Ex Parte Furuichi et al

Patent Trial and Appeal Board

Jul 28, 2016

13529674 (P.T.A.B. Jul. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/529,674 06/21/2012 SANEHIRO FURUICHI
73109 7590 08/01/2016
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
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.
JP920090004US2
8152-0196
CONFIRMATION NO.
5660
EXAMINER
KORSAK, OLEG
ART UNIT PAPER NUMBER
2492
NOTIFICATION DATE DELIVERY MODE
08/01/2016 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SANEHIRO FURUICHI, Y ASUHIDE NIIMURA,
and MASAMI TADA
Appeal2014-009901
Application 13/529,674
Technology Center 2400
Before CARLA M. KRIVAK, HUNG H. BUI, and JON M. JURGOV AN,
Administrative Patent Judges.
JURGOV AN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek review under 35 U.S.C. § 134(a) from a Final
Rejection of claims 21--40. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse. 2
1 Appellants identify IBM Corporation as the real party in interest. (App.
Br. 1.)
2 Our Decision refers to the Specification (filed June 21, 2012) ("Spec."), the
Final Office Action (mailed Oct. 4, 2013) ("Final Act."), the Appeal Brief
(filed March 6, 2014) ("App. Br."), the Examiner's Answer (mailed June 18,
2014) ("Ans."), and the Reply Brief (filed Aug. 18, 2014) ("Reply Br.").
Appeal2014-009901
Application 13/529,674
STATEMENT OF THE CASE
The claims are directed to the use of multiple validity periods for data
stored on an external storage device, such as a universal serial bus (USB)
memory. (Spec. Abstract.) When the external storage device connects to an
information processing apparatus, a processor identifies the particular
validity period associated with that apparatus, and uses it for security
protection processing of data. (Id.) Claim 21, reproduced below, is
illustrative of the claimed subject matter:
21. An external storage device, comprising:
an input/output interface;
a first storage region; and
a second storage region, wherein
the input/output interface is connectable to an information
processing apparatus3;
the first storage region stores validity period data
associated with first and second validity periods,
the first validity period usable upon the external storage
device being connected to a first information processing
apparatus,
the second validity period usable upon the external storage
device being connected to a second information processing
apparatus,
a second storage region[4J stores a control program, which
when executed by a processor, causes the processor to perform:
establishing connection of the external storage
device to the information processing apparatus via the
input/ output interface;
3 In the event of further prosecution, Appellants and the Examiner may wish
to consider whether this recitation complies with 35 U.S.C. § 112, second
paragraph, due to the claim's later recitation of "a first information
processing apparatus" and "a second information processing apparatus."
4 Appellants and the Examiner may wish to consider whether this recitation
complies with 35 U.S.C. § 112, second paragraph, due to the claim's earlier
recitation of "a second storage region."
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Appeal2014-009901
Application 13/529,674
identifying, based upon the connected information
processing apparatus, one of the first and second validity
periods to be used for exchanging data using the
input/ output interface; and
executing, based upon the identified one of the
validity periods, predetermined security protection
processing on the data.
REJECTIONS
Claims 21-25, 28-30, 33, and 34 stand rejected under 35 U.S.C.
§ 102(b) based on Zugenmaier '230 (EP 1 821 230 Al, publ. Aug. 22,
2007). (Final Act. 2---6.)
Claims 26, 27, and 35--40 stand rejected under 35 U.S.C. § 103(a)
based on Zugenmaier '230 and Zugenmaier '270 (EP 1 998 270 Al, publ.
March 12, 2008). (Final Act. 6-7.)
Claims 31 and 32 stand rejected under 35 U.S.C. § 103(a) based on
Zugenmaier '230 and Michael K. Just, On the Temporal Authentication of
Digital Data, 1-230 (Dec. 1998) (Ph.D. thesis, Carleton Univ.) (hereinafter
"Just"). (Final Act. 7-8.)
ANALYSIS
Independent Claim 21
Appellants argue Zugenmaier '230 fails to disclose the limitation of
claim 21 reciting "the first storage region stores validity period data
associated with first and second validity periods." (App. Br. 15-18, Reply
Br. 2-7.) We agree with Appellants' argument.
As the Examiner notes, Zugenmaier '230 discloses an external
medium storing user data in non-encrypted form. (Final Act. 3 citing
Zugenmaier '230 i-f 39.) Upon the occurrence of an expiration condition
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Appeal2014-009901
Application 13/529,674
(e.g., a certain moment in time), access credentials are used to encrypt the
previously non-encrypted data so that they are not accessible to a user that
does not know the keys. (Id., see also i-f 41.) The Examiner states that
before the expiration time, any user can access data, and that this
corresponds to the claimed second validity period. (Ans. 4 (citing
Zugenmaier '230 i-f 48), see also i-f 50.) After the expiration time, the
Examiner finds, access to data in the storage device is limited to only those
knowing the access credentials, and this corresponds to the claimed first
validity period. (Id.)
We disagree with the Examiner. Zugenmaier '230 discloses only a
single validity period defined by the expiration time, and does not teach two
separate validity periods. (App. Br. 17.) Moreover, we agree with
Appellants that Zugenmaier '230's expiration condition is not associated
with the trusted device, whereas, in the claimed invention, one of the first
and second validity periods is identified for use depending upon whether the
external storage device is connected to the first or second information
processing apparatuses. (App. Br. 17-18.) Thus, we do not sustain the
Examiner's rejection because "each and every element" of claim 21 is not
found in the cited reference. See Verdegaal Bros. v. Union Oil Co. of Cal.,
814 F.2d 628, 631 (Fed. Cir. 1987); Karsten Mfg. Corp. v. Cleveland Golf
Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001).
Remaining Claims
Appellants argue the remaining independent claims 35-37, 39, and 40
on the same basis as independent claim 21. (App. Br. 21-22.) We agree
with Appellants that the stated differences between the claimed invention
and cited references are such that a person of ordinary skill would not have
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Application 13/529,674
considered them obvious. See Graham v. John Deere Co., 383 U.S. 1, 17-
18 (1966). Accordingly, we do not sustain the rejection of these claims.
In view of our decision concerning the independent claims, we do not
sustain the rejection of the remaining dependent claims.
DECISION
We reverse the rejection of claims 21-25, 28-30, 33, and 34 under 35
U.S.C. § 102(b).
We reverse the rejections of claims 26, 27, 31, 32, and 35--40 under
35 U.S.C. § 103(a).
REVERSED
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