Ex Parte FischerDownload PDFPatent Trial and Appeal BoardSep 25, 201713483496 (P.T.A.B. Sep. 25, 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. 13/483,496 05/30/2012 Wieland FISCHER 42801-0180 (S0193.0183) 3710 38881 7590 Infineon Technologies AG c/o Schiff Hardin LLP 666 Fifth Avenue Suite 1700 NEW YORK, NY 10103 09/27/2017 EXAMINER JEUDY, JOSNEL ART UNIT PAPER NUMBER 2438 NOTIFICATION DATE DELIVERY MODE 09/27/2017 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): lbrutman @ schiffhardin.com patents-NY @ schiffhardin.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WIELAND FISCHER Appeal 2017-004677 Application 13/483,4961 Technology Center 2400 Before DEBRA K. STEPHENS, DANIEL J. GALLIGAN, and JESSICA C. KAISER, Administrative Patent Judges. GALLIGAN, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1—3 and 5—23, which are all of the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). Claim 4 has been cancelled. We AFFIRM.2 1 According to Appellant, the real party in interest is Infineon Technologies AG. App. Br. 1. 2 Our Decision refers to Appellant’s Appeal Brief filed July 22, 2016 (“App. Br.”); Appellant’s Reply Brief filed January 24, 2017 (“Reply Br.”); Examiner’s Answer mailed November 30, 2016 (“Ans.”); and Final Office Action mailed February 12, 2016 (“Final Act.”). Appeal 2017-004677 Application 13/483,496 STATEMENT OF THE CASE Claims on Appeal Claims 1,9, 19, 21, and 23 are independent claims. Claim 1 is reproduced below: 1. A device for determining an inverse of an initial value related to a modulus, comprising: a unit configured to process an iterative algorithm in a plurality of iterations, wherein the iterative algorithm comprises an iteration loop, the iteration loop comprising the plurality of iterations and an iteration loop requirement, wherein an iteration of the plurality of iterations includes two modular reductions and has, as an iteration result, values obtained by an iteration of an extended Euclidean algorithm, wherein an integer result of an integer division does not appear directly in any iteration of the plurality of iterations, wherein the unit comprises a controller configured to perform the iteration loop as long as the iteration result of a last executed iteration of the plurality of iterations fulfills the iteration loop requirement, wherein the iteration loop is left, when the iteration result of the last executed iteration of the plurality of iterations does not fulfill the iteration loop requirement, and wherein the iteration result of the last executed iteration is returned to obtain or to determine the inverse of the initial value related to the modulus, wherein the unit comprises a first processing sub-unit configured to process numbers having a first wordlength, and wherein the first processing sub-unit comprises the controller; [and] a second processing sub-unit configured to process numbers having a second wordlength, the second wordlength being greater than the first wordlength, and wherein the second processing sub-unit is configured to perform the modular reductions included in the iteration of the plurality of iterations, and 2 Appeal 2017-004677 Application 13/483,496 wherein at least one of the first processing sub-unit and the second processing sub-unit comprises a hardware implementation. Examiner’s Rejection Claims 1—3 and 5—23 stand rejected under 35 U.S.C § 101 as being directed to patent-ineligible subject matter. Final Act. 2—7. ANALYSIS Appellant contends the Examiner erred in concluding the invention, as recited in claims 1—3 and 5—23, is directed to patent-ineligible subject matter. Specifically, Appellant argues the claims “recite more than just an abstract idea of a mathematical procedure of an algorithm.” App. Br. 7; Reply Br. 1—2. In particular, Appellant argues: Independent claims 1 and 9 recite a device being a key generator for keys used in cryptographic applications. Independent claim 19 recites hardware registers and that the processing sub-unit accesses the hardware registers. Independent claims 1, 9, and 19 thus recite a particular machine, specifically, a device with subunits having different word lengths or a key generator for cryptographic applications. Independent claim 21 recites a corresponding method, and independent claim 23 recites a corresponding non-transitory storage medium. App. Br. 7. Appellant further argues that “the claims quality as ‘significantly more’ than the abstract idea.” App. Br. 7—8; Reply Br. 2—6. In Alice, the Supreme Court set forth an analytical “framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Alice Corp. Pty. Ltd. v. CLSBankInt’l, 134 S. Ct. 2347, 2355 3 Appeal 2017-004677 Application 13/483,496 (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97 (2012)). The first step in the analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If so, the second step is to consider the elements of the claims “individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the nature of the claim’ into a patent- eligible application.” Id. (quoting Mayo, 132 S. Ct. at 1298, 1297). In other words, the second step is to “search for an ‘inventive concept’ — i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Id. (brackets in original) (quotingMayo, 132 S. Ct. at 1294). As explained further below, we agree with the Examiner’s conclusion that the claims are directed to patent-ineligible subject matter. Independent Claims 1 and 19 First Step Turning to the first step, we agree with the Examiner that claims 1 and 19 “are directed to the abstract idea of a mathematical procedure of an algorithm for calculating parameters” (Final Act. 2, 4; see also Ans. 5—6, 8— 9), i.e., a mathematical algorithm. In particular, claims 1 and 19 are directed to “determining an inverse of an initial value related to a modulus.” See also Spec. 1:13—15 (“The present invention relates to cryptographic algorithms and, in particular, to algorithms for determining an inverse of a value related to a modulus.”). 4 Appeal 2017-004677 Application 13/483,496 Appellant argues that the claims recite “an integer result of an integer division does not appear directly in any iteration of the plurality of iterations” and that “a mathematical algorithm typically is not concerned with whether an integer result of an integer division appears directly or not.” Reply Br. 2. We are not persuaded, however, that this feature renders the claimed subject matter “much more than just a mathematical algorithm.” Reply Br. 2. Contrary to Appellant’s argument, the Specification teaches “a modular reduction takes the role of [integer] division . . . Hence, the integer result. . . does not appear directly.” Spec 7:4—9. That is, the claimed integer division result is the result of the mathematical algorithm including a modular reduction. See Spec. Fig. 3a. Appellant’s arguments pointing out hardware features recited in the claims (Reply Br. 1—2; App. Br. 7) do not persuade us the claims are not directed to a mathematical algorithm. The recited hardware features of claims 1 and 19 are generic computer components performing generic computer tasks and merely function to implement the abstract idea on a generic computer — processors process numbers having a wordlength (i.e., bit number) and registers store information. Accordingly, the claims are directed to an abstract idea because the claims are “directed essentially to a method of calculating” a resultant value by “using a mathematical formula.” Parker v. Flook, 437 U.S. 584, 595 (1978) (citations omitted). Second Step Turning to the second step, Appellant contends that the claims recite significantly more than the abstract idea. App. Br. 7—8; Reply Br. 3—6. 5 Appeal 2017-004677 Application 13/483,496 Specifically, Appellant argues claims 1 and 19 recite “hardware elements” which “represent meaningful limitations which transform the abstract idea into a patent eligible application of the abstract idea” (App. Br. 7), i.e., the claimed invention “us[es] different processing sub-units” and “hardware registers” (Reply Br. 3—5). Appellant further argues the claims “improve[]. . . processing sub-units” and “device[s] having several hardware registers” (Reply Br. 3) and “include at least one limitation other than what is well understood, routine, and conventional in the field” “because [the claimed invention] is novel and not obvious” (App. Br. 8; Reply Br. 3). Additionally, Appellant argues the claimed features have “advantage[s] over the prior art” including using a “processing sub-unit which is particularly suitable,” “solving] the security problem raised by [an] integer result of an integer division,” and providing “side-channel-attack- secure reduction hardware.” Reply Br. 3—6. We are not persuaded by Appellant’s argument that the abstract idea is transformed into patent eligible subject matter by the use of processing sub-units and hardware registers. App. Br. 7; Reply Br. 3—5. The processing sub-units and hardware registers Appellant highlights are “generic computer components that would be present in any general purpose computer” and perform generic computer functions, namely, arithmetically processing data and storing data. See Accenture Glob. Servs., GmbHv. Guidewire Software, Inc., 728 F.3d 1336, 1343—44 (Fed. Cir. 2013). Those limitations “apply [an] abstract idea . . . using some unspecified, generic computer” and “do[] no more than require a generic computer to perform generic computer functions”; therefore, these recitations fail to make the claimed subject matter patent-eligible. Alice, 134 S. Ct. at 2359-60. 6 Appeal 2017-004677 Application 13/483,496 Furthermore, we are not persuaded by Appellant’s argument that the claims provide “improvements to the field of processing sub-units” and “hardware registers.” Reply Br. 3. The invention is directed to improvements in cryptography using “algorithms for determining an inverse of a value related to a modulus” (Spec. 1:13—15), not improvements to processing-sub units and hardware registers. Indeed, the claims use processing-sub units and hardware registers in conventional manners, i.e., to process numbers and to store data. Additionally, Appellant’s argument that the claims “include at least one limitation other than what is well understood, routine, and conventional in the field” because the invention is “is novel and not obvious” (App. Br. 8; Reply Br. 3) is not persuasive. The presumably novel and nonobvious feature claimed is “the inventive algorithm.” Spec. 13:28—29; see Spec. 1:13—15. But, “the novelty of the mathematical algorithm is not a determining factor at all” as to the eligibility of an algorithm. Parker, 437 U.S. at 591, 598. Here, the generic computer components perform the “inventive algorithm.” See Alice, 134 S. Ct. at 2358 (“[T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.”). We are also not persuaded by Appellant’s argument that the claimed features have “advantage[s] over the prior art” including processing using a “processing sub-unit which is particularly suitable,” “solving] the security problem raised by [an] integer result of an integer division,” and providing “side-channel-attack-secure reduction hardware.” Reply Br. 3—6. The advantages Appellant discusses are not reflected in claims 1 and 19, which generically recite processing sub-units, rather than any “particularly 7 Appeal 2017-004677 Application 13/483,496 suitable” processing sub-unit. Further, the security and attack prevention features Appellant discusses are provided in the context of a device that uses the mathematical algorithm “for cryptographic key-generation.” Spec. 16:6— 13, 22—27. However, claims 1 and 19 do not recite that the device actually generates or applies cryptographic keys; therefore, Appellant’s arguments as to advantages for cryptographic key generation are not commensurate with the scope of claims 1 and 19. Accordingly, we are not persuaded the Examiner erred in concluding the invention, as recited in claims 1 and 19, is directed to patent-ineligible subject matter. Therefore, we sustain the rejection of claims 1 and 19 under 35 U.S.C § 101. Independent Claim 9 With respect to independent claim 9, Appellant argues the claim is “significantly more than just a mathematical algorithm” because the claim recites “the device is a key generator for keys used in cryptographic applications.” Reply Br. 2, 4; App. Br. 7. Appellant further argues the claim provides “improvements to the field of. . . key generators for keys used in cryptographic applications.” Reply Br. 3. Appellant additionally argues the claimed invention includes “specific advantage[s]... in the cryptographic application” when “executed within a key generator for keys used in cryptographic applications.” Reply Br. 4—5. We are not persuaded by Appellant’s arguments. First, we determine that the claims are directed to an abstract idea, i.e., a mathematical algorithm, for the same reasons as discussed supra in regards to claims 1 and 19. Second, that the abstract idea is implemented on a device that is a 8 Appeal 2017-004677 Application 13/483,496 key generator, does not transform the abstract idea into significantly more than the abstract idea itself. Notably, the claim does not link the mathematical algorithm with key generation. The mathematical algorithm is not expressly tied to the key generation features, and the mathematical algorithm is not used to generate a cryptographic key. As such, the claim’s recitation that the device is a key generator does not serve to transform the mathematical algorithm into significantly more than the algorithm itself. Furthermore, the improvements and advantages for cryptographic key generation Appellant argues (Reply Br. 2, 4; App. Br. 1) are not realized in claim 9 because the mathematical algorithm, which provides those argued improvements and advantages, is not used to generate cryptographic keys. Even further, a “key generator” describes a function that can be performed by a generic computer, rather than describing how specific hardware operates. Accordingly, we are not persuaded the Examiner erred in concluding claim 9 is directed to patent-ineligible subject matter. Therefore, we sustain the rejection of claim 9 under 35 U.S.C § 101. Dependent Claims 2 and 3 Claim 3 depends from claim 2, which recites “a modular reduction algorithm” which “enlarge[s] a modulus.” Claim 3 recites “a modulus register ... a target value register . . . [and] shifting] a content of the modulus register to more significant bit positions by a number of register bit positions to obtain a shifted content.” Claim 2 recites an additional mathematical algorithm and, accordingly, is an abstract idea directed to patent-ineligible subject matter. Additionally, similar to claim 19, discussed supra, the modulus and target value registers recited in claim 3 perform 9 Appeal 2017-004677 Application 13/483,496 conventional computing functions, i.e., storing data, and do not transform the abstract mathematical algorithm into patent-eligible subject matter. Further, under the broadest reasonable interpretation, the modulus data manipulations using registers recited in claim 3 are not applied to the mathematical algorithm recited in claim 1, from which claim 3 ultimately depends. Claim 3 depends on claim 2 which depends on claim 1. Claim 2 recites a modular reduction algorithm, but that modular reduction algorithm is not expressly tied to the mathematical algorithm recited in claim 1. In particular, claim 2 does not require that one of the modular reductions performed in claim 1 be performed using the modular reduction process of claim 2. Further, claim 3 “store[s] the modulus” and manipulates that content. But, “the modulus” manipulated in claim 3 may be broadly interpreted as the modulus introduced in claim 2 (“enlarge a modulus”) rather than any modulus recited in claim 1. As such, the data manipulations recited in claim 3 are not expressly tied to the mathematical algorithm of claim 1. That is, as currently drafted, claim 3 does not link its modular reduction using registers to the modulus operations recited in claim 1 and does not function to transform the abstract mathematical algorithm into patent-eligible subject matter. Accordingly, we are not persuaded the Examiner erred in concluding the invention, as recited in claims 2 and 3, is directed to patent-ineligible subject matter. Therefore, we sustain the rejection of claims 2 and 3 under 35 U.S.C § 101. 10 Appeal 2017-004677 Application 13/483,496 Dependent Claims 6—8 Claim 6, from which claim 7 depends, recites similar features as claim 9 and, for similar reasons, is not directed to patent-eligible subject matter. Claim 7 recites that the device is “configured to generate a private key for an asymmetric cryptographic scheme.” Claim 8 depends from claim 7 and recites that the device is “configured to output a value determined in a last iteration of a plurality of iterations as the at least a part of the private key.” Similar to claim 9, discussed supra, the cryptographic key created in claim 8 is not expressly tied to the mathematical algorithm and does not transform the abstract mathematical algorithm into patent-eligible subject matter. Claim 8, ultimately depending from claim 1, results in “a value” that is “at least a part of the private key.” However, as recited in claim 8, that value is “determined in a last iteration of a plurality of iterations” (emphases added), rather than from “the plurality of iterations” and “the last executed iteration” recited in claim 1. Because claim 8 generates its key using a newly introduced last iteration and a newly introduced plurality of iterations, the key generated in claim 8 is not generated using the mathematical algorithm recited in claim 1. And because the key of claim 8 is not expressly tied to the mathematical algorithm of claim 1, claim 8 appears to add only conventional key generation. That is, as currently drafted, claim 8 does not link its iterative key generation to the iterations recited in the algorithm of claim 1. As such, the cryptographic key generated in claim 8 does not function to transform the abstract mathematical algorithm into patent-eligible subject matter. Similarly, claim 7 does not generate its key using the mathematical algorithm and does not function to transform the abstract mathematical 11 Appeal 2017-004677 Application 13/483,496 algorithm into patent-eligible subject matter. Accordingly, we are not persuaded the Examiner erred in concluding the invention, as recited in claims 6—8, is directed to patent-ineligible subject matter. Therefore, we sustain the rejection of claims 6—8 under 35U.S.C§ 101. Remaining Claims 5, 10—18, and 20—23 Independent claim 21 is a method claim including features recited in independent claims 1 and 9 for which Appellant offers no additional persuasive arguments for patentability. See Reply Br. 5. Independent claim 23 recites a non-transitory storage medium storing code for performing the mathematical algorithm for which Appellant offers no additional persuasive arguments for patentability. See id. Accordingly, for the same reasons discussed supra, we are not persuaded the Examiner erred in concluding independent claims 21 and 23 are directed to patent-ineligible subject matter. Therefore, we sustain the rejection of claims 21 and 23 under 35 U.S.C § 101. Additionally, dependent claims 5, 10-18, 20, and 22, for which Appellant offers no additional persuasive arguments for patentability (see id.), do not transform the mathematical algorithm recited in their respective independent claims into patent-eligible subject matter. Claims 13—18, 20, and 22 recite additional mathematical algorithms. Claim 5 recites generic computer components. Claims 10—12 recite that first, second, third, and fourth hardware registers store particular values and additionally recite that “swapping” of register contents “is performed” in certain circumstances. As noted above, the use of registers to store data is the conventional use for 12 Appeal 2017-004677 Application 13/483,496 registers and does not confer patent eligibility on these claims.3 Accordingly, for the same reasons discussed supra, we are not persuaded the Examiner erred in concluding claims 5, 10—18, 20, and 22 are directed to patent-ineligible subject matter. Therefore, we sustain the rejection of claims 5, 10-18, 20, and 22 under 35 U.S.C § 101. DECISION We affirm the Examiner’s decision to reject claims 1—3 and 5—23 under 35 U.S.C § 101 as being directed to patent-ineligible subject matter. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 41.50(f). AFFIRMED 3 These claims recite a step of “swapping” rather than a device that is configured to swap. In the event of further prosecution, the Examiner may wish to consider whether the recitation of the step of “swapping” in apparatus claims 10-12 comports with 35 U.S.C. §112,12, and, in particular, whether it is sufficiently clear when the limitations of the claims are met and whether performance of the method step “swapping” is required to meet the limitations of claims 10—12. See IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005); see also MPEP § 2173.05(p)(II). 13 Copy with citationCopy as parenthetical citation