Ex Parte McCown et alDownload PDFPatent Trial and Appeal BoardJun 6, 201713196781 (P.T.A.B. Jun. 6, 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. 13/196,781 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.) 2 Appeal 2017-001175 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. 3 Appeal 2017-001175 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 4 Appeal 2017-001175 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 5 Appeal 2017-001175 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 6 Copy with citationCopy as parenthetical citation