Ex Parte Leventhal et al

Patent Trials and Appeals Board

Mar 19, 2019

13866257 - (D) (P.T.A.B. Mar. 19, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/866,257 04/19/2013
12312 7590 03/19/2019
Robert F. Bamitt
6718 E. San Miguel Ave
Paradise Valley, AZ 85253-5978
FIRST NAMED INVENTOR
David H. Leventhal
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.
5996
EXAMINER
BAYOU, YONAS A
ART UNIT PAPER NUMBER
2434
MAIL DATE DELIVERY MODE
03/19/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID H. LEVENTHAL and ROBERT F. BARNITT
Appeal2017-004613
Application 13/866,257 1
Technology Center 2400
Before MAHSHID D. SAADAT, NORMAN H. BEAMER, and
ALEX S. YAP, Administrative Patent Judges.
YAP, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 19--36, which are all the claims pending in this application. Claims
1-18 have been cancelled. (See Final Office Action (mailed March 14,
2016) ("Final Act.") 2, 14.) We have jurisdiction under 35 U.S.C. § 6(b)
We reverse.
1 According to Appellants, the real party in interest is Dark Signal Research,
LLC. (App. Br. 3.)
Appeal2017-004613
Application 13/866,257
STATEMENT OF THE CASE
Introduction
According to the Specification, Appellants' invention relates to "the
high performance storage of confidential and deduplicated data on write
once read many media for transmission or long term storage." (April 19,
2013 Specification ("Spec.") 1.) Claims 25 and 29 are illustrative, and are
reproduced below (with minor reformatting):
25. A method of preparing a secure and deduplicated write
once read many virtual disk comprising the steps of:
a. generating a random number for use as a key
in a symmetric-key algorithm;
b. using the key with the symmetric-key
algorithm in counter mode to form a
keystream;
c. storing the keystream into a location on the
virtual disk;
d. accessing a data file to be stored;
e. deduplicating the data file to form a
deduplicated data file;
f. combining the deduplicated data file with the
keystream forming a secure and deduplicated
data file, wherein the keystream is at least of
equal size to the data file; and
g. storing the secure and deduplicated data file
into the same location on the virtual disk in
which the keystream was previously stored ..
29. A secure write once read many virtual disk system
compnsmg:
a. a system element for forming an encryption
sequence and storing the encryption sequence
into a location on the virtual disk;
b. a processor for combining a data file with the
encryption sequence to form a secure data
file, wherein the secure data file is stored into
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Application 13/866,257
the same location on the virtual disk in which
the encryption sequence was previously
stored, wherein the encryption sequence is at
least of equal size to the data file.
Prior Art and Rejection on Appeal
The following table lists the prior art relied upon by the Examiner in
rejecting the claims on appeal:
Gleichauf
Imamoto
US 2003/0149869 Al
US 2011/0271121 Al
Aug. 7, 2003
Nov. 3, 2011
Claims 19--36 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Gleichauf in view of Imamoto. (See Final Act. 4--8.)
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants'
arguments that the Examiner has erred. We are persuaded the Examiner
erred in rejecting the claims on appeal. 2
Claim 25
With respect to independent claim 25, the Examiner finds that:
Gleichauf does not explicitly disclose:
c. storing the keystream into a location on the virtual disk;
2 Because we do not sustain the Examiner's rejections for the reasons
discussed herein, we need not address Appellants' further arguments. See
Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (finding an
administrative agency is at liberty to reach a decision based on "a single
dispositive issue").
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Application 13/866,257
g. storing the secure and deduplicated data file into the same
location on the virtual disk in which the keystream was
previously stored.
However, in an analogous art, Imamoto teaches:
c. storing the keystream into a location on the virtual disk
( claim 2, the memory block storing the initial value [ the
keystream ], fig. 2);
g. storing the secure and deduplicated data file into the same
location on the virtual disk in which the keystream was
previously stored (claim 2, the writing unit changes/replaces the
initial value [the keystream] written in the memory block
identified by the address table to a different data value [secure
and deduplicated datafile], abstract, para. 0038 and figs. 3, 7
and 9).
Therefore, it would have been obvious to one of ordinary skill in
the art at the time the invention was made to combine the
teachings of Gleichauf with the method and system of Imamoto,
wherein c. storing the keystream into a location on the virtual
disk; g. storing the secure and deduplicated data file into the same
location on the virtual disk in which the keystream was
previously stored to provide users with a means for managing
encrypted data on a write-once recording medium. (Imamoto:
para. 0002).
(Final Act. 5-6.)
Appellants, however, contends that:
Thus, in a system made according to the teachings of
Imamoto, it would be impossible to first write the keystream
and then replace it with secure data as required by the
current claims.
The first, and only, thing recorded into the WORM of Imamoto
is the encrypted data file. In particular, paragraph 0038 states
that "the memory block at AddrO 101 to Addr0864 records
encrypted content." Thus, the system of Imamoto does NOT
first record a keystream and then replace it with encrypted
data.
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(Br. 11.) In response, the Examiner, points to paragraph 38 of Imamoto as
showing "memory block 301 at addresses from AddrO 101 to Addr0864
record[ing] encrypted content ( corresponding to the claimed storing the
secure and deduplicated datafile) [in] the same location where the key was
previously stored (the claimed stored keystream)." (Ans. 7.)
We have reviewed the portions of Imamoto cited by the Examiner and
agree with Appellants that, based on the record before us, while Imamoto
teaches storing the encrypted data file, it does not teach storing the data file
in the same location as the previously stored keystream. Specifically,
Examiner does not explain how the cited portions of Imamoto also teach
"storing the keystream into a location on the virtual disk" in the first
instance. According to Appellants, it would be have been impossible
because paragraph 37 of Imamoto states that "[d]ata values can be
overwritten only once in the future through writing processing ...
overwriting the same memory block is inhibited." In other words, if the
keystream had been stored in a location on the virtual disk, the keystream
cannot be overwritten by the encrypted data. The Examiner does not
respond to Appellants' arguments regarding paragraph 3 7 of Imamoto but
instead explains that Appellants' claimed invention would "not work
[because the claim limitations require] writing twice in the 'writing once
read many virtual disk[,' i.e.,] storing the keystream ( encryption sequence)
and again storing the secure and deduplicated data file ( secure data file)" in
the same location as the keystream. (Ans. 7.) To the extent the Examiner is
determining that the claim is indefinite, we note that the issue is not before
us because the Examiner has not made a rejection under 35 U.S.C. § 112. In
addition, we read the preamble of claim 25, which recites "A method of
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preparing a secure write once read many virtual disk comprising the steps
of," to mean a method for preparing a secure virtual disk that is written once
with secure data and can be read many times afterwards. In other words, the
virtual disk becomes read only after a secure write. Therefore, the step of
storing the keystream, which does not contain secure encrypted data at a
location in the virtual disk, is an intermediate step to "preparing a secure
write once read many virtual disk."
For the foregoing reasons, we are persuaded of Examiner error in the
rejection of claim 25 and do not sustain the 35 U.S.C. § 103 rejection of
claim 25.
Claims 19--24 and 26-36
According to the Examiner, independent "claims 19, 22, 29, 30[,] and
33 similar in scope to claim 25 and is therefore rejected under similar
rationale." (Final Act. 6.) Therefore, for the foregoing reasons, we are
persuaded of Examiner error in the rejection of independent claims 19, 22,
29, 30, and 33, which recite limitations similar to those of claim 1, and do
not sustain the 35 U.S.C. § 103 rejection of these claims, as well as the
35 U.S.C. § 103 rejection of claims 20, 21, 23, 26-28, 31, 32, and 34--36,
which depend from either independent claim 19, 22, 25, 29, 30, or 33.
DECISION
We reverse the decision of the Examiner to reject claims 19--36.
REVERSED
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