preponderance of the evidence cited in this Appeal record and is consistent
with the Specification. Ans. 6; Spec. ¶ 23.
In the Reply Brief, Appellant asserts the Examiner “mistakenly
assumed” the terms “obfuscating” and “encrypting” overlap (Reply Br. 3),
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however, Appellant does not adequately explain why “obfuscating” does not
encompass the technique of “encrypting” nor does Appellant direct us to any
requirement in the claim itself that the obfuscating technique of encrypting is
precluded for the recited “obfuscating metadata” function. Appellant further
contends that “the Examiner failed to address separate obfuscating of
metadata and encrypting of at least a portion of the enterprise file system.”
Id. at 3–4 (emphasis omitted). According to Appellant, “Hook does not
respectively refer to ‘metadata’ in the context of obfuscating and the
enterprise file system in the context of ‘encrypting.’” Id. at 4 (emphasis
omitted). Appellant’s arguments are not persuasive of error because the
Examiner provides separate citations to Hook for each of the “obfuscating
metadata” (Hook ¶¶ 328, 329, 226, 2468, 359, 363, 502) and “encrypting . . .
an enterprise file system” (Hook ¶¶ 997, 998). Non-Final Act. 5. Moreover,
there is no ipsissimis verbis test for determining whether a reference
discloses a claim element, i.e., identity of terminology is not required. In re
Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Thus, for the above reasons and
those provided in the Examiner’s Answer and the Non-Final Office Action,
we sustain the Examiner’s anticipation rejection of independent claims 1, 8,
and 15, as well as dependent claims 2, 9, and 16, argued for their
dependency on claim 1, 8, or 15. Appeal Br. 10.
Claims 3, 4, 10, 11, and 17 depend directly or indirectly from claims
1, 8, or 15 and require application of “a filename transformation to at least
one of the enterprise file system and the encrypted file system.” Appeal Br.
15, 17, 19 (Claims Appendix). Appellant separately argues the rejection of
claims 3, 4, 10, 11, and 17 on the basis that “the broadest reasonable
interpretation of the application of a ‘filename transformation’ cannot
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encompass Hook’s encrypted meta-data.” Appeal Br. 8 (emphasis omitted);
id. at 9 (“file name transformation is not the same as encryption”).
Appellant’s position is predicated on the assertion that “the Examiner has
unreasonably broadened the scope of the claim language by equating
obfuscation with encryption.” Id. at 8. Appellant acknowledges that Hook
discloses encrypted meta-data. Id. at 8–9 (citing Hook ¶¶ 362, 365).
Appellant contends that the file name transformation function disclosed in
the Specification’s paragraph 46 results in “transformed file names” such
that “at least one file in the encrypted file system has a file name that is
different from a file name of a corresponding file in the enterprise file
system.” Id. (emphasis omitted).
Appellant’s arguments are not persuasive of error because the
Examiner does not equate obfuscation with encryption as discussed above in
connection with claim 1. Appellant’s arguments are also not persuasive of
error because Appellant does not adequately support Appellant’s argument
that “filename transformation” cannot encompass encrypted meta-data as
taught by Hook. Appellant does not adequately explain why an encrypted
file name would not be understood by a person having ordinary skill in the
art as a transformed file name.
In sum, for the above reasons and those provided in the Examiner’s
Answer and the Non-Final Office Action, we sustain the Examiner’s
anticipation rejection of claims 1–4, 8–11, and 15–17.

§ 103 Rejection of Claims 5–7, 12–14, and 18–20
Appellant contends claims 5–7, 12–14, and 19 are not rendered
obvious because “Davis fails to remedy the deficiencies of Hook for
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independent claims 1, 8, and 15.” Appeal Br. 11. Appellant’s arguments do
not persuade us of error in the Examiner’s obviousness rejection for the
reasons discussed above in connection with the anticipation rejection of
claims 1, 8, and 15 over Hook. Accordingly, we likewise sustain the
rejection of claims 5–7, 12–14, and 19.
Appellant additionally contends that the rejection of claim 20 should
be reversed because the Examiner “did not present an actual rejection for
claim 20.” We are not persuaded by Appellant’s argument because the
Examiner notes that claims 12–14 and 18–20 are system and method claims
that essentially correspond to claims 5, 6, and 7 for which the Examiner
provides a detailed explanation with citations to Hook and Davis. Non-Final
Act. 7–9. Appellant provides no basis in this record to establish that the
Examiner’s findings with respect to claims 5, 6, and 7 are insufficient to also
apply to claim 20. “It is not the function of [the U.S. Court of Appeals for
the Federal Circuit] to examine the claims in greater detail than argued by an
appellant, looking for nonobvious distinctions over the prior art.” In re
Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991). “Similarly, it is
not the function of this Board to examine claims in greater detail than argued
by an appellant, looking for distinctions over the prior art.” Ex Parte Shen,
No. 2008-0418, 2008 WL 4105791 at * 9 (BPAI Sept. 4, 2008). Thus,
Appellant has not identified error in the Examiner’s rejection of 20.
Accordingly, we likewise sustain the obviousness rejection of claim 20
under 35 U.S.C. § 103.

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CONCLUSION
The Examiner did not err in rejecting claims 1–4, 8–11, and 15–17 as
anticipated under 35 U.S.C. § 102(a)(1).
The Examiner did not err in rejecting claims 5–7, 12–14, and 18–20
based upon obviousness under 35 U.S.C. § 103.

DECISION
For the above reasons, we AFFIRM the Examiner’s anticipation
rejection of claims 1–4, 8–11, and 15–17 under 35 U.S.C. § 102(a)(1), and
we AFFIRM the Examiner’s obviousness rejection of claims 5–7, 12–14,
and 18–20 under 35 U.S.C. § 103.

In summary:

Claim(s)
Rejected 35 U.S.C. § Basis/Reference(s) Affirmed Reversed
1–4, 8–11, 15–17 102(a)(1) Hook evidenced by Taylor
1–4, 8–11,
15–17
5–7, 12–14, 18–20 103 Hook, Davis 5–7, 12–14, 18–20
Overall Outcome 1–20

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