Ex Parte Jaquette et al

Patent Trial and Appeal Board

Aug 22, 2017

11470785 (P.T.A.B. Aug. 22, 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.
11/470,785 09/07/2006 Glen A. Jaquette TUC920060123US1 8582
65384 7590 08/24/2017
TERRILE, CANNATTI, CHAMBERS & HOLLAND, LLP
IBM Tucson
P.O. BOX 203518
AUSTIN, TX 78720
EXAMINER
LEWIS, LISA C
ART UNIT PAPER NUMBER
2495
NOTIFICATION DATE DELIVERY MODE
08/24/2017 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):
tmunoz @ tcchlaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GLEN A. JAQUETTE and PAUL M. GRECO
Appeal 2016-003147
Application No. 11/470,7851
Technology Center 2400
Before MARC S. HOFF, DAVID M. KOHUT, and NORMAN H.
BEAMER, Administrative Patent Judges.
HOFF, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s Final
Rejection of claims 1—25. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ invention is a method, system, and program for enabling
access to encrypted data in a storage cartridge. The data key used to encrypt
the data is wrapped with separate encryption keys (e.g., the public key of a
public/private key pair) to form encryption encapsulated data keys (EEDKs)
that are stored on the storage cartridge along with the encrypted data. A
1 The real party in interest is International Business Machines Corporation.
Appeal 2016-003147
Application 11/470,785
multi-user transport mechanism is provided where each user can access and
decode the encrypted data by retrieving and decrypting an EEDK with a
decryption key (e.g., the private key of a public/private key pair) to extract
the underlying data key, and then using the extracted data key to decrypt the
encrypted data. See Abstract.
Claim 1 below is exemplary of the claims on appeal:
1. A method for enabling access by a plurality of users to
encrypted data stored on a storage cartridge, comprising:
generating a first data key at an external key manager for
encrypting data to form encrypted data;
encrypting the first data key with a first session key at the
external key manager to generate a first session encrypted
data key, where first session encrypted data key may be
decrypted to extract the first data key for use in generating
encrypted data to be stored on the storage cartridge;
encrypting the first data key with a first key encrypting key at the
external key manager to generate a first encrypted key, where
first encrypted key may be decrypted to extract the first data
key by a first user using a first decrypting key;
encrypting the first data key with a second key encrypting key at
the external key manager to generate a second encrypted
key, where second encrypted key may be decrypted to
extract the first data key by a second user using a second
decrypting key;
sending the first session encrypted data key, first encrypted
key, and second encrypted key from the external key
manager to a tape drive;
decrypting the first session encrypted data key at the tape drive to
extract the first data key from the first session encrypted
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data key, thereby generating an extracted first data key at
the tape drive;
encrypting data at the tape drive using the extracted first data key
extracted from the first session encrypted data key to
generate encrypted data;
storing the first encrypted key, second encrypted key and encrypted
data to the storage cartridge; and
discarding the first session encrypted data key from the tape drive.
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
REFERENCES
Thomas III US 2002/0157011 Al Oct. 24, 2002
(hereinafter
Yokota et al.
“Thomas”)
US 2005/0210183 Al Sept. 22, 2005
(hereinafter “Yokota”)
Moroney et al. US 2004/0078584 Al Apr. 22, 2004
Shirouzu US 2004/0103292 Al May 27, 2004
Gosnell US 2007/0038857 Al Feb. 15,2007
Asano et al. US 2007/0110238 Al May 17, 2007
(hereinafter
Everett et al.
“Asano”)
US 2008/0137842 Al June 12, 2008
(hereinafter
Caronni
“Everett”)
US 7,792,300 B1 Sept. 7,2010
Claims 1—6, 8, and 10-13, 20, and 22—25 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Caronni, Yokota, Everett, and
Gosnell.
Claims 15, 16, and 21 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Caronni, Yokota, and Everett.
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Application 11/470,785
Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Caronni, Yokota, Everett, Gosnell, and Thomas III.
Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Caronni, Yokota, Everett, Gosnell, and Moroney.
Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Caronni, Yokota, Everett, Gosnell, and Shirouzu.
Claims 17 and 19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Caronni, Yokota, Everett, Gosnell, and Asano.
Claim 18 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Caronni, Yokota, Everett, Gosnell, Asano, and Shirouzu.
Throughout this decision, we make reference to the Appeal Brief
(filed June 23, 2015, “App. Br.”), the Reply Brief (filed Feb. 2, 2016, “Reply
Br.”), and the Examiner’s Answer (mailed Dec. 2, 2015 “Ans.”) for their
respective details.
ISSUES
1. Does the combination of Caronni, Yokota, Everett, and Gosnell
teach or suggest decrypting the first session encrypted data key at the tape
drive to extract the first data key from the first session encrypted data key?
2. Does the Examiner state a reason to combine Caronni, Yokota,
Everett, and Gosnell having a rational underpinning to support the legal
conclusion of obviousness?
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Application 11/470,785
ANALYSIS
Claims 1-6, 8,10-13,20, and 20-25
Appellants argue that the Examiner erred in combining Caronni,
Yokota, Everett, and Gosnell to obtain the invention under appeal. Caronni
is conceded not to teach that the data key is encrypted with a session key
wherein the first session encrypted data key may be decrypted to extract the
first data key. Final Act. 8; see also App. Br. 9. Appellants contend that
Yokota, cited by the Examiner to supply the missing limitation, teaches that
a session encrypted data key is passed to the memory card, where it is
decrypted to generate the “received data key” that is then re-encrypted by
the memory card and passed back to the recorder. Id. Appellants allege
Examiner error in that Yokota’s “session encrypted data key” is “decrypted
at the endpoint ‘memory card,’ not at the intermediate ‘tape drive,’ as
claimed.” App. Br. 9.
The Examiner, in response, states that Yokota is relied upon to
demonstrate a unit that encrypts a data key with a session key, and a unit that
receives the session encrypted data key and decrypts it to extract the key.
Ans. 5. Yokota teaches that “[w]hen data is written to the memory card, the
recorded encrypts the data key using the session key and passes the
encrypted data key to the memory card. The memory card then decrypts the
received data key, re-encrypts it by the storage key, and passes the re­
encrypted data key to the recorder.” Yokota 1 89; see also Ans. 6. Yokota
further teaches that “[i]n the above examples, a memory card is used as a
recording medium. However, other types of recording medium may be
utilized such as an optical disc, a magneto-optical disc, a magnetic disc, a
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Application 11/470,785
magnetic tape, and so forth.” Yokota 1489; see also Ans. 6 (citing Yokota
11 89, 489).
Appellants contend in reply that the Examiner has presented no
“intrinsic or extrinsic evidence” to support this “novel interpretation” that
“Yokota’s ‘memory card and recorder’ can be interpreted as the tape drive
with magnetic tape.” Reply Br. 4. We find Appellants’ argument
unpersuasive. First, Yokota explicitly states that a magnetic tape, rather than
a memory card, may be used as a recording medium. Yokota 1489. We find
that the use of magnetic tape as the recording medium inherently calls for a
tape drive as the recording device. Second, the Examiner’s interpretation is
not “novel,” because the Examiner has been citing this teaching of Yokota
throughout prosecution of the application. See, e.g., Final Rejection (mailed
June 19, 2012) 6; Non-Final Rejection (mailed November 26, 2012) 5; and
Final Rejection (mailed June 17, 2013) 5. We agree with the Examiner’s
finding that Yokota suggests decrypting the first session encrypted data key
at the storage medium, whether it be a memory card or a tape drive, to
extract the first data key.
Appellants’ second argument, that the Examiner’s combination does
not teach or suggest encrypting data at the tape drive using the extracted first
data key extracted from the first session encrypted data key to generate
encrypted data, is also unpersuasive. The Examiner finds that Caronni
teaches encrypting data using the extracted first data key to generate
encrypted data. Final Act. 8 (citing Caronni Fig. 6). The Examiner further
finds that Yokota teaches that “when data is written to memory, a recorder
can encrypt the data key using a session key, and the memory then receives
the session encrypted data key and decrypts it to extract the data key.” Final
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Act. 8 (citing Yokota 1 89). As discussed supra, Yokota 1489 suggests the
use of a tape drive in place of a memory card.
Appellants’ argument that the Examiner has not provided motivation
to combine the references is not persuasive. See App. Br. 15—17. Appellants
contend that generating a session encrypted data key does not advance the
purpose of protecting the data key, “since adequate protection is already
achieved by the conventional protection benefits ... of separately generating
encrypted data keys since their encryption provides the protection purpose.”
App. Br. 16. We agree with the Examiner that “[sjimply because Caronni
already uses a type of encryption on the data keys does not preclude another
layer of security that could be provided by encrypting with a session key.”
Ans. 11.
We are similarly unpersuaded by Appellants’ argument that the
Examiner’s proffered motivation to have only one copy of a key, or not have
multiple copies of the key stored in different areas, conflicts with
Appellants’ claimed generation and storage of “a plurality of encrypted data
keys.” App. Br. 16; see also App. Br. 24, Claims App. We agree with the
Examiner that “discarding a key after use was well known at the time of the
claimed invention for security purposes,” and that “discarding a copy of the
key at the tape drive clearly increases security, regardless of whether there
are other encrypted versions of the key stored elsewhere.” Ans. 11.
Appellants contend that the Examiner has failed to establish a
reasonable expectation of success in combining the references. App. Br. 18.
We agree that the Examiner has demonstrated that the claim elements are
present in the Examiner’s combination of references, and that the Examiner
has stated a motivation to combine the references having a rational
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Application 11/470,785
underpinning. As a result, we agree with the Examiner that a reasonable
expectation of success of the combination has been demonstrated. See Ans.
13.
Appellants’ argument that the Examiner engaged in improper
piecemeal examination is not well taken. See App. Br. 5—6. Even if one were
to assume, arguendo, that Appellants correctly characterize the Examiner’s
actions as piecemeal examination, the Examiner’s action would have led
only to a premature final rejection. The remedy for a premature final
rejection, however, is to petition to the appropriate Technology Center
Director requesting withdrawal of the finality of the rejection, rather than
appeal to the Patent Trial and Appeal Board. MPEP § 1002.02(c).
As this matter is petitionable, rather than appealable, we have no
further comment on the merits of Appellants’ position.
We conclude that the Examiner did not err in rejecting claims 1—6, 8,
10-13, 20, and 22—25 under § 103(a) as being unpatentable over Caronni,
Yokota, Everett, and Gosnell. We sustain the Examiner’s rejection.
Claims 7,9,14—19, and 21
Appellants’ further arguments B.l.b, B.l.c, B.l.d, B.l.e, B.l.f, and
B.l.g all repeat the contention that Yokota’s session encrypted data key is
decrypted at the endpoint memory card, not at the intermediate tape drive.
See App. Br. 11—15. As analyzed supra, however, we agree with the
Examiner that Yokota teaches decryption at the memory card (i.e., storage
device), and suggests that a magnetic tape may be used in place of the
memory card. See Yokota 89, 489. Therefore, we sustain the Examiner’s
§ 103(a) rejections of claim 7 as being unpatentable over Caronni, Yokota,
Everett, Gosnell, and Thomas III; of claim 14 as being unpatentable over
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Caronni, Yokota, Everett, Gosnell, and Moroney; of claim 9 as being
unpatentable over Caronni, Yokota, Everett, Gosnell, and Shirouzu; of
claims 17 and 19 as being unpatentable over Caronni, Yokota, Everett,
Gosnell, and Asano; and of claim 18 as being unpatentable over Caronni,
Yokota, Everett, Gosnell, Asano, and Shirouzu.
CONCLUSION
1. The combination of Caronni, Yokota, Everett, and Gosnell
suggests decrypting the first session encrypted data key at the tape drive to
extract the first data key from the first session encrypted data key.
2. The Examiner states a reason to combine Caronni, Yokota, Everett,
and Gosnell having a rational underpinning to support the legal conclusion
of obviousness.
ORDER
The Examiner’s decision to reject claims 1-25 is affirmed.
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).
AFFIRMED
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