Ex Parte Gladwin et al

Patent Trial and Appeal Board

Oct 13, 2017

13919210 (P.T.A.B. Oct. 13, 2017)

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.
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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.
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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.
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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.
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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).
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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.
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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
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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.
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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.
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