Ex Parte Shmuylovich et al

Patent Trials and Appeals Board

Jan 28, 2019

12325438 - (D) (P.T.A.B. Jan. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/325,438 12/01/2008 Samuil Shmuylovich
80167 7590 01/30/2019
Ryan, Mason & Lewis, LLP
48 South Service Road
Suite 100
Melville, NY 11747
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.
EMC-08-268(INl)US 1510
EXAMINER
EDWARDS, LINGLAN E
ART UNIT PAPER NUMBER
2491
NOTIFICATION DATE DELIVERY MODE
01/30/2019 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):
nyoffice@rml-law.com
jbr@rml-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte SAMUIL SHMUYLOVICH, BORIS FARIZON,
ANOOP GEORGE NINAN, ROBERT A. LINCOURT JR.,
SVETLANA PATSENKER, ALEKSANDRA A. MESSIER, MIN YIN,
EUGENIO KO RO LEV, RAJESH K. GANDI, PRAM OD KUL Y ADI PAI,
and VENKAT R. TIRUVEEDI 1
Appeal2018-005889
Application 12/325,4382
Technology Center 2400
Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
JOHN P. PINKERTON, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
1 The real party in interest is EMC IP Holding Company LLC. App. Br. 3.
2 This application was the subject of a previous appeal, Appeal 2013-
005797.
Appeal2018-005889
Application 12/325,438
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 4, 6, 7, 10, 12, 13, 16, 18, and 20. Claims 2, 3, 5, 8, 9, 11, 14, 15,
17, and 19 were cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Exemplary Claim
Exemplary claim 1 under appeal reads as follows ( emphasis added):
1. A computer implemented method comprising:
receiving, by a secure container, secret information for
accessing a device in a computer environment, wherein the
secret information is in a clear text form of a database query;
generating a plurality of representations of the secret
information, the plurality of representations comprising an
encrypted version of the secret information and an obfuscated
character string representing the secret information;
storing the generated plurality of representations of the
secret information [in]3 the secure container;
encrypting the secure container;
determining a condition of a use of the secret
information; and
in response to the determining the condition, providing at
least one of the plurality of representations of the secure
3 Although Appellants' Response Under 37 C.F.R. 1.116 dated October 7,
2016 amended claim 1 to include the limitation "storing the generated
plurality of representations ... in the secure container" ( emphasis added),
Appellants' Amendment dated March 28, 2017 included a reproduction of
claim 1 that omitted the word "in." We interpret claim 1 as reciting "storing
the generated plurality of representations ... in the secure container"
(emphasis added) to avoid a rejection under 35 U.S.C. § 112, second
paragraph for indefiniteness.
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Application 12/325,438
information from the secure container selected from a group
consisting of:
providing, by the secured container over a secured
network connection, the encrypted version of the secret
information to: (i) store the secret information in a
process memory, (ii) to transmit the secret information in
a payload of a communications message, and (iii) to store
the secret information in a persistent storage; and
providing, by the secured container over a secured
network connection, the obfuscated character string
representing the secret information to: (i) show the secret
information on a display, and (ii) to store the secret
information in a data file.
App. Br. 12 (Claims Appendix).
Rejections on Appeal4
The Examiner rejected claims 1, 4, 6, 7, 10, 12, 13, 16, 18, and 20
under 35 U.S.C. § 112, second paragraph as being indefinite for failing to
particularly point out and distinctly claim the subject matter which the
applicant regards as the invention.
The Examiner rejected claims 1, 4, 6, 7, 10, 12, 13, 16, 18, and 20
under 35 U.S.C. § I03(a) as being unpatentable over Malcolm
(US 2008/0301762 Al; published Dec. 4, 2008) ("Malcolm"), Odins-Lucas
et al. (US 2006/0225137 Al; published Oct. 5, 2006) ("Odins-Lucas"), and
Plouffe, Jr. (US 2006/0235876 Al; published Oct. 19, 2006) ("Plouffe").
4 The patentability of claims 4, 6, 7, 10, 12, 13, 16, 18, and 20 is not
separately argued by Appellants. See App. Br. 6-11. Thus, except for our
ultimate decision, claims 4, 6, 7, 10, 12, 13, 16, 18, and 20 are not discussed
further herein.
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Appeal2018-005889
Application 12/325,438
Issues on Appeal
Did the Examiner err in rejecting claim 1 as being indefinite?
Did the Examiner err in rejecting claim 1 as being obvious?
PRINCIPLES OF LAW
Indefiniteness
A claim is indefinite when it contains words or phrases whose
meaning is unclear. In re Packard, 751 F.3d 1307, 1304 (Fed. Cir. 2014).
Obviousness
The mere existence of differences between the prior art and the claim
does not establish non-obviousness. See Dann v. Johnston, 425 U.S. 219,
230 (1976). Instead, the relevant question is "whether the difference
between the prior art and the subject matter in question is a [difference]
sufficient to render the claimed subject matter unobvious to one skilled in
the applicable art." Dann, 425 U.S. at 228 (internal quotations and citations
omitted). Indeed, the Supreme Court made clear that when considering
obviousness, "the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007).
Further, one cannot show non-obviousness by attacking references
individually when the rejection is based on a combination of references. See
In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986); see also In re
Keller, 642 F.2d 413,425 (CCPA 1981).
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Application 12/325,438
ANALYSIS
A. Section 112 Argument
The Examiner finds that the scope of "wherein the secret information
is in a clear text form of a database query," as recited in claim 1 is unclear
because it is not clear how a database query in a clear text form can be used
for accessing a device. Final Act. 6. In the Examiner's Answer, the
Examiner further finds:
In this case, as one of ordinary skill would recognize, "secret
information" as used in the computing art refers to sensitive or
protected data that not known or seen or not meant to be known
or seen by unauthorized entity. On the other hand, a database
query is a programming language statement that is used for
accessing information stored in a database, it is well defined and
standardized, such as an SQL statement. A clear text form of a
defined programming language statement, is anything but a
secret. Further, while Appellant's argument appears to suggest
that the secret information is a variable of a database query, it is
not what the claim recites. In the claim, the secret information is
received by "a secure container", which, in light of the
specification, is a software data structure, defined as "an object
that stores other objects (its elements), and that has methods for
accessing its elements" (Specification, page 8, lines 13-14), i.e.,
it is an object as defined in the paradigm of objected oriented
programming, it is not a database, nor a device. Thus, it is not
clear how secret information can be in a clear text form of
database query received by a secure container.
Ans. 4--5 (emphasis added).
Appellants raise the following argument in contending that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 112, second
paragraph:
It is well known in the art that a database query (such as System
Query Language (SQL) query), may be used to access
information from a device (such as information from a SQL
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Application 12/325,438
databased stored on a computing device). It is also well known
that such queries (e.g., SQL queries) include search variables
that are read by a device ( e.g., a relational database of a device)
to obtain a set of data that matches the query ( e.g., SQL relational
database query). And, as such, such a database query, in some
cases, could include credential information (e.g., a user
identifier and user password, or other credentials) [that] may be
used to access a device in a computer environment as claimed.
Alternatively, assuming arguendo, that the ordinary and
customary meanings of the terms are not clear, the Applicants
submit that [the] specification provides adequate meaning for
the terms. Applicants respectfully submit that "receiving, by a
secure container, secret information for accessing a device in a
computer environment, wherein the secret information is in a
clear text form of a database query" is adequately described in
the specification, at least, on Figure 2, and on page 8 line 25 to
page 9 line 25[.]
App. Br. 7-9 (Appellants' citations omitted; panel's emphasis added).
We are persuaded the Examiner erred. More specifically, we agree
with Appellants that "wherein the secret information is in a clear text form
of a database query" is adequately described in the Specification, at least, on
Figure 2, and on page 8 line 25 to page 9 line 25 of Appellants'
Specification, and thus, the aforementioned claim element is definite for the
reasons provided in Appellants' Appeal Brief. See App. Br. 8-9 (citing
Spec. 8:25-9:25; Fig. 2).
Accordingly, Appellants have shown the Examiner erred in rejecting
claim 1 under 35 U.S.C. § 112, second paragraph. Therefore, we do not
sustain the rejection.
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Application 12/325,438
B. Section 103 Argument
The Examiner finds the combination of cited references teaches or
suggests all of the elements of claim 1. Final Act. 7-10. Appellants contend
the combination of cited prior art references does not teach or suggest
"generating a plurality of representations of the secret information, the
plurality of representations comprising an encrypted version of the secret
information and an obfuscated character string representing the secret
information; storing the generated plurality of representations of the secret
information the secure container; [and] encrypting the secure container," as
recited in claim 1 because:
The cited passages of Odins-Lucas mainly only appears to
describe how information may be copied from a source
application, and pasted to a target application using a data
object, ... but it was never contemplated that such data object,
as disclosed in Odins-Lucas, would be encrypted and stored,
unlike the secure containers as claimed. Such data objects as
disclosed in Odins-Lucas, at least, at the time its filing in 2005,
were stored in Random Access Memory (RAM) and were not
considered for storage in a more persistent memory. Also,
because of the nature of copying and pasting information from a
target application to a source application by the same end-user,
there was never a need for any of the related data to be
encrypted.
In addition, Applicants respectfully submit that the combination
[does] not describe how [the] data object as disclosed in Odins-
Lucas would store the generated a plurality of representations of
the secret information, which includes an encrypted version of
the secret information and an obfuscated character string
representing the secret information. That is, Odins-Lucas does
not teach or suggest that the clipboard and drag-and-drop
objects, which copy plain text might be modified to store "an
encrypted version of the secret information" as claimed.
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Further, as noted above Odins-Lucas does not disclose
encryption, including encrypted secret information in an
object, or "providing at least one of the plurality of
representations of the secure information from the secure
container" or providing encrypted secret information in
process memory, payloads of communication messages, or
persistent storage. The portions of Odins-Lucas relied upon by
the Examiner merely state that an intermediate data object might
include copied data in a variety of formats. Odins-Lucas notably
does not disclose or suggest providing secure information as
encrypted information for use in a process memory, in a
payload of a communications message, or in a persistent
storage. Malcolm in view of Odins-Lucas does not cure these
deficiencies and one skilled in the relevant arts would not
bridge this gap.
App. Br. 10-11 (Appellants' emphasis and citations omitted; panel's
emphasis added).
In the Examiner's Answer, the Examiner further finds:
[I]n response to applicant's arguments against the references
individually, one cannot show nonobviousness by attacking
references individually when the rejections are based on
combinations of references . ... Malcolm disclosed [using]
different representations of secret information under different
conditions, and providing them via secured manner. The
difference between Malcolm and the claimed invention is how
the different representations are organized and stored, i.e., use
of objected oriented programming paradigm, which is clearly
disclosed by Odins-Lucas and Plouffe. Odins-Lucas teaches the
concept of using data objects (i.e. containers) to encapsulate
different representations of subject data (Odins-Lucas: par
0018, 0019, the "intermediate data object" (i.e. container) may
contain and provide different formats and types of data
depending on the capabilities of source application and target
applications, and further par 0017, use of OLE, i.e., OLEObject
provides data objects and methods for accessing corresponding
data objects). While Odins-Lucas teaches a system providing a
clipboard or drag-and-drop interface of a graphical computer
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interface, a source application includes trust information along
with data that is proffered to a target application. The target
application conditions its acceptance of such data based on the
trust information", it is not what the examiner cited for
teaching the claimed limitation. Rather, the examiner cited
Odins-Lucas to teach use of data object for providing different
data format/representations within one data object, in the
processing and transmitting of data, in the implementation of the
system for protecting content during system operations. Thus,
one of ordinary skill in the art would have been capable of
applying this known technical implementation ( object oriented
design), in the same manner to the prior art software system of
Malcolm, i.e., one skilled in the art would readily recognize that
by implementing a data object for encapsulating different format,
the system would able to provide modularity, ease reuse of code
through inheritance, flexibility through polymorphism (which
are fundamental features of objected oriented design concept),
and the result would have been predictable. Use of known
technique to improve similar system in the same way provided
in the teachings of prior art is part of the ordinary capabilities of
one skilled in the art.
Further, Plouffe disclosed the concept of encrypting data object
container and providing the encrypted secure container
(Plouffe, par 0017, encrypted objected being passed from a first
application to a second application), which provides a protection
mechanism to data objects (i.e. containers). One of ordinary skill
in the art would have been motivated to implement the system
of Malcolm with the object oriented design paradigm for data
representation and encryption of data objects for transmission
and storage disclosed by Plouffe in order to provide better
access efficiency and protection for the application data.
Ans. 9--10 (Examiner's citations omitted; panel's emphasis added).
We are not persuaded that the Examiner erred for the reasons
articulated in the Examiner's Answer. More specifically, we agree with the
Examiner that Appellants' arguments attack the references individually
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rather than the combination of references, as Appellants allege that Odins-
Lucas fails to teach an element of claim 1 (i.e., "encrypting the secure
container"), but the Examiner relies upon Plouffe rather than Odins-Lucas
for teaching the aforementioned claim element. See Final Act. 10 ( citing
Plouffe ,r 17); see also Ans. 10. Further, Appellants fail to provide any
factual evidence in support of Appellants' contention that it was never
contemplated, at the time of the filing of the Odins-Lucas reference, that the
data object disclosed in Odins-Lucas would be encrypted and stored. Mere
attorney arguments and conclusory statements that are unsupported by
factual evidence are entitled to little probative value. In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997).
We have considered Appellants' other arguments, and they are not
persuasive either. Accordingly, Appellants have not shown the Examiner
erred in rejecting claim 1 under 35 U.S.C. § 103(a).
CONCLUSIONS
(1) The Examiner erred in rejecting claims 1, 4, 6, 7, 10, 12, 13, 16,
18, and 20 as being indefinite under 35 U.S.C. 112, second paragraph.
(2) The Examiner has not erred in rejecting claims 1, 4, 6, 7, 10, 12,
13, 16, 18, and 20 as being unpatentable under 35 U.S.C. § 103(a).
(3) Claims 1, 6-14, 18, and 19 are not patentable.
DECISION
We reverse the Examiner's rejection of claims 1, 4, 6, 7, 10, 12, 13,
16, 18, and 20 under 35 U.S.C. § 112, second paragraph.
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Application 12/325,438
We affirm the Examiner's rejection of claims 1, 4, 6, 7, 10, 12, 13, 16,
18, and 20 as being unpatentable under 35 U.S.C. § 103(a).
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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