Ex Parte Khazan et al

Patent Trial and Appeal Board

Nov 27, 2018

14733325 (P.T.A.B. Nov. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/733,325 06/08/2015 Roger I. Khazan
69713 7590 11/29/2018
OCCHIUTI & ROHLICEK LLP
321 Summer St.
Boston, MA 02210
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.
70009-D28003 5961
EXAMINER
TSANG, HENRY
ART UNIT PAPER NUMBER
2495
NOTIFICATION DATE DELIVERY MODE
11/29/2018 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):
INFO@ORPATENT.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROGER I. KHAZAN, JOSHUA KRAMER,
DANIIL M. UTIN, MANKUAN MICHAEL V AI,
and DAVID WHELIHAN
Appeal 2018-001895
Application 14/733,325
Technology Center 2400
Before ALLEN R. MacDONALD, HUNG H. BUI, and
DAVID J. CUTITTA II, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-8, which are all of the pending claims. Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b). We REVERSE.
1 Appellants indicate the real party in interest is Massachusetts Institute of
Technology. App. Br. 1.
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Application 14/733,325
Illustrative Claim
Illustrative claim 1 under appeal reads as follows ( emphasis,
formatting, and bracketed materials added):
1. A method for computer-implemented verification of
security of a device comprising:
[A.] accepting data comprising a circuit description of
the device;
[B.] identifying using a computer a plurality of
mutually independent circuit zones from the circuit
description such that no data paths pass directly
between said circuit zones;
[C.] identifying a plurality of gate circuits providing
data paths linking the circuit zones, the gate
circuits being verified to limit unmodified transfer
of data between zones by their circuitry according
to a security policy; and
[D.] verifying that the device complies with the security
policy according to whether all data paths
between the circuit zones are via the identified
gate circuits according to the security policy.
References2
Kitajima et al US 6,823,069 Bl Nov. 23, 2004
Karaki et al. US 2006/0190851 Al Aug. 24, 2006
Lescuyer et al. US 2008/0072034 Al Mar. 20, 2008
Keefe et al. US 2008/0181394 Al July 31, 2008
Mossawir et al. US 2009/0228849 Al Sept. 10, 2009
2 All citations herein to these references are by reference to the first named
inventor only.
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Re} ections3
A.
The Examiner rejects claims 1-8 under 35 U.S.C. § 101 because "the
claimed invention is directed to a judicial exception (i.e., a law of nature, a
natural phenomenon, or an abstract idea) without significantly more," i.e.,
because the subject matter of the claimed invention is patent-ineligible.
Final Act. 4--5.
As to this rejection, our decision as to the § 101 rejection of claim 1 is
determinative as to the § 101 rejection of all the claims. Therefore, except
for our ultimate decision, we do not discuss further herein the § 101
rejection of claims 2-8.
B.
The Examiner rejects claims 1-3 and 6-8 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Kitajima, Keefe, and Karaki.
Final Act. 5-9.
The Examiner rejects claim 4 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Kitajima, Keefe, Karaki, and
Lescuyer. Final Act. 9-10.
The Examiner rejects claim 5 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Kitajima, Keefe, Karaki, and
Mossawir. Final Act. 10-11.
Appellants present arguments for claim 1. App. Br. 8-11. As to these
rejections, our decision as to the § 103 rejection of claim 1 is determinative
as to the § 103 rejections of all the claims. Therefore, except for our
3 All citations herein to the "Final Action" are to a Final Action mailed on
September 15, 2016.
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ultimate decision, we do not discuss further herein the § 103 rejections of
claims 2-8.
Issues on Appeal
Has the Examiner erred in rejecting claim 1 as being directed to
patent-ineligible subject matter?
Has the Examiner erred in rejecting claim 1 as being obvious?
ANALYSIS 4
We have reviewed the Examiner's rejections in light of Appellants'
Appeal Brief and Reply Brief arguments that the Examiner has erred.
A. Section 101
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. v.
CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589-90 (2013)).
Accordingly, in applying § 101, the Supreme Court cautioned:
[W]e must distinguish between patents that claim the
"'buildin[g] block[ s] "' of human ingenuity and those that
integrate the building blocks into something more, thereby
"transform[ing]" them into a patent-eligible invention. The
former "would risk disproportionately tying up the use of the
underlying" ideas, and are therefore ineligible for patent
4 All Manual of Patent Examining Procedure (MPEP) citations herein are to
MPEP Rev. 08.2017, January 2018.
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protection. The latter pose no comparable risk of pre-emption,
and therefore remain eligible for the monopoly granted under our
patent laws.
Alice, 134 S. Ct. at 2354--55.
The Supreme Court in Alice reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 82-83 (2012), "for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts." Alice, 134 S. Ct.
at 2355. The first step in that analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts," such as an
abstract idea. Id. For example, a fundamental economic practice or merely
implementing a mathematical algorithm/formula is an abstract idea. See
Alice, 134 S. Ct. at 2357-58 (discussing Bilski v. Kappas, 561 U.S. 593
(2010) and Parker v. Flook, 437 U.S. 584 (1978)).
The Court acknowledged in Mayo that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. We, therefore, look to whether the
claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery. See
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016).
If the claims are not directed to an abstract idea or other patent-ineligible
concept (e.g., a law of nature), the inquiry ends. Id. at 1339. Otherwise, the
inquiry proceeds to the second step where the elements of the claims are
considered "individually and 'as an ordered combination' to determine
whether the additional elements 'transform the nature of the claim' into a
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patent-eligible application." Alice, 134 S. Ct. at 2355 ( quoting Mayo, 566
U.S. at 79, 78). 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. ( citing Mayo, 566
U.S. at 72-73). "'[W]ell-understood, routine, [and] conventional
activit[ies]' previously known to the industry" are insufficient to transform
an abstract idea into patent-eligible subject matter. Id. ( citing Mayo, 566
U.S. at 73).
In Enfzsh, the Federal Circuit provided further guidance.
In setting up the two-stage Mayo/Alice inquiry, the
Supreme Court has declared: "We must first determine whether
the claims at issue are directed to a patent-ineligible concept."
Alice, 134 S. Ct. at 2355. That formulation plainly contemplates
that the first step of the inquiry is a meaningful one, i.e., that a
substantial class of claims are not directed to a patent-ineligible
concept. The "directed to" inquiry, therefore, cannot simply ask
whether the claims involve a patent-ineligible concept, because
essentially every routinely patent-eligible claim involving
physical products and actions involves a law of nature and/or
natural phenomenon-after all, they take place in the physical
world. See Mayo, 132 S. Ct. at 1293 ("For all inventions at some
level embody, use, reflect, rest upon, or apply laws of nature,
natural phenomena, or abstract ideas.")[.] Rather, the "directed
to" inquiry applies a stage-one filter to claims, considered in light
of the specification, based on whether "their character as a
whole is directed to excluded subject matter."
Enfish, 822 F.3d at 1335 (bold emphasis added).
B. Requirement to Provide Sufficient Articulated Reasoning
The requirement that the Examiner must provide a proper notice of
rejection is set forth by 35 U.S.C. § 132:
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Whenever, on examination, any claim for a patent is rejected, ...
the Director shall notify the applicant thereof, stating the reasons
for such rejection ... together with such information and
references as may be useful in judging of the propriety of
continuing the prosecution of his application.
The Federal Circuit has held that the Office carries its procedural
burden when its rejection satisfies the requirements of 35 U.S.C. § 132 by
notifying the applicant of the reasons for rejection, "together with such
information and references as may be useful in judging of the propriety of
continuing the prosecution of [the] application." See In re Jung, 637 F.3d
1356, 1362 (Fed. Cir. 2011) (brackets in original, quoting 35 U.S.C. § 132).
Put simply, the Office is required to set forth the statutory basis of the
rejection in a sufficiently articulate and informative manner as to meet the
notice requirement of§ 132. Id.; see also Chester v. Miller, 906 F.2d 1574,
1578 (Fed. Cir. 1990) (noting that§ 132 "is violated when a rejection is so
uninformative that it prevents the applicant from recognizing and seeking to
counter the grounds for rejection").
C. Examiner's § 101 Rejection - Alice/Mayo - Steps 1 and 2
Applying step 1 of the Alice/Mayo analysis, the Examiner determines5
claim 1 is directed to a 'judicial exception" because:
Claims 1-8 are directed to an abstract idea of obtaining data,
data recognition and comparing data to a control data (i.e.,
steps of accepting, identifying, identifying and verifying).
Final Act. 5 ( emphasis added).
Claims 1-8 are directed to an abstract idea (An Idea 'Of Itself')
of obtaining data, data recognition and comparing data to a
5 We reproduce in its entirety the Examiner's analysis of Alice/Mayo step 1
for claim 1.
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control data (i.e., steps of accepting, identifying, identifying and
verifying).
Although a computer is utilized, no improvement to the
computer or another technology is realized. In the instant
application a person either mentally or using a pen and paper can
perform the steps of the claims ( e.g. identifying circuit zones,
identifying gate circuits, verifying security policy compliance,
etc). For example, the person can receive information about the
device on a piece of paper and can either mentally or using a
pen identify the various zones and gates and verify pathways.
The general-purpose computer components are added after the
fact to the abstract idea.
Reply Br. 2-3 ( emphasis added).
Applying step 2 of the Alice/Mayo analysis, the Examiner determines
claim 1 is "without significantly more" because:
The claims do not include additional elements that are sufficient
to amount to significantly more than the judicial exception
because the mere recitation of "computer-implemented" and
"using a computer" is akin to adding the words "apply it" in
conjunction with the abstract idea. Such limitations are not
enough to add significantly more to the claimed method. In
addition, the type of information being identified and verified
does not impose meaningful limitations or render the idea less
abstract. Furthermore, the step of associating an index is merely
directed to an abstract idea of organizing information. Although
a computer is utilized, no improvement to the computer or
another technology is realized. Viewed as a whole, these
additional claim elements do not provide meaningful limitations
to transform the abstract idea such that the claims amount to
significantly more than the abstract idea itself.
Final Act. 5.
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D. Appellants'§ 101 Arguments6
Appellants raise the following arguments in contending that the
Examiner erred in rejecting claim 1 as being directed to patent-ineligible
subject matter because the claim satisfies step one of the Alice/Mayo
analysis.
In particular, Appellants contend:
[T]he Examiner's characterization of the claims as simply
being "are directed to an abstract idea of obtaining data, data
recognition and comparing data to a control data (i.e., steps of
accepting, identifying, identifying and verifying)" is an
oversimplification of the claims which does not account for any
of the specific requirements of the claims. For example, claim 1
requires specif[ic] features such as
"identifying . .. a plurality of mutually independent
circuit zones . . . such that no data paths pass
directly between said circuit zones. " "identifying a
plurality of gate circuits ... being verified to limit
unmodified transfer of data between zones by their
circuitry according to a security policy" and
"verifying ... whether all data paths between the
circuit zones are via the identified gate circuits
according to the security policy. "
Such specific features go well beyond the Examiner's
oversimplified characterization of the claim .... For at least the
reasons set forth above, the Appellant submits that the claims do
not merely recite the abstract idea of "obtaining data, data
recognition and comparing data to a control data (i.e., steps of
accepting, identifying, identifying and verifying)[.]" ... [T]he
claims are certainly more than a drafting effort designed to
monopolize the idea of "obtaining data, data recognition and
comparing data to a control data (i.e., steps of accepting,
identifying, identifying and verifying)," but instead focus on a
6 The contentions we discuss herein are determinative as to the § 101
rejection on appeal. Therefore, we do not discuss Appellants' other§ 101
contentions herein.
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specific verification method that improves the technology of
secure computing.
App. Br. 5---6 ( emphasis and formatting added).
E. Panel's§ 101 Analysis
Essentially, Appellants are arguing the Examiner's articulated
reasoning for Alice/Mayo step 1 is so uninformative that it prevents the
applicant from recognizing and seeking to counter the grounds for rejection.
We agree.
To provide sufficient articulated reasoning as to why a claim is
directed to an abstract idea or other patent-ineligible concept (e.g., a law of
nature), an Examiner must adequately address both (a) what the character of
the claim as a whole is directed to, and (b) whether that something is an
abstract idea or a patent-ineligible concept. Enfish, 822 F.3d at 1335.
E.1.
In applying step 1 of the Alice/Mayo analysis, the Examiner
determines:
Claims 1-8 are directed to an abstract idea of obtaining data,
data recognition and comparing data to a control data (i.e.,
steps of accepting, identifying, identifying and verifying).
Final Act. 5 ( emphases added).
We agree with Appellants that the Examiner's analysis "is an
oversimplification of the claims which does not account for any of the
specific requirements of the claims." App. Br. 5. Step 1 of the Alice/Mayo
analysis is based on whether, considered in light of the specification, the
character of the claim as a whole is directed to excluded subject matter.
Enfzsh, 822 F.3d at 1335. By oversimplifying claim 1 Examiner fails to
provide sufficient articulated reasoning (i.e., notice) to Appellants of the
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Examiner's determination of what the character of claim 1 as a whole is
directed to. Such an oversimplified claim analysis, at best, may show that
the claim involves an abstract idea, but cannot show the character of the
claim as a whole is directed to an abstract idea.
In claim 1, the operations are recited with greater specificity ( a lower
level of generality) than the operations recited in the claims at issue in Bilski
and Alice. From a plain reading of claim 1, it is clear that claim 1 is not
recited as the broad manipulation of data as determined by the Examiner.
See Final Act. 5. Rather, claim 1 includes at least a circuit zone security
verification process not sufficiently addressed by the Examiner, e.g.,
"verifying that the device complies with the security policy according to
whether all data paths between the circuit zones are via the identified gate
circuits according to the security policy," as recited in claim 1.
E.2.
Appellants' arguments persuade us the Examiner fails to properly
determine what the claim is directed to. The Examiner fails to provide
sufficient articulated reasoning to support a conclusion that all the specific
claim limitations that the Examiner labels as included in the abstract idea are
actually an abstract idea. Therefore, we do not sustain the rejection under 35
U.S.C. § 101 of claims 1-8.
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F. Appellants'§ 103 Arguments7
Appellants raise the following argument in contending that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a).
The Appellant [sic] submits that none of Kitajima, Keefe, or
Karaki, taken alone or in any proper combination, describes or
suggests:
"verifying that the security device complies with the
security policy according to whether all data paths
between the circuit zones are via the identified gate
circuits according to the security policy"
as is recited by independent claim 1.
App. Br. 9 (emphasis added).
G. Panel's§ 103 Analysis
In rejecting claim 1 under § 103 (Final Act. 5-8), we do not find
where the Examiner's analysis addresses the "all data paths" limitation of
claim 1. In the Answer, the Examiner determine:
Since Kitajima in view of Keefe teaches a device where all data
paths between the red and black zones are via the cryptographic
unit, Kitajima in view of Keefe also teaches that the design
specifications of the device include wherein all data paths
between the red and black zones are via the cryptographic unit.
When implementing the teachings of Karaki of simulating and
verifying the behavior description of the circuit according to the
design specifications into Kitajima in view of Keefe, the
combination teaches verifying the red/black implementation of
the device. Therefore, the combination of Kitajima in view of
Keefe and Karaki teaches "verifying that the security device
complies with the security policy according to whether all data
paths between the circuit zones are via the identified gate circuits
according to the security policy".
7 The contentions we discuss are determinative as to the § 103 rejections on
appeal, so we do not discuss Appellants' other § 103 contentions herein.
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Ans. 4--5 (emphasis added).
In reply, the Appellants argue:
The fact of the matter is that Keefe never describes or suggests
that any limitations are placed on "all data paths" between the
red zone and the black zone in his system. For example, Keefe's
system may allow control data to circumvent the cryptographic
circuit and pass between the red zone and the black zone. Based
on Keefe's disclosure, there is certainly nothing that would
preclude such control data from traversing the red zone and the
black zone.
Reply Br. 3 ( emphasis omitted).
We conclude, after reviewing the Examiner's rejection (Final Action
and Answer) and consistent with Appellants' above arguments as to claim 1,
there is insufficient articulated reasoning to support the Examiner's findings
that the combination of Kitajima, Keefe, and Karaki teaches ( or renders
obvious) the argued "all data paths" limitation. Although Keefe teaches
segregated signal paths (red/black), we do not find in the Examiner cited
portion of Keefe any suggestion to extend this segregation beyond the
red/black scenario as is required by Appellants' claim 1. Nor does Examiner
adequately articulate why such an extension would have been obvious to an
artisan. Therefore, we conclude that there is insufficient articulated
reasoning to support the Examiner's conclusion that claim 1 is rendered
obvious by Kitajima, Keefe, and Karaki based on the Examiner's articulated
reasomng.
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CONCLUSIONS
(1) Appellants have established that the Examiner erred in rejecting
claims 1-8 under 35 U.S.C. § 101 as being directed to patent-ineligible
subject matter.
(2) Appellants have established that the Examiner erred in rejecting
claims 1-8 as being unpatentable under 35 U.S.C. § 103(a).
(3) Claims 1-8 have not been shown to be unpatentable.
DECISION
The Examiner's rejection of claims 1-8 under 35 U.S.C. § 101, as
being directed to patent-ineligible subject matter is reversed.
The Examiner's rejection of claims 1-8 as being unpatentable under
35 U.S.C. § 103(a) is reversed.
REVERSED
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