Ex Parte Gladwin et alDownload PDFPatent Trial and Appeal BoardOct 13, 201713919210 (P.T.A.B. Oct. 13, 2017) Copy Citation 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. 13/919,210 06/17/2013 S. Christopher Gladwin CS00313C1/END920165775US4 8200 89322 7590 10/17/2017 Garlick & Markison (IBM) 106 E. 6th Street, Suite 900 Austin, TX 78701 EXAMINER ZHU, ZHIMEI ART UNIT PAPER NUMBER 2495 NOTIFICATION DATE DELIVERY MODE 10/17/2017 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): MMURDOCK@ TEXASPATENTS .COM bpierotti @ texaspatents .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte S. CHRISTOPHER GLADWIN, KUMAR ABHIJEET, GREG DHUSE, and JASON K. RESCH (Applicant: CLEVERSAFE, INC.) Appeal 2017-002689 Application 13/919,21c1 Technology Center 2400 Before JOHNNY A. KUMAR, LARRY J. HUME, and TERRENCE W. MCMILLIN, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the Final Rejection of claims 1—14, which are all claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellants, the real party in interest is International Business Machines Corporation. App. Br. 2. Appeal 2017-002689 Application 13/919,210 STATEMENT OF THE CASE2 The Invention Appellants' disclosed embodiments and claimed invention "relate[] generally to computing systems and more particularly to data storage solutions within such computing systems." Spec. 1,11. 28—29 ("TECHNICAL FIELD OF THE INVENTION"). Exemplary Claim Claim 1, reproduced below, is representative of the subject matter on appeal (emphasis and formatting added to contested limitations): 1. A method for securely distributing a profile regarding a user device to another user device of a dispersed storage network (DSN), the method comprises: encrypting a profile using a key to produce an encrypted profile; encoding the encrypted profile in accordance with a dispersed storage error encoding function to produce a set of encoded profile slices; outputting the set of encoded profde slices to storage units of the DSN for storage therein; encoding the key in accordance with an error encoding function to produce a set of secure key portions; outputting the set of secure key portions to a set of user devices of the DSN. wherein a first user device of the set of user devices receives and stores a first secure key portion of the set 2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed June 13, 2016); Examiner's Answer ("Ans.," mailed Oct. 20, 2016); Final Office Action ("Final Act.," mailed Sept. 17, 2015); and the original Specification ("Spec.," filed June 17, 2013). We note Appellants did not file a Reply Brief in response to the factual findings and legal conclusions in the Examiner's Answer. 2 Appeal 2017-002689 Application 13/919,210 of secure key portions and a second user device of the set of user devices receives and stores a second secure key portion of the set of secure key portions; and obtaining the profile by one of the set of user devices by: retrieving a threshold number of the set of secure key portions from the set of user devices; recovering the key from the threshold number of the set of secure key portions; retrieving a decode threshold number of the set of encoded profile slices from the DSN; decoding the decode threshold number of the set of encoded profile slices to recover the encrypted profile; and decrypting the encrypted profile using the key to recover the profile. Prior Art The Examiner relies upon the following prior art as evidence in rejecting the claims on appeal: Hauck et al. ("Hauck") US 2009/0144341 A1 June 4, 2009 Vysogorets et al. ("Vysogorets") US 2010/0199089 Al Aug. 5, 2010 Juels et al. ("Juels") US 8,031,875 B1 Oct. 4,2011 Gladwin et al. ("Gladwin '368")3 US 8,468,368 B2 June 18, 2013 Adi Shamir, "How to Share a Secret," Communications of the ACM, vol. 22, No. 11, Nov. 1979 (hereinafter "Shamir"). 3 Although Gladwin '368 is not prior art per se to the claimed invention, it is listed for completeness of the record because it is cited in OTDP Rejection R1 of claims 1 and 8. 3 Appeal 2017-002689 Application 13/919,210 Rejections on Appeal R1. Claims 1 and 8 stand rejected under the judicially-created doctrine of nonstatutory obviousness-type double patenting (OTDP) as being unpatentable over claim 7 of Gladwin '368 in view of claim 6 of Gladwin '368, further in view of claim 3 of Gladwin '368, and further in view of Vysogorets. Final Act. 4. R2. Claims 1, 4—8, and 11—14 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Juels, Vysogorets, and Hauck. Final Act. 6. R3. Claims 2, 3, 9, and 10 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Juels, Vysogorets, Hauck, and Shamir. Final Act. 15. CLAIM GROUPING Because Appellants do not provide any argument or even acknowledge OTDP Rejection R1 of claims 1 and 8, we group these claims together and summarily affirm the rejection. Arguments not made are waived. Based on Appellants' arguments (App. Br. 7—10), we decide the appeal of obviousness Rejection R1 of claims 1, 4—8, and 11—14 on the basis of representative claim 1. 4 Appeal 2017-002689 Application 13/919,210 Remaining claims 2,3,9, and 10 in Rejection R3, not argued separately or with specificity, stand or fall with the respective independent claim from which they depend.4 ISSUE Appellants argue (App. Br. 7—10) the Examiner's rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the combination of Juels, Vysogorets, and Hauck is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art combination teaches or suggests "[a] method for securely distributing a profile regarding a user device to another user device of a dispersed storage network (DSN)," that includes, inter alia, the steps of "outputting the set of encoded profile slices to storage units of the DSN for storage therein . . . [and] outputting the set of secure key portions to a set of user devices of the DSN," as recited in claim 1? ANALYSIS In reaching this decision, we consider all evidence presented and all arguments actually made by Appellants. We do not consider arguments Appellants could have made but chose not to make in the Briefs, and we deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv). 4 "Notwithstanding any other provision of this paragraph, the failure of appellant to separately argue claims which appellant has grouped together shall constitute a waiver of any argument that the Board must consider the patentability of any grouped claim separately." 37 C.F.R. § 41.37(c)(l)(iv). In addition, when Appellants do not separately argue the patentability of dependent claims, the claims stand or fall with the claims from which they depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986). 5 Appeal 2017-002689 Application 13/919,210 We disagree with Appellants' arguments with respect to claims 1—14 and, unless otherwise noted, we incorporate by reference herein and adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in response to Appellants' arguments. We highlight and address specific findings and arguments regarding claim 1 for emphasis as follows. Appellants contend: Appellant's specification defines a user device (see Figure 1 "user device 12-14") and storage units of the DSN (see Figure 1 "DS units 36") as separate and distinct entities that have memory. Using the specification as a glossary for claim terms and without importing explanations of the specification into the claims, storage units of the DSN (i.e., DS units) and user devices of the DSN are defined as different storage entities. Because Juels does not teach or suggest sending the encoded key and the encoded data to two different storage entities and Juels further does not teach or suggest separately retrieving the encoded key and the encoded data from two different storage entities, Juels in combination with Vysogorets and Hauck does not render the claims obvious. Therefore, the Appellant believes that claims 1, 4-8 and 11-14 overcome the present rejection. App. Br. 8—9. Appellants further contend: [T]he Examiner appears to be disregarding the disclosure of the specification, which provides unique descriptions of a user device and of a storage device. The Examiner further appears to be disregarding the claim terms themselves, which, on their face, are different terms. The Examiner still further appears to be applying an undocumented "ordinary and customary meaning" of user device and of storage unit to mean the same device. 6 Appeal 2017-002689 Application 13/919,210 Clearly, since the claims terms themselves are of different combination of words (e.g., "user device" and "storage unit"), they are different claim elements. App. Br. 9. "In the patentability context, claims are to be given their broadest reasonable interpretations . . . limitations are not to be read into the claims from the specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citations omitted). Any special meaning assigned to a term "must be sufficiently clear in the specification that any departure from common usage would be so understood by a person of experience in the field of the invention." Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008) ("A patentee may act as its own lexicographer and assign to a term a unique definition that is different from its ordinary and customary meaning; however, a patentee must clearly express that intent in the written description."). Absent an express intent to impart a novel meaning to a claim term, the words take on the ordinary and customary meanings attributed to them by those of ordinary skill in the art. Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003) (citation omitted). The Examiner finds, and we agree: The configuration of user devices 12—14 and DS units 36 shown in Figure 1 of the specification is merely a particular embodiment of user devices and storage units of the DSN, not a definition. Showing a particular embodiment of the configuration of user devices of the DSN and storage units of the DSN (i.e., DS units) in Figure 1 does not constitute "clearly setting forth a definition of the term that is different from its 7 Appeal 2017-002689 Application 13/919,210 ordinary and customary meaning(s)". Therefore, requiring "storage units of the DSN" (i.e., DS units) and "user devices of the DSN" recited in claim 1 to be different storage entities is improperly importing limitations from the specification into a claim. As a result, the properly interpreted claim 1 does not require "storage units of the DSN" (i.e., DS units) and "user devices of the DSN" to be different storage entities and Juels in combination with Vysogorets and Hauck does render claim 1 obvious. Ans. 3. We agree with the Examiner because Appellants have not cited to explicit definitions of either "storage units of the DSN" or "set of user devices of the DSN" in the Specification that would distinguish between these terms and preclude the Examiner's broader reading.5 We further agree with the Examiner's findings, "[mjemory devices such as RFID tags may be interpreted as 'user devices' because they can interact with a user through an RFID tag reader operated by a user .... [Alternatively,] the Examiner interprets the RFID tags of Juels both as 'storage units of the DSN' and as 'a set of user devices of the DSN.'" Id. Therefore, based upon the findings above, on this record, we are not persuaded of error in the Examiner's reliance on the cited prior art combination to teach or suggest the disputed limitation of claim 1, nor do we find error in the Examiner's resulting legal conclusion of obviousness. Therefore, we sustain the Examiner's obviousness rejection of independent 5 Appellants cite to the Specification at page 21, lines 4 through 7 and element 34 in Figure 9 for support of these terms. See App. Br. 2 ("SUMMARY OF CLAIMED SUBJECT MATTER"). Our review of this portion of the Specification and the Specification as a whole does not reveal definitional distinctions between these terms, but instead only disclose exemplary embodiments. See, e.g., Spec. 5,1. 13 et seq. 8 Appeal 2017-002689 Application 13/919,210 claim 1, and grouped claims 4—8, and 11—14 which fall therewith. See Claim Grouping, supra. Rejection R1 of Claims 1 and 8 and Rejection R3 of Claims 2, 3, 9, and 10 In view of the lack of any arguments directed to OTDP Rejection R1 of claims 1 and 8, we summarily affirm the Examiner's rejection of these claims. Further, in view of the lack of any substantive or separate arguments directed to obviousness Rejection R3 of claims 2, 3, 9, and 10 under § 103 (see App. Br. 10), we also sustain the Examiner's rejection of these claims. Arguments not made are waived.6 CONCLUSIONS (1) The Examiner did not err with respect to OTDP Rejection R1 of claims 1 and 8, and we sustain the rejection. (2) The Examiner did not err with respect to obviousness Rejections R2 and R3 of claims 1—14 under 35 U.S.C. § 103(a) over the cited prior art combinations of record, and we sustain the rejections. DECISION We affirm the Examiner's decision rejecting claims 1—14. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37 C.F.R. § 41.50(f). AFFIRMED 6 Appellants merely state they "believe[ ] the arguments presented above [with respect to claim 1] are applicable in distinguishing claims 2, 3, 9 and 10 over the present [§ 103(a)] rejection." App. Br. 10. 9 Copy with citationCopy as parenthetical citation