Ex Parte McCown et al

Patent Trial and Appeal Board

Jun 6, 2017

13196781 (P.T.A.B. Jun. 6, 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.
13/196,781 08/02/2011 Steven H. McCown STK02058PUS1 4480
51344 7590 06/08/2017
BROOKS KUSHMAN P.C. /Oracle America/ SUN / STK
1000 TOWN CENTER, TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075-1238
EXAMINER
FIELDS, COURTNEY D
ART UNIT PAPER NUMBER
2436
NOTIFICATION DATE DELIVERY MODE
06/08/2017 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):
docketing @brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN H. MCCOWN, STEPHEN S. SELKIRK,
CHARLES A. MILLIGAN, JAMES P. HUGHES, and JACQUES DEBIEZ
Appeal 2017-001175
Application 13/196,7811
Technology Center 2400
JOSEPH L. DIXON, ROBERT E. NAPPI, and
NORMAN H. BEAMER, Administrative Patent Judges.
BEAMER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 3—7, and 9-12, which are all claims pending.
Claims 2, 8, and 13—18 are cancelled. We have jurisdiction over the pending
rejected claims under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify Oracle America, Inc. as the real party in interest. (App.
Br. 2.)
Appeal 2017-001175
Application 13/196,781
THE INVENTION
Appellants’ disclosed and claimed invention is directed to secure
storage in a data storage canister. (Abstract.)
Independent claim 1, reproduced below, is illustrative of the subject
matter on appeal:
1. A data storage system comprising:
a data storage canister including a plurality of data
storage devices and a controller programmed to (a) in response
to receiving data having a size of N words from a data
producer, perform at least one data security operation on the
data with a key from a key server independent of the data
producer to generate secure data having a size of N+K words
and including the key or a designation variable for the key, and
store the secure data on at least one of the devices and (b) in
response to receiving a request that does not include the key or
the designation variable for the key from a data consumer to
access the data, retrieve the secure data, convert the N+K words
into N words using the key, and transmit the N words to the
data consumer.
REJECTIONS
The Examiner rejected claims 1, 3—7, and 9—12 under 35 U.S.C.
§ 103(a) as being unpatentable over Kern et al. (US 6,446, 209 B2, issued
Sep. 3, 2002), Wallace, Jr. (US 2002/0112154 Al, pub. Aug. 15, 2002), and
Wann (US 7,136,995 Bl, issued Nov. 14, 2006). (Final Act. 4—8.)
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Application 13/196,781
ISSUE ON APPEAL
Appellants’ arguments in the Appeal Brief present the following
issue:2
Whether the Examiner met the burden of providing a sufficient
rationale for relying on the combination of Kern, Wallace, and Wann in
finding the pending claims unpatentable. (App. Br. 3 4.)
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments the Examiner erred. We disagree with Appellants’ arguments,
and we adopt as our own (1) the pertinent findings and reasons set forth by
the Examiner in the Action from which this appeal is taken (Final Act. 4—8)
and (2) the corresponding findings and reasons set forth by the Examiner in
the Examiner’s Answer in response to Appellants’ Appeal Brief (Ans. 2—4).
We concur with the applicable conclusions reached by the Examiner, and
emphasize the following.
In finding the subject matter of the claims taught or suggested by
Kern, Wallace, and Wann, the Examiner relies on the disclosure in Kern of a
storage controller that conditions access by requiring a key that matched a
security key stored in metadata, allowing the storage controller to be
attached directly to a network without compromising security. (Final Act.
4—5; Kern Abstract, col. 1,11. 15—22, col. 2,11. 55—58.) The Examiner also
2 Rather than reiterate the arguments of Appellants and the positions of the
Examiner, we refer to the Appeal Brief (filed Feb. 23, 2016); the Reply Brief
(filed Oct. 24, 2016); the Final Office Action (mailed Sep. 24, 2015); and the
Examiner’s Answer (mailed Aug. 24, 2016) for the respective details.
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Application 13/196,781
relies on the disclosure in Wallace of a key server used to generate secure
data. (Final Act. 6; Wallace Tflf 18, 60, 65.) The Examiner further relies on
the disclosure in Wann of a cryptographic device adapted to transparently
and “invisibl[y]” perform data encryption and decryption on a data stream
flowing between a data generating device and a data storage device without
compromising overall system performance. (Final Act. 6—7; Wann col. 2:7—
17; col. 3,11. 30-36, 62-65.)
Appellants argue the Examiner errs because the rejection does not
provide sufficient justification for reliance on the combination of Kern,
Wallace, and Wann. (App. Br. 3.) In particular, Appellants argue there
would be no reason to combine the transparent encryption/decryption
disclosure of Wann with the storage controller of Kern because:
[T]he point of Kern is that “hosts [are] to provide a key
matching or having another prescribed relation to the stored key
as a condition to granting future host requests to access the
stored target data.” Kern, col. 2,11. 55-58. Modifying Kern
with Wann’s transparency such that hosts are no longer
required to provide a key matching or having another
prescribed relation to the stored key as a condition to granting
future host requests would appear to defeat the security
measures offered by Kern. As such, one of ordinary skill would
not have had reason to combine the teachings of Wann with
Kern and Wallace.
(App. Br. 4.) However, as the Examiner finds, each of the references relied
upon involve secure encryption and decryption of data, and so security
measures are not defeated by the combination:
[A]all three inventions Kern et al., Wallace, Jr., and Wann, are
directed toward access security for digital data implemented
within a data storage system for regulating data security without
compromising the overall system/server that perform security
functions .... Therefore, it would have been obvious to one of
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Application 13/196,781
ordinary skill in the art at the time the invention was made to
combine the teachings of Kern et al.’s data storage device for
regulating data security into Wallace, Jr.’s secure network
server for protecting user privacy modified with Wann’s
cryptographic device adapted to perform data encryption and
decryption between a data generating device and data storage
device, with a motivation to establish by a server a secure state
between the server which is independent of a remote computer
operated by a user for generating secure encrypted user data and
an encryption key is created by a server from a user key. . . .
[This] allows the read/write to be performed without the use of
any key information and the overall system performance is
never compromised .... Thus, the advantages of the systems
of Kern et al., Wallace, Jr., and Wann could have been easily
combinable with more than reasonable expectation of success
and the combination is efficient and proper.
Furthermore, another motivation for combining Kern et
al. and Wallace, Jr. in further view of Wann will provide the
use of transparent encryption which is used to interface to a
data storage device on which the protected object is stored, such
that any copy of the protected object is always encrypted when
present on the data storage device as shown in Figures 3 and 4
of the Wann reference.
(Ans. 3—4.) (Emphasis omitted).
“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference.” Keller, 642 F.2d at 425. Instead, the relevant issue is “what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.” Id. “Combining the teachings of references does
not involve an ability to combine their specific structures.” In re Nievelt,
482 F.2d 965, 968 (CCPA 1973).
Moreover, Appellants do not point to any evidence of record that the
resulting combination would be “uniquely challenging or difficult for one of
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Application 13/196,781
ordinary skill in the art” or “represented an unobvious step over the prior
art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed.
Cir. 2007) (citing KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398, 418-19
(2007)). The Examiner’s findings regarding the motivation to combine the
references, as quoted above, are reasonable because the skilled artisan would
“be able to fit the teachings of multiple patents together like pieces of a
puzzle” because the skilled artisan is “a person of ordinary creativity, not an
automaton.” KSR, 550 U.S. at 420—21. We are persuaded the claimed
subject matter exemplifies the principle that “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSR, 550 U.S. at 416.
DECISION
The Examiner’s decision rejecting claims 1, 3—7, and 9-12 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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