Ex Parte CamenischDownload PDFPatent Trial and Appeal BoardMay 12, 201411541017 (P.T.A.B. May. 12, 2014) 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. 11/541,017 09/29/2006 Jan Leonhard Camenisch CH920030070US1 1656 7590 05/12/2014 Anne Vachon Dougherty 3173 Cedar Road Yorktown Hts, NY 10598 EXAMINER ANDERSON, MICHAEL D ART UNIT PAPER NUMBER 2433 MAIL DATE DELIVERY MODE 05/12/2014 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 JAN LEONHARD CAMENISCH ____________ Appeal 2011-006399 Application 11/541,017 Technology Center 2400 ____________ Before ROBERT E. NAPPI, BRUCE R.WINSOR, and LINZY T. McCARTNEY, Administrative Patent Judges. McCARTNEY, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) the Examiner’s final rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a NEW GROUND OF REJECTION. Appeal 2011-006399 Application 11/541,017 2 STATEMENT OF THE CASE Appellant’s invention “relates to a cryptographic method for computing a message using a host system comprising a trusted platform module.” (Spec. 1, ll.7-8.) Claim 1 illustrates the claimed subject matter: 1. A cryptographic method for allowing trusted communications at a computing device comprising a host computer system having at least one processing device and an associated trusted platform module (TPM) integrated into the host computer system comprising the steps of: - computing a first contribution to a message by the TPM, the first contribution being based on a first secret parameter stored in the TPM; - computing a second contribution to the message by the host system, the second contribution being based on a second secret parameter stored in the host system outside the TPM; - combining the first and second contributions to the message at one of the host and the TPM; and - conducting a first proof to determine whether the contribution of one of the host and the TPM was computed correctly. REJECTION Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Hoff (US 2006/0129824 Al; June 15, 2006) and Brickell (US 2004/0205341 Al; October 14, 2004). Appeal 2011-006399 Application 11/541,017 3 ISSUE The following issue is dispositive of this appeal:1 Does the combination of Hoff and Brickell teach or suggest “conducting a first proof to determine whether the contribution of one of the host and the TPM was computed correctly” as recited in claim 1? ANALYSIS The Examiner found Brickell disclosed “combining proofs . . . to form an interactive proof utilized by challenger” and determined this disclosure taught “conducting a first proof to determine whether the contribution of one of the host and the TPM was computed correctly.” (Ans. 12.) Appellant contends the cited portion of Brickell teaches verifying a TPM knows certain values without revealing the values themselves. (App. Br. 17.) Appellant argues this disclosure neither teaches nor suggests the “conducting a first proof” limitation. (Id. at 17-18.) We agree with Appellant. It is not readily apparent how “combining proofs . . . to form an interactive proof utilized by challenger” teaches or suggests “conducting a first proof to determine whether [a] contribution . . . was computed correctly,” and the Examiner has not adequately explained why this teaching satisfies the limitation. Accordingly, we reverse the rejection of claim 1 under 35 U.S.C. § 103(a). As the other rejected claims 1 Appellant also requests review of (1) an unspecified restriction requirement, (2) the finality of the latest Office action, and (3) the Examiner’s refusal to withdraw the Final Rejection. (App. Br. 12.) We have not considered these issues, as the issues are reviewable by petition to the Director, not by appeal. See MPEP § 1002.02(c); Ex Parte Frye, 94 USPQ2d 1072, 1077-78 (BPAI 2010) (precedential) (concluding a matter subject to petition was outside the Board’s jurisdiction). Appeal 2011-006399 Application 11/541,017 4 either include a similar limitation or depend from a claim that does, we also reverse the rejections of claims 2-20 under 35 U.S.C. § 103(a). NEW GROUND OF REJECTION Per our authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection for claims 19 and 20 under 35 U.S.C. § 101 as directed to non- statutory subject matter. Claim 19 recites a “computer program product comprising a computer readable medium,” and claim 20 depends from claim 19. The broadest reasonable interpretation of “computer readable medium” generally includes transitory propagating signals. See David J. Kappos, Subject Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010). Appellant’s claims and written description do not lead us to a different conclusion. (See Spec. 11, ll. 9-11; 14, ll. 22-25.) When the broadest reasonable interpretation of a claim includes transitory propagating signals, the claim encompasses non-statutory subject matter. See In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007); Ex parte Mewherter, 107 USPQ2d 1857, 1862 (PTAB 2013) (precedential). Therefore, we reject claims 19 and 20 under 35 U.S.C. § 101 as being directed to non-statutory subject matter. We note, however, the Office has indicated Appellant may overcome this rejection by amending claim 19 to include the limitation “non-transitory.” See Subject Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office at 212. Appeal 2011-006399 Application 11/541,017 5 DECISION We reverse the rejections of claims 1-20 under 35 U.S.C. § 103(a). We enter a new ground of rejection for claims 19 and 20 under 35 U.S.C. § 101. This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides that “[a] new ground of rejection . . . shall not be considered final for judicial review.” Section 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner . . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. 37 C.F.R. § 41.50(b). REVERSED 37 C.F.R. § 41.50(b) llw Copy with citationCopy as parenthetical citation