Prosecution Insights
Last updated: August 17, 2026
Application No. 18/975,952

PACKING VARIABLE LENGTH CIPHERTEXT INSTANCES IN A DATA STREAM

Final Rejection §103§112
Filed
Dec 10, 2024
Examiner
CARNES, THOMAS A
Art Unit
2436
Tech Center
2400 — Computer Networks
Assignee
International Business Machines Corporation
OA Round
2 (Final)
70%
Grant Probability
Favorable
3-4
OA Rounds
1y 6m
Est. Remaining
99%
With Interview

Examiner Intelligence

Grants 70% — above average
70%
Career Allowance Rate
57 granted / 82 resolved
+11.5% vs TC avg
Strong +70% interview lift
Without
With
+69.9%
Interview Lift
resolved cases with interview
Typical timeline
3y 2m
Avg Prosecution
20 currently pending
Career history
105
Total Applications
across all art units

Statute-Specific Performance

§101
5.9%
-34.1% vs TC avg
§103
60.3%
+20.3% vs TC avg
§102
9.7%
-30.3% vs TC avg
§112
20.8%
-19.2% vs TC avg
Black line = Tech Center average estimate • Based on career data from 82 resolved cases

Office Action

§103 §112
DETAILED ACTION This Office Action is in response to the communication filed on 5/25/2026. Claims 1-20 are pending. Claims 1-5, 7-8, 11-13, 15-18 and 20 have been amended. Claims 1-20 are rejected. Notice of Pre-AIA or AIA Status The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Intended use A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Functional recitation(s) have been considered but given less patentable weight because they fail to add any steps and are thereby regarded as intended use language. A positive recitation of the limitations is required in order to be given patentable weight. The following claims recite intended use. Claims 1, 11 and 15 recite the features “compressing the block of data to form compressed data” and “encrypting the compressed data to generate ciphertext” which should read “to generate a ciphertext” and “processes the scheme field to access the ciphertext following the scheme field”. Claims 2, 12 and 17 recite “processes the encoding field to determine a start of a next block of data in the packed stream”. Claims 6, 19, 14 and 19 recite “encrypting the second block of data to generate second ciphertext”. Claims 8, 15 and 20 recite “processes key hashes for different instances of ciphertext to perform deduplication”. Notes: The preamble of claims 1, 11 and 16 recite “a storage system” which is used to provide antecedent basis for “the storage system” which makes the preamble limiting. Claim Objections The previous Claim objections have been withdrawn due to Applicant’s amendments. Claims 5, 13 and 18 are objected to because of the following informalities: The claims recite “block fo data” which should read “block of data”. Appropriate correction is required. Response to Arguments Applicant’s arguments with respect to claims 2 (12 and 17) have been considered but are moot because challenged portion has been removed from the claims Applicant’s arguments with respect to claims 1 (12 and 16) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Note the new grounds of rejection, Boesgaard, was previously used to reject similar concepts which were incorporated into the independent claims. Boesgaard still reads on the limitations as amended because Boesgaard specifically teaches variable size (length) and using end of data markers (indicators) which are both related to the compressed data and indicate the (size) length of the compressed data. Applicant argues that the dependent claims are in condition for allowance by virtue of their allowance on the independent claims, however Examiner does not find the independent claims in condition for allowance therefore does not find the dependent claims in condition for allowance. Claim Rejections - 35 USC § 112 The previous 112 rejections are withdrawn due to Applicant’s amendments. The following is a quotation of 35 U.S.C. 112(b): (b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention. The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. Claims 1, 11 and 16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 1, 11 and 16 recites the limitation "encoding related fields… an encoding field". There is insufficient antecedent basis for this limitation in the claim. “encoding related field” does not provide proper antecedent basis for “an encoding field”. “encoding related fields” includes a plurality of encoding fields, therefore when “an encoding field” is recited it is not clear which of the plurality of encoding fields is providing the antecedent basis for the singular encoding field. “encoding related fields” are different from “encoding field”, see MPEP § 2173.05(c). Claim 2-4, 12 and 17 recites the limitation "the encoding field". There is insufficient antecedent basis for this limitation in the claim. Claims 1, 11 and 16 recite “an encoding field indicating a compressed data length” and “an encoding field indicating encrypted variable length compressed data”. It is not clear which is the antecedent basis for “the encoding field”. Claims 1-2, 8-9, 11-12, 15-17, and 20 recite “compressed data”. There is insufficient antecedent basis for this limitation in the claim. Claims 1, 11 and 16 recite “encoding related fields for compressed data” and “compressing the block of data to form compressed data” and “the ciphertext comprises compressed data” It is not clear which is the antecedent basis for “the compressed data”. Dependent claims 2-10, 12-15 and 17-18 are rejected under the same rationale as they do not cure the deficiencies of independent claims 1, 11 and 16. Claim Rejections - 35 USC § 103 In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status. The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action: A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made. The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows: 1. Determining the scope and contents of the prior art. 2. Ascertaining the differences between the prior art and the claims at issue. 3. Resolving the level of ordinary skill in the pertinent art. 4. Considering objective evidence present in the application indicating obviousness or nonobviousness. Claims 1-4, 6-7, 11-12, 16-17 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Durham (U.S. 20190004843), in view of Boesgaard (U.S. 20200396056). Regarding claim 1, Durham discloses: A computer implemented method for packaging data to transfer to a storage system to store, comprising: determining whether a compressibility of a block of data exceeds a compression threshold; (Durham [0031-0045, Fig. 3A-310] teaches determining if the data is compressible) compressing the block of data to form compressed data; (Durham [0031-0045, Fig. 3A-312] teaches compressing the data) in response to determining that the compressibility exceeds the compression threshold, performing: (Durham [0031-0045, Fig. 3A-Yes] teaches performing actions in response to a determination of comparability) encrypting the compressed data to generate ciphertext; (Durham [0031-0045, Fig. 3A-322] teaches encrypting the compressed data in response to the determination of compressibility) generating in a packed stream a scheme field indicating the packed stream has encoding related fields for compressed data… and the ciphertext including the compressed data; and (Durham [0011-0030, 0031-0040, 0042-0053, Fig.4-414, Fig. 4-416] teaches generating a packed stream which includes generating compression indicator, which is a field related to encoding of compressed data, indicates the data is in compressed form where the system which is used during read and write requests to determine the state of the encrypted line; and generating a packed stream which includes compressed ciphertext data) transmitting the packed stream to the storage system… (Durham [0031-0045, Fig. 3A-328] teaches transmitting and writing the encrypted line to the memory address in the storage system) wherein the scheme field indicates to the storage system whether the ciphertext comprises compressed data (Durham [0040-0045] teaches an compression indicator which can indicate compressed/not compressed data “1b indicates compressed and 0b indicates not compressed” and whether there is an encoding field indicating encrypted (Durham [0040-0045, 0056-0063, 0069-0075, Fig. 8A-B] teaches fields which indicate encrypted compressed data and including indicators which indicate the appropriate steps to be performed) Durham does not explicitly disclose: generating… an encoding field indicating a compressed data length of the compressed data, variable length compressed data. However, in the same field of endeavor Boesgaard teaches: generating… an encoding field indicating a compressed data length of the compressed data, (Boesgaard [0064, 0075, 0083, 0106] A method could be to include compressed or encoded size information… The encoded versions of at least one of the strings may include size information or EOD marker to guide a decompression or decoding step performed during format-preserving decryption where to split the two substrings variable length compressed data. (Boesgaard [0006-0034] teaches compression and encryption of a data object of variable size (length), which creates variable length compressed data) Durham and Boesgaard are analogous art because they are from the same field of endeavor compression and encryption. Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of Durham and Boesgaard before him or her, to modify the method of Durham to include the variable length ciphertexts and related size information of Boesgaard because indicating where an object or part ends and the next start is beneficial when streaming compressed or encrypted data this method may reduce leakage of format information and/or size information from the input data object to the format-preserving encrypted data object. The motivation for doing so would be [“The reversibility can for example be ensured by encoding EOD markers during the compression or encoding steps (may be omitted from one), such that, during decompression or decoding, it can be determined when one substring ends and the next begins”] (Paragraph 0008-0009, 0022, 0075 by Boesgaard)]. Therefore, it would have been obvious to combine Durham and Boesgaard to obtain the invention as specified in the instant claim. Claim 11 recites limitations substantially similar in scope as claim 1 above, therefore, is also rejected under the same rationale set forth above. Additionally claim 11 discloses: A computer system for packaging data to transfer to a storage system to store ,comprising: a processor set; one or more computer-readable storage media; and program instructions stored on the one or more computer-readable storage media to cause the processor set to perform operations comprising: (Durham [0013] The disclosed embodiments may be implemented, in some cases, in hardware, firmware, software, or any combination thereof. The disclosed embodiments may also be implemented as instructions carried by or stored on a transitory or non-transitory machine-readable (e.g., computer-readable) storage medium) Claim 16 recites limitations substantially similar in scope as claim 1 above, therefore, is also rejected under the same rationale set forth above. Additionally claim 16 discloses: A computer system for packaging data to transfer to a storage system to store, comprising: a processor set; one or more computer-readable storage media; and program instructions stored on the one or more computer-readable storage media to cause the processor set to perform operations comprising: (Durham [Abstract, 0013] Systems and methods for memory isolation are provided. The disclosed embodiments may be implemented, in some cases, in hardware, firmware, software, or any combination thereof. The disclosed embodiments may also be implemented as instructions carried by or stored on a transitory or non-transitory machine-readable (e.g., computer-readable) storage medium) Regarding claims 6, 14 and 19, Durham discloses: The computer implemented method of claim 1, wherein the block of data comprises a first block of data and the ciphertext comprises first ciphertext, further comprising: determining whether a compressibility of a second block of data exceeds the compression threshold; and (Durham [0031-0045, Fig. 3A-310] teaches determining if the data is compressible; [Fig. 3AB, 0023-0037] teaches performing the method a second time) in response to determining that the compressibility of the second block of data does not exceed the compression threshold, performing: (Durham [0031-0045, Fig. 3A-No] teaches performing actions in response to a determination of comparability; [Fig. 3AB, 0023-0037] teaches performing the method a second time including encrypting without compressing) encrypting the second block of data to generate second ciphertext, wherein the second ciphertext is uncompressed; and (Durham [0031-0045, Fig. 3B-330] teaches encrypting the compressed data in response to the determination of compressibility; [Fig. 3AB, 0023-0037] teaches performing the method a second time including encrypting without compressing) generating in the packed stream the second ciphertext following the first ciphertext. (Durham [0031-0040, 0042-0053, Fig.4-414, Fig. 4-416] teaches a packed stream which includes compression indicator indicates the data is in compressed form; [Fig. 3AB, 0023-0037] teaches performing the method a second time) It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify with Boesgaard for similar reasons as cited in claim 1. Regarding claims 2, 12 and 17, Durham in view of Boesgaard discloses: The computer implemented method of claim 1, Durham discloses the indication of compressed data length above does not explicitly disclose: wherein the storage system processes the encoding field to determine a start of a next block of data in the packed stream following the compressed data length from a start of the ciphertext, wherein ciphertext instances in the packed stream are of variable length due to compression However, in the same field of endeavor Durham discloses: wherein the storage system processes the encoding field to determine a start of a next block of data in the packed stream following the compressed data length from a start of the ciphertext, wherein ciphertext instances in the packed stream are of variable length due to compression. (Boesgaard [0009] A first aspect of the invention provides a computer-implemented method of performing format-preserving encryption of a data object of variable size; [0106-0108] teaches an end-of-data marker at the end of each object or part to indicate where an object or part ends and the next starts) It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify with Boesgaard for similar reasons as cited in claim 1. Regarding claim 3, Durham in view of Boesgaard discloses: The computer implemented method of claim 2, wherein the scheme field comprises a first field in the packed stream for the block of data and the encoding field follows the scheme field, and wherein the ciphertext follows the encoding field. (Durham [0014, 0031-0040, 0042-0046, Fig.4-414] teaches fields in the data block which can be in various orders. The fields include a scheme field which is before a ciphertext) Regarding claim 4, Durham in view of Boesgaard discloses: The computer implemented method of claim 2, wherein the encoding field comprises a first field in the packed stream for the block of data and the scheme field follows the encoding field, and wherein the ciphertext follows the scheme field. (Durham [0014, 0031-0040, 0042-0046, Fig.4-414] teaches fields in the data block which can be in various orders. The fields include a scheme field which is before a ciphertext) Regarding claim 7, Durham in view of Boesgaard discloses: The computer implemented method of claim 1, wherein the scheme field comprises a pattern at least two times, wherein the storage system upon detecting the repeated pattern at least two times access the ciphertext following the scheme field. (Durham [0025-0033, 0057] teaches monitoring for repeated patterns including predetermined bit patterns) Claims 5, 13 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Durham (U.S. 20190004843), in view of Boesgaard (U.S. 20200396056) and in further view of Venkatachalam (U.S. 20140161171). Regarding claims 5, 13 and 18, Durham in view of Boesgaard discloses: The computer implemented method of claim 2, While Durham teaches (Durham [0031-0045, Fig. 3A-310] teaches determining if the data is compressible) Durham in view of Boesgaard does not explicitly disclose: wherein the compression threshold comprises a compression ratio, and wherein the determining whether the compressibility of the block of data exceeds the compression threshold comprises compressing the block of data to compare to the compression ratio to determine if an amount of compression is sufficient However, in the same field of endeavor Venkatachalam teaches: wherein the compression threshold comprises a compression ratio, and wherein the determining whether the compressibility of the block of data exceeds the compression threshold comprises compressing the block of data to compare to the compression ratio to determine if an amount of compression is sufficient (Venkatachalam [0032-0055, 0056-0067 Fig. 4] teaches determining a level of compression (compression ratio) and the gain which would be achieved form performing compression and comparing that to a threshold to determine if the data should be compressed; level of compression 216 may be equivalent to one minus a sum of a payload size of the data flow, after compression, of a threshold number of past data packets (e.g., evaluation period 218, also referred to below as X, where X is a positive number) in the data flow over the sum of a payload size of the data flow, before compression, of the threshold number of past data packets in the data flow, as represented in equation 1 below) Durham in view of Boesgaard and Venkatachalam are analogous art because they are from the same field of endeavor data compression. Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of Durham in view of Boesgaard and Venkatachalam before him or her, to modify the method of Durham in view of Boesgaard to include the compressibility determination of Venkatachalam because it will improve efficiency. The motivation for doing so would be [“in order to improve the efficiency of use of the processing resources for performing compression”] (Paragraph 0028 by Venkatachalam)]. Therefore, it would have been obvious to combine Durham in view of Boesgaard and Venkatachalam to obtain the invention as specified in the instant claim. Claims 8-10, 15 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Durham (U.S. 20190004843), in view of Boesgaard (U.S. 20200396056) and in further view of Jaquette (U.S. 20220182217). Regarding claims 8, 15 and 20, Durham in view of Boesgaard discloses: The computer implemented method of claim 1, wherein in response to determining that the compressibility exceeds the compression threshold, further performing: generating a key hash from the compressed data, wherein the generating the packed stream comprises including the key hash in the packed stream following the scheme field, wherein the storage system processes key hashes for different instances of ciphertext (Durham [0025-0034, 0050-058, 0085] teaches generating a integrity check value, which may be a cyclic redundancy value or a hash of the encryption key, including it in a field in the data block, which is processed for different ciphertexts. The integrity check value can be generated as a hash and used for verifying the data matches and can also be used to encrypt the data) Durham in view of Boesgaard does not explicitly disclose: to perform deduplication with respect to the instances of ciphertext having the key hashes repeated in the packed stream. However, in the same field of endeavor Jaquette teaches: to perform deduplication with respect to the instances of ciphertext having the key hashes repeated in the packed stream. (Jaquette [0073-0092] teaches performing deduplication using same hash keys) Durham in view of Boesgaard and Jaquette are analogous art because they are from the same field of endeavor data compression. Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of Durham in view of Boesgaard and Jaquette before him or her, to modify the method of Durham in view of Boesgaard to include the deduplication of Jaquette because it will allow duplicates to be identified and removed. The motivation for doing so would be [“improving the effective storage capacity and performance of the hardware storage, while maintaining the security of the stored data via robust encryption”] (Paragraph 0084 by Jaquette)]. Therefore, it would have been obvious to combine Durham in view of Boesgaard and Jaquette to obtain the invention as specified in the instant claim. Regarding claim 9, Durham in view of Boesgaard and Jaquette discloses: The computer implemented method of claim 8, wherein the encrypting the compressed data comprises using the key hash as a tweak to encrypt the compressed data. (Durham [0034-0036, 0058] teaches AES/XTS block ciphers and modifying the compressed data using the hash) It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify with Boesgaard for similar reasons as cited in claim 2. Regarding claim 10, Durham in view of Boesgaard and Jaquette discloses: The computer implemented method of claim 1, wherein the block of data comprises a first block of data and the ciphertext comprises first ciphertext, further comprising: determining whether a compressibility of a second block of data exceeds the compression threshold; and (Durham [0031-0045, Fig. 3A-310] teaches determining if the data is compressible; [Fig. 3AB, 0023-0037] teaches performing the method a second time) in response to determining that the compressibility of the second block of data does not exceed the compression threshold, performing: (Durham [0031-0045, Fig. 3A-No] teaches performing actions in response to a determination of comparability; [Fig. 3AB, 0023-0037] teaches performing the method a second time including encrypting without compressing) encrypting the second block of data to generate second ciphertext, wherein the second ciphertext is uncompressed; and (Durham [0031-0045, Fig. 3B-330] teaches encrypting the compressed data in response to the determination of compressibility; [Fig. 3AB, 0023-0037] teaches performing the method a second time including encrypting without compressing) generating in the packed stream the second ciphertext following the first ciphertext. (Durham [0031-0040, 0042-0053, Fig.4-414, Fig. 4-416] teaches a packed stream which includes compression indicator indicates the data is in compressed form; [Fig. 3AB, 0023-0037] teaches performing the method a second time) Conclusion The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Chang 2012-09-12 (U.S. 20130010949) teaches A method and system for compressing and encrypting data. The method includes: receiving original data; performing a first compression of said original data to obtain a first compression result; and encrypting only a literal portion in the first compression result to obtain an encrypted first compression result. Embodiments of the present invention improve the efficiency of the process of compression +encryption to a great extent by means of encrypting only the literal portion of the compression result. Taniyama 2011-11-08 (U.S. 20120166752) teaches A data processing apparatus includes a calculating unit configured to calculate a compression ratio when a block selected from among the plurality of blocks is compressed; a determining unit configured to determine whether a block is to be compressed by comparing the calculated compression ratio with a threshold; a recording unit configured to record the block on the storage device in a compressed or uncompressed state on a basis of a result of the determination; a management information creating unit configured to create a management information in association with data identification information for identifying the data, state information indicating a compressed or uncompressed state is recorded to the management information in association with each block, when the each block is recorded on the storage device; and a storage processing unit configured to store the management information created by the management information creating unit on a memory. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a). A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action. Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS A CARNES whose telephone number is (571)272-4378. The examiner can normally be reached Monday-Friday. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Shewaye Gelagay can be reached at (571) 272-4219. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. THOMAS A. CARNES Examiner Art Unit 2436 /THOMAS A CARNES/Examiner, Art Unit 2436 /SHEWAYE GELAGAY/Supervisory Patent Examiner, Art Unit 2436
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Prosecution Timeline

Dec 10, 2024
Application Filed
Apr 21, 2026
Non-Final Rejection mailed — §103, §112
May 05, 2026
Examiner Interview Summary
May 05, 2026
Applicant Interview (Telephonic)
May 25, 2026
Response Filed
Jul 21, 2026
Final Rejection mailed — §103, §112 (current)

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