Ex Parte Harrison et al

Patent Trial and Appeal Board

Sep 23, 2014

11455231 (P.T.A.B. Sep. 23, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte KEITH ALEXANDER HARRISON,
TIMOTHY PAUL SPILLER, WILLIAM JOHN MUNRO,
and CHRISTOPHER TOFTS
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Appeal 2012-006017
Application 11/455,231
Technology Center 2400
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Before JEAN R. HOMERE, CARL W. WHITEHEAD JR., and
PATRICK M. BOUCHER, Administrative Patent Judges.

BOUCHER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

Appeal 2012-006017
Application 11/455,231

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Illustrative Claim
The claimed subject matter relates to methods and devices for using
one-time pad data (Spec., p. 1, l. 5).
Claim 1 is illustrative and is reproduced below:
1. A method of using one-time pad data performed by a
processor-based system, the method comprising:
encrypting data, with said processor-based system, by
combining a first succession of bits of the data being encrypted
with a second succession of bits from said one-time pad data;
in which one set of bits of a size from said first
succession of bits is combined with at least two sets of bits of at
least said size from said second succession of bits to form an
output, said size comprising at least one bit.

References
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Gammel
Berzanskis
US 2005/0036618 A1
US 2007/0140495 A1
Feb. 17, 2005
June 21, 2007

Rejections
The Examiner made the following rejections:
Claims 1–4, 6–10, 12, 17, 19, and 20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Berzanskis and Gammel. Ans. 5–8.
Claims 5, 11, 13–16, and 18 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Berzanskis, Gammel, and Official Notice. Ans. 9–10.

Issue
The dispositive issue is whether the Examiner erred in finding that the
combination of Berzanskis and Gammel teaches or suggests “encrypting
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Application 11/455,231

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data . . . in which one set of bits of a size from said first succession of bits is
combined with at least two sets of bits of at least said size from said second
succession of bits,” as recited in independent claim 1 and as similarly recited
in independent claims 7 and 17.1

ANALYSIS
In rejecting claim 1, the Examiner cites Berzanskis for its disclosure
of encrypting data by combining a first succession of bits of the data being
encrypted with a second succession of bits from one-time pad data. Ans. 5.
Specifically, the Examiner relies on a disclosure of Berzanskis that
implements quantum key distribution by determining XOR values between a
random set of key bits and a one-time pad to obtain encrypted key bits.
Berzanskis ¶ 14. The Examiner acknowledges that Berzanskis fails to
disclose that “one set of bits of a size from said first succession of bits is
combined with at least two sets of bits of at least said size from said second
succession of bits to form an output, said size comprising at least one bit.”
Ans. 5. For this limitation, the Examiner cites an XOR operation disclosed
by Gammel. Id. at 6 (citing Gammel, Figs. 2A and 2B).
Gammel discloses a device that performs arithmetic operations on at
least two encrypted operands, ak and bk, to produce an encrypted result
without decryption of the operands. Gammel ¶ 64. The disclosed XOR
operation is applied to the two operands, which the Examiner identifies
collectively as the “second succession of bits” for an encryption parameter k,
which the Examiner identifies as the “first succession of bits.” Id. ¶¶ 68, 73;

1 Appellants’ contentions raise additional issues. Because the identified
issue is dispositive, we do not reach the merits of the additional issues.
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Application 11/455,231

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see Ans. 6. The Examiner finds that it would have been obvious to try
Gammel’s disclosed combination on the bit successions taught by
Berzanskis. Ans. 6. In support of this finding, the Examiner asserts that
“both references are within the same scope: involving encryption via an
XOR operator.” Ans. 12.
We disagree with the Examiner’s findings. Although Berzanskis
teaches a form of encryption using an XOR operator, the XOR operation
taught by Gammel is of a different character. As Appellants observe, the
XOR operation taught by Gammel “allows for the processing of encrypted
data without having to first decrypt and re-encrypt that data for processing
purposes,” and does not operate as an encryption process. App. Br. 11;
Reply Br. 5. The Examiner has not established with sufficient rational
underpinnings that one of skill in the art would reasonably try to use
Gammel’s (nonencrypting) XOR operation in the encryption method taught
by Berzanskis. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited
with approval in KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 418
(2007)).
Accordingly, we do not sustain the rejection of claim 1 or the
rejections of claims 7 and 17, which recite similar limitations, nor do we
sustain the rejections of the claims that depend therefrom.

DECISION
The Examiner’s decision rejecting claims 1–20 is reversed.

REVERSED
msc