Ex Parte Corella et al

Patent Trials and Appeals Board

Jan 23, 2019

14016022 - (D) (P.T.A.B. Jan. 23, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
14/016,022
85547 7590
Francisco Corella
Francisco Corella
FILING DATE
08/30/2013
01/25/2019
5120 Marconi Avenue #26
Carmichael, CA 95608
FIRST NAMED INVENTOR
Francisco Corella
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
A24 1057
EXAMINER
KING,JOHNB
ART UNIT PAPER NUMBER
2498
NOTIFICATION DATE DELIVERY MODE
01/25/2019 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):
francisco_corella@yahoo.com
fcorella@pomcor.com
fcorella@pomcor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANCISCO CORELLA and KAREN POMIAN LEWISON
Appeal2018-000695
Application 14/016,022 1
Technology Center 2400
Before ELENI MANTIS MERCADER, CARL L. SILVERMAN, and
JASON M. REPKO, 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 1-5, 7-13 and 15-18. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 The real party in interest is identified as Pomian & Corella, LLC. App.
Br. 3.
Appeal2018-000695
Application 14/016,022
STATEMENT OF THE CASE
The invention relates to protecting confidential data stored in a
computing device. Abstract; Fig. 1. Claim 1 is exemplary of the subject
matter on appeal (emphasis added):
1. A method of protecting confidential data stored in a computing
device, comprising:
storing the confidential data in encrypted form;
regenerating a credential from a protocredential stored in the device
and one or more secrets not stored in the device, the credential
comprising a public key and a private key, the credential not being
stored in the computing device prior to being regenerated;
requesting an externally stored content-encryption key from a
key storage service, the credential being used to authenticate the
request cryptographically to the key storage service, the
cryptographically authenticated request comprising a signature
computed with the private key, the cryptographically authenticated
request being transmitted with confidentiality protection after the key
storage service has authenticated to the computing device, the key
storage service using the public key to verify the signature, the key
storage service using a consecutive failure counter to disable a record
containing the externally stored content-encryption key after a
configured number of consecutive authentication failures; and
using the content-encryption key to decrypt the confidential
data.
App. Br. 25 (Claims Appendix).
THE REJECTIONS
Claims 1, 2, 7, 8, 10, 15, and 18 are rejected under 35 U.S.C. § 103 as
being unpatentable over Allen et al. (US 7,711,122 B2; iss. May 4, 2010)
("Allen"), Hird (US 7,328,350 B2; iss. Feb. 5, 2008) ("Hird"), and Misra et
al. (US 5,757,920; iss. May 26, 1998) ("Misra"). Final Act. 9-19.
Claims 3 and 11 are rejected under 35 U.S.C. § 103 as being
unpatentable over Allen, Hird, Misra, and Chaum (US 2010/0061553 Al;
2
Appeal2018-000695
Application 14/016,022
Mar. 11, 2010) ("Chamn"). Final Act. 20-21.
Claims 4 and 12 are rejected under 35 U.S.C. § 103 as being
unpatentable over Allen, Hird, Misra, and Rajasekaran et al. (US
2002/0083327 Al; pub. June 27, 2002) ("Rajasekaran"). Final Act. 21-22.
Claims 5 and 13 are rejected under 35 U.S.C. § 103 as being
unpatentable over Allen, Hird, Misra, and Prakash et al. (US 2010/0023782
Al; pub. Jan. 28, 2010) "Prakash". Final Act. 22-23.
Claims 9, 16 and 17 are rejected under 35 U.S.C. § 103 as being
unpatentable over Allen, Hird, Misra, and Boubion et al. (US 2007 /0223685
A 1; Sept. 2 7, 2007) ("Boubion"). Final Act. 23-25.
ANALYSIS
Appellants argue the Examiner errs in finding the combination of
Allan, Hird, and Misra teaches the claim 1 limitation, "the cryptographically
authenticated request being transmitted with confidentiality protection after
the key storage service has authenticated to the computing device. " App.
Br. 21-22. In particular, Appellants argue that the Examiner errs in finding
"Misra discloses the request being transmitted with confidentiality
protection, the request being transmitted after the key storage service has
authenticated to the computing device." App. Br. 21-22 (citing Misra
2: 10-24 ). According to Appellants, the Examiner errs in finding Misra
teaches "encrypting a digital signature with a session key before
storing/transmitting the signature" because, although the cited Misra
paragraph mentions a signature being encrypted with a session key, it "says
nothing about 'transmitting the signature."' Id. at 21. Appellants
additionally argue the cited paragraph does not mention any request, let
3
Appeal2018-000695
Application 14/016,022
alone a request being transmitted with confidentiality protection to a key
storage service after the key storage service has authenticated to a computing
device. Id. at 22. According to Appellants, the Examiner has constructed a
"fanciful combination" of Allen and Misra and applied hindsight. Id.
Appellants additionally argue the concept of a signature encrypted
under a session key is mentioned in the summary of the Misra patent, and
hinted at in claim 1 of the Misra patent, but does not appear in the detailed
description or the drawings. Id. Appellants then argue:
Id.
A person skilled in the art trying to make sense of the
Misra patent and confronted with this inconsistency between the
summary and the detailed description that it purports to
summarize would assume that the summary and the claims had
been added to the detailed description by an attorney who had
failed to understand the technical details of invention, and would
not view the concept of a signature encrypted under a session key
as a teaching of Misra worthy of consideration.
In the Answer, the Examiner notes that "All of the disclosures in a
reference must be evaluated for what they fairly teach one of ordinary skill
in the art." Ans. 4 ( citing In re Lemelson, 3 97 F .2d 1006, 1009 ( CCP A
1968) ); see also Ans. 5 ( citing additional court decisions). The Examiner
points out that the claim does not require the signature or request to be
encrypted as "[t]he claim merely requires that the request is transmitted with
'confidentiality protection' and that the request includes a signature." Id.
The Examiner finds that the well-known concept of digital signatures using
public and private keys with the signatures to process data is described by
Allen. Id. at 4--5 (citing Allen 2:5-28, 5:13-32, 6:29-36). The Examiner
4
Appeal2018-000695
Application 14/016,022
finds Allen teaches "transmitting a request to a key server where the request
is signed with a private key to be verified at the key server" and, because
"the request is signed with a digital signature and verified at the key server,
it is considered as 'confidentiality protection' due to the fact that utilization
of the keys in the opposite order as public-key encryption and public-key
decryption provides confidentiality." Id. The Examiner alternatively finds
Allen "teaches encrypting the request during transmission using the SSL or
TLS protocols, which adds an additional layer of 'confidentiality protection'
to protect the request/message from being intercepted during transmission to
the key server." Id. at 5 (citing Allen 7:6-21). The Examiner finds, because
the request is sent to the key server using the SSL or TLS connections, it is
also sent after "the key storage service has authenticated to the computing
device." Id. at 7. According to the Examiner:
Id.
In the SSL and TLS connections a handshake protocol is used to
authenticate the server (key server in Allen) to the user device and to
also negotiate a shared secret that will be used to generate a shared
symmetric encryption key. Therefore, in order for the invention of
Allen to transmit the request to the key server in encrypted form using
SSL or TLS, the key server must first have authenticated itself to the
user device to generate the encryption key to perform the SSL or TLS
encryption.
The Examiner additionally finds Misra teaches sending the digital
signature in an encrypted and confidential form. Id. at 8 ( citing Misra 2: 10-
24). Misra describes:
A digital signature is attached to the encrypted credentials
information at the home domain for the user. The digital signature is
created using a private key for the home domain. A session key is
5
Appeal2018-000695
Application 14/016,022
received from the user and is used to encrypt the digital signature and
the block of encrypted credentials information to produce a secure
package. The secure package is provided to the user to enable the user
to logon to the distributed system in a domain other than the home
domain.
Id. at 8.
The Examiner concludes it would have been obvious to add the
teachings of Misra to Allen for the purpose of encrypting the digital
signature during transmission to prevent it from being intercepted by an
attacker. Id.
In the Reply Brief, Appellants argue the Examiner errs in finding
Allen provides confidentiality because "signing a message with a private key
provides no confidentiality protection." Reply Br. 3-5. According to
Appellants, Allen's request for the control key is not sent over as SSL or
TLS connection and Allen does not teach "encrypting the request during
transmission using the SSL or TLS protocols." Id. at 6. Appellants argue
the Examiner's proposed combination is incorrect because neither Allen nor
Misra describe a TLS or SSL connection and a session key generated during
a TLS or SSL handshake. Id. at 7.
We note much of Appellants' argument is unsupported by factual
evidence. Mere attorney arguments and conclusory statements that are
unsupported by factual evidence are entitled to little probative value. See In
re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d
699, 705 (Fed. Cir. 1984); and Ex parte Belinne, 2009 WL 2477843, at *3--4
(BP AI Aug. 10, 2009) (informative).
6
Appeal2018-000695
Application 14/016,022
As discussed below, we are not persuaded by Appellants' arguments
and agree, instead, with the findings, claim interpretations, and conclusions
of the Examiner.
Regarding the term "confidentiality protection," we agree that Allen
and Misra each describe confidentiality protection as would be understood
by one of ordinary skill in the art under a broad, but reasonable
interpretation, and, we note the Specification does not provide a definition
for this term. A claim in a patent application is 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 ). Great care should be taken to avoid reading limitations of the
specification into the claims. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d
1364, 1369 (Fed. Cir. 2003). Allen teaches requesting a content key from
a key server wherein the request is signed using an access private key, the
key server verifies the signature using the access public key, and the request
includes confidentiality protection. Allen 2:5-28, 4:39-47. Allen also
teaches using SSL or TLS secure connections to transmit confidential
messages. Allen 7: 6-21. Misra teaches encrypting a digital signature with a
session key. Misra 2:10-24. In the combination of Allen and Misra, in a
TLS or SSL connection, the session key is generated during the TLS
handshake/authentication protocol, and the TLS handshake/authentication is
performed and then afterwards the session key generated during the
authentication is used to encrypt the digital signature for storage or, in the
case of Allen, transmission as a request for a content key. Thus, we agree
with the Examiner's conclusion that one of ordinary skill in the art would
have improved upon the teachings of Allen by adding the teachings of Misra
7
Appeal2018-000695
Application 14/016,022
for the purpose of encrypting the digital signature during transmission to
prevent it from being intercepted.
Appellants argue the references individually while the rejection is
based on the combination of the teachings of the cited references. In re
Keller, 642 F.2d 413,426 (CCPA 1981) ("[O]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).
Appellants also argue an unreasonably narrow teaching of the cited
references and an overly demanding standard of obviousness.
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill in
the art.
Keller, 642 F.2d at 425.
Here, the Examiner provides sufficient evidence as required for
obviousness. 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. . . . [H]owever, 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'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007) (quoting In re Kahn,
441 F.3d 977,988 (Fed. Cir. 2006)).
8
Appeal2018-000695
Application 14/016,022
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.
Based upon the teachings of the references and the fact that each
claimed element was well-known in the art, we agree with the Examiner
because the combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.
Id. at 415-16. We note Appellants present no persuasive arguments that the
results are unpredictable. Moreover, as discussed supra, the Examiner
additionally provided reasons why one of ordinary skill in the art would
combine each of the references in the manner suggested.
In view of the above, we sustain the rejection of claim 1, independent
claims 2, 10, and 18 as these claims are argued together with claim 1, and
dependent claims 3-5, 7-9, 11-13, and 15-17 as these claims are not argued
separately. See 37 C.F.R. § 4I.37(c)(l)(iv).
DECISION
We affirm the Examiner's decision rejecting claims 1-5, 7-13, and
15-18.
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) (1 )(iv).
AFFIRMED
9