Ex Parte Knezevic et alDownload PDFPatent Trial and Appeal BoardJun 6, 201714139831 (P.T.A.B. Jun. 6, 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. 14/139,831 12/23/2013 Miroslav Knezevic 81582348US01 9507 65913 7590 06/08/2017 Intellectual Property and Licensing NXPB.V. 411 East Plumeria Drive, MS41 SAN JOSE, CA 95134 EXAMINER WRIGHT, BRYAN F ART UNIT PAPER NUMBER 2497 NOTIFICATION DATE DELIVERY MODE 06/08/2017 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): ip. department .u s @ nxp. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MIROSLAV KNEZEVIC and VENTZISLAV NIKOV Appeal 2017-000964 Application 14/139,8311 Technology Center 2400 Before JAMES R. HUGHES, JUSTIN BUSCH, and NORMAN H. BEAMER, Administrative Patent Judges. Opinion for the Board filed by BEAMER, Administrative Patent Judge. Opinion Concurring filed by BUSCH, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1—18. We have jurisdiction over the pending rejected claims under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify NXP B.V. as the real party in interest. (App. Br. 2.) Appeal 2017-000964 Application 14/139,831 THE INVENTION Appellants’ disclosed and claimed inventions are directed to an Elliptic Curve Cryptography point addition algorithm for mixed Affine - Jacobian coordinates using a simple arithmetic processor. (Abstract.) Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An apparatus configured to perform an elliptic curve cryptography (ECC) point addition operation using mixed affine-Jacobian coordinates, the apparatus comprising: a register memory configured to store a first point in affine coordinates and a second point in Jacobian coordinates; a modular multiplier electrically coupled to the register memory; and a simple arithmetic processor electrically coupled to the register memory and the modular multiplier, wherein the simple arithmetic processor is configured to perform modular subtraction and modular multiplication by two in support of the ECC point addition operation. REJECTIONS The Examiner rejected claims 1 and 11 on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 11 of copending application no. 14/139,847, and over claims 1 and 11 of copending application no. 14/139,849. (Final Act. 8.) The Examiner rejected claims 1—18 under 35 U.S.C. § 101 because the claimed inventions are directed to non-statutory subject matter. (Final Act. 8-9.) The Examiner rejected claims 1, 2 and 10 under 35 U.S.C. § 103 as being unpatentable over Adler et al. (US 8,112,626 Bl, issued Feb. 7, 2012) (“Adler”) and Applicant’s Admitted Prior Art (“AAPA”). (Final Act. 9—12.) 2 Appeal 2017-000964 Application 14/139,831 The Examiner rejected claim 3 under 35 U.S.C. § 103 as being unpatentable over Adler, AAPA, and Ono et al. (US 6,567,832 Bl, issued May 20, 2003) (“Ono”). (Final Act. 13.) The Examiner rejected claims 4—9 under 35 U.S.C. § 103 as being unpatentable over Adler, AAPA, and Venelli et al. (US 2010/0040225 Al, pub. Feb. 18, 2010) (“Venelli”). (Final Act. 13-16.) The Examiner rejected claims 11—18 under 35 U.S.C. § 103 as being unpatentable over AAPA and Venelli. (Final Act. 17—19.) ISSUES ON APPEAF Appellants’ arguments present the following issues:2 Issue One: Whether the Examiner erred in rejecting claims 1 and 11 on the ground of nonstatutory double patenting. (App. Br. 4.) Issue Two: Whether the Examiner erred in rejecting claims 1—18 as directed to non-statutory subject matter. (App. Br. 5—7.) Issue Three: Whether the Examiner erred in finding claims 1, 2 and 10 obvious over Adler and AAPA. (App. Br. 9—12.) Issue Four: Whether the Examiner erred in finding claim 11 obvious over AAPA and Venelli. (App. Br. 15—16.) 2 Rather than reiterate the arguments of Appellants and the findings of the Examiner, we refer to the Appeal Brief (filed June 6, 2016); the Reply Brief (filed Oct. 11, 2016); the Final Office Action (mailed Feb. 5, 2016); and the Examiner’s Answer (mailed Sept. 30, 2016) for the respective details. 3 Appeal 2017-000964 Application 14/139,831 ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments that the Examiner errs. As to the double patenting and Section 101 rejections, we agree with Appellants. Otherwise, we disagree with Appellants’ arguments, and we adopt as our own (1) the pertinent findings and reasons set forth by the Examiner in the Action from which this appeal is taken (Final Act. 9—19) and (2) the corresponding reasons set forth by the Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief (Ans. 11—23). We concur with the applicable conclusions reached by the Examiner and emphasize the following. Issue One In regard to the nonstatutory double patenting rejections, Appellants argue the Examiner’s rejection is a conclusory statement without any articulated reasoning or claim comparison. (App. Br. 4.) The Examiner finds, in comparing the rejected claims to the corresponding claims in the pending applications, “[ajlthough the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are drawn to a simple arithmetic processor for handling mathematical operations utilizing Jacobian coordinates.” (Final Act. 8.) In the Answer, the Examiner further provides a side-by-side comparison of the rejected claims with the corresponding claims of Application 14/139,849. (Ans. 5, 7.) We are persuaded the Examiner errs. Although the wording of the claims at issue substantially overlaps with that of the corresponding claims of the co-pending applications, there are also differences — for example, the claims at issue require storage of a point in “affine coordinates” (claim 1) or use “mixed affine-Jacobian coordinates” (claim 11), and perform “point 4 Appeal 2017-000964 Application 14/139,831 addition operation,” features not present in the co-pending application claims. (See Ans. 5,7.) The Examiner does not discuss these differences or provide any basis for a finding that the differences are obvious variations of the claimed subject matter. (Reply Br. 2.) Therefore, on the record before us, we are constrained to find the Examiner errs in rejecting independent claims 1 and 11 on the ground of nonstatutory double patenting. Issue Two In support of the rejection under 35 U.S.C. § 101, the Examiner finds the claims “do not amount to significantly more than a computer performing a mathematical function,” with additional recitations of “generic computer structure that serves to perform generic computer functions that are well understood, routine and conventional activities previously known to the pertinent industry.” (Final Act. 8—9.) Patent-eligible subject matter is defined in Section 101 of the Patent Act, which recites: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. There are, however, three judicially created exceptions to the broad categories of patent-eligible subject matter in § 101: laws of nature, natural phenomena, and abstract ideas. Alice Corp. Pty. Ltd. v. CLS Bank Int 7, 134 S. Ct. 2347, 2354 (2014); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293 (2012). Although an abstract idea, itself, is not patent-ineligible, an application of the abstract idea may be patent-eligible. Alice, 134 S. Ct. at 2355. Thus, we must consider “the elements of each claim both individually and ‘as an ordered combination’ to determine 5 Appeal 2017-000964 Application 14/139,831 whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application.” Id. (citing Mayo, 132 S. Ct. at 1297—98). The claim must contain elements or a combination of elements that are “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [abstract idea] itself.” Id. (citing Mayo, 132 S. Ct. at 1294). We agree with Appellants that the claims are not merely directed to an abstract idea of a “computer configured to perform a mathematical computation.” (App. Br. 5.) In particular, we agree: [T]he independent claims require a register memory, a modular multiplier, and a simple arithmetic processor configured for modular subtraction and modular multiplication by two. This combination is not a “generic” structure. (App. Br. 5—6.) Accordingly, the claimed subject matter goes sufficiently beyond an abstract idea, to render it patent-eligible, and therefore we do not sustain the Examiner’s rejection of claims 1—18 as directed to non-statutory subject matter. Issue Three For the obviousness rejection of independent claim 1 over Adler and AAPA, Appellants argue the Examiner errs in finding Adler discloses the “electrical coupling” required between the “modular multiplier” and the “register memory,” and between those components and the “simple arithmetic processor.” (App. Br. 9-10.) We are not persuaded by this argument. As the Examiner finds, under a broad but reasonable interpretation of “electrical coupling,” Figure 3 of Adler discloses electrical coupling between the components the Examiner finds as disclosing the said 6 Appeal 2017-000964 Application 14/139,831 “modular multiplier,” “register memory,” and “simple arithmetic processor.” (Final Act. 10; Ans. 12—14, 16—17.) Appellants also argue the Examiner conceded Adler does not teach or suggest the required “simple arithmetic processor,” and the Examiner’s reliance on the “PADD algorithm” of AAPA is in error because “an algorithm is not a physical structure.” (App. Br. 10.) This argument is unpersuasive because, as the Examiner points out, the rejection does not concede Adler lacks the required simple arithmetic processor, and to the contrary discloses that element in Figure 3. (Final Act. 10; Ans. 16—19; Adler Fig. 3, col. 3,11. 1525, 55-65.) Dependent claim 2 adds the requirement, “wherein the simple arithmetic processor comprises: two modular subtractors.” (App. Br. 19.) The Examiner finds the description of the PADD algorithm in the AAPA teaches or suggests this requirement: “PADD algorithm 200 requires 8 modular multiplications, 3 modular squarings, 6 modular subtractions, and one modular multiplication by 2 and is shown in FIG. 2.” (Final Act. 12, Spec. 3.) Appellants argue the Examiner errs because “subtractors are devices while subtractions are mathematical operations.” (App. Br. 11.) However, we agree with the Examiner, that the AAPA discloses, as discussed on page 3 of Appellants’ Specification, “the use of modular subtraction/subtractor components to implement an PADD algorithm” — i.e., the disclosure is not merely a mathematical operation, but rather a hardware implementation of such an operation. (Ans. 20.) Dependent claim 10 adds the requirement, “wherein the modular multiplier is configured to perform at most one modular multiplication for each step in a sequence of steps in the ECC point addition operation.” (App. 7 Appeal 2017-000964 Application 14/139,831 Br. 21.) The Examiner again relies on the above passage in the AAPA — in particular the reference to 8 modular multiplications — as teaching or suggesting this limitation. (Final Act. 12.) Appellants argue the Examiner errs because “a requirement for eight modular multiplications teaches away from the claimed limit of at most one modular multiplication.” (App. Br. 12.) However, we agree with the Examiner: [T]he Appellant’s dependent claim 10 recites one modular multiplication per step in a sequence of steps without defining the number of steps in a sequence. The ordinary meaning of the term “sequence” tells us that there will be more than just one step. The examiner respectfully submits that the Appellant's sequence of steps could be eight and therefore there will be 8 modular multiplication in that instance. As such the Appellant's argument that dependent claim 10 is patentably distinct over the AAPA is not persuasive, because without the Appellant’s providing a concise number of steps in their “sequence” as part of their dependent claim 10, there is no true way to determine the differentiation/distinction from the AAPA’s recital of 8 modular multiplication. (Ans. 21-22.) Issue Four Appellants argue the Examiner errs in rejecting independent claim 11 because the combination of AAPA and Venelli does not teach or suggest, “a computational device having a register memory, a modular multiplier, and a simple arithmetic processor . . . wherein the modular multiplier performs at most one modular multiplication for each step in the sequence of steps.” (App. Br. 15.) In particular, Appellants repeat the argument that “the claims require at most one modular multiplication while AAPA requires eight modular multiplications.” (Id.) This argument is unpersuasive for the reasons discussed above. 8 Appeal 2017-000964 Application 14/139,831 CONCLUSIONS For the reasons stated above, we sustain the obviousness rejections of claims 1, 2 and 10 over Adler and AAPA, and of claim 11 over AAPA and Venelli. We also sustain the obviousness rejections of claim 3 over Adler, AAPA, and Ono, of claims 4—9 over Adler, AAPA, and Venelli, and of claims 12—18 over AAPA and Venelli, which are not argued separately with particularity. (App. Br. 13—14, 17.) Also, for the reasons stated above, we do not sustain the nonstatutory double patenting rejection of claims 1 and 11, or the rejection under 35 U.S.C. § 101 of claims 1-18. Because we have affirmed at least one ground of rejection with respect to each claim on appeal, the Examiner’s decision is affirmed. See 37 C.F.R. § 41.50(a)(1). DECISION We affirm the Examiner’s obviousness rejections of claims 1—18. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 9 Appeal 2017-000964 Application 14/139,831 CONCURRING OPINION BUSCH, Administrative Patent Judge, concurring. I agree with my colleagues that the Examiner did not err in rejecting claims 1—18. Specifically, I join the majority with respect to the findings and conclusions related to the nonstatutory double patenting rejection of claims 1 and 11 as well as the rejection of claims 1—18 under 35 U.S.C. § 103. I disagree, however, with the reversal of the Examiner’s rejection of claims 1—18 under 35 U.S.C. § 101. There is no dispute regarding whether the claims fall within one of the four statutorily provided categories of patent-eligibility: “processes, machines, manufactures, and compositions of matter.” See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 713—714 (Fed. Cir. 2014). As the majority notes, however, Section 101 “contains an important implicit exception [to subject matter eligibility]: Laws of nature, natural phenomena, and abstract ideas are not patentable.” Alice Corp. Pty. Ltd. v. CLS BankInt’l., 134 S. Ct. 2347, 2354 (2014) (citing Assoc, for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013) (internal quotation marks and brackets omitted)). Abstract ideas that have been identified by courts include, for example, fundamental economic practices, certain methods of organizing human activities, an idea “of itself,” and mathematical relationships/formulas. Id. at 2355—56. However, as the majority explains, an application of an abstract idea may be patent-eligible. Id. at 2355. In Alice, the Supreme Court also reiterated the two-step framework set forth previously in Mayo Collaborative Services v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293 (2012) “for distinguishing patents that claim laws of 10 Appeal 2017-000964 Application 14/139,831 nature, natural phenomena, and abstract ideas from those that claim patent- eligible applications of those concepts.” Id. 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 the claims are directed to an ineligible concept, we proceed to the second step and examine the elements of the claim, individually and as an ordered combination, to determine whether the claim contains an “inventive concept” sufficient to transform the claimed abstract idea into a patent-eligible application. Id. at 2357. There is no definitive rule to determine what constitutes an “abstract idea.” Rather, the Federal Circuit has explained that “both [it] and the Supreme Court have found it sufficient to compare claims at issue to those claims already found to be directed to an abstract idea in previous cases.” Enfish, LLCv. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016); see also Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (explaining that, in determining whether claims are patent-eligible under § 101, “the decisional mechanism courts now apply is to examine earlier cases in which a similar or parallel descriptive nature can be seen—what prior cases were about, and which way they were decided”). Appellants argue the claims as a group, so I select claim 1 as representative when evaluating whether the claims are patent-eligible under § 101. See 37 C.F.R. § 41.37(iv). The Examiner finds the pending claims are directed to an abstract idea, namely a mathematical function, and that the claims recite nothing more than generic computer structure executing routine and conventional activities to perform a mathematical operation. Final Act. 8-9. 11 Appeal 2017-000964 Application 14/139,831 Appellants assert the independent claims “require a register memory, a modular multiplier, and a simple arithmetic processor configured for modular subtraction and modular multiplication by two.” App. Br. 5—6 (emphasis omitted). Appellants contend “the claims are directed to an improvement to computer functionality because the optimized hardware architecture and method ‘reduces storage requirements and speeds up the execution of the ECC PADD algorithm.’” Id. at 7. Thus, Appellants contend that, under step one of Alice, the claims are not directed to an abstract idea because the claims are directed to an improvement in computer-related technology, as in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016). Id. at 6—7. Appellants offer no argument, see App. Br. 5—7; Reply Br. 2—3, regarding the Examiner’s analysis of the claims under step two of Alice, in which the Examiner finds the claims have no inventive concept sufficient to transform the abstract mathematical formula into a patent-eligible application, Final Act. 8—9; Ans. 9-11 (explaining that the recited hardware components are generic and do not add “significantly more”). Claim 1 merely recites that a simple arithmetic processor is configured to perform two mathematical operations (a modular subtraction and a modular multiplication by two) with an intended use (in support of an ECC point addition operation). Other than that, the claims recite generic hardware components (i.e., a memory for storing data, and a modular multiplier.) The only relationship recited between the components is that each of the three elements is electrically coupled to each other element. Notably, the claims do not recite that the arithmetic processor uses the data stored in the register memory or uses the recited modular multiplier to 12 Appeal 2017-000964 Application 14/139,831 perform the modular multiplication by two that the processor is configured to perform. Accordingly, I read claim 1 as reciting three generic hardware components that are, in some way, electrically coupled to each other, wherein one is configured to perform mathematical operations “in support of’ another operation. Claim 1, therefore, appears to be similar to the claims in Elec. Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) and Digitech Image Techs., LLC v. Elecs. For Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014), in which the sets of claims were merely directed to manipulation of data. Thus, I agree with the Examiner’s findings and conclusions. I find unpersuasive Appellants’ arguments that claim 1 is similar to the claims in Enfish, 822 F.3d 1327, which were found to be directed to an improvement in technology. Appellants have not explained sufficiently how the recited limitations in claim 1 would optimize hardware architecture, reduce storage requirements, or speed up execution of the cryptography algorithm. As explained above, claim 1 merely recites three hardware elements and a processor configured to carry out mathematical operations. Appellants also argue the Examiner’s comparison to Choi, U.S. Patent Pub. No. 2010/0150340 (“Choi”), cannot be cited in support of a subject matter eligibility rejection. Reply Br. 3. Appellants appear to misunderstand the purpose for which the Examiner cites Choi. The Examiner cites Choi to demonstrate that the particular elements and operations recited were routine or conventional in the art. Although a pending or abandoned patent application is not useful as a comparison of abstract ideas identified by courts as a comparison in step one of Alice, I find 13 Appeal 2017-000964 Application 14/139,831 no error in the Examiner’s citation to Choi as evidence that the particular elements recited in claim 1 are routine or conventional With respect to step two of Alice, I also agree with the Examiner’s findings and conclusions. Specifically, beyond the recitation of the simple arithmetic processor being configured to perform mathematical operations, claim 1 merely recites a “register memory” for storing data, a “modular multiplier” coupled to the memory, a “simple arithmetic processor” coupled to both the memory and the multiplier, and the intended use of the mathematical operations that they are done “in support of the ECC point addition operation.” The intended use and the specific data used do not provide significantly more to render the mathematical operations patent- eligible. Elec. Power, 830 F.3d at 1353 (explaining particular content of data “does not change its character as information”). The recited components appear to be merely generic, conventional hardware elements. See Ans. 9-11 (citing Choi). Moreover, performing a modular subtraction and a modular multiplication by two appear to be conventional functions of an arithmetic processor. Appellants argue the components are not generic with respect to analysis under step one of Alice, but fail to provide any explanation of how the recited components or their combination is anything but generic. Appellants contend the combination improves computer technology by speeding up execution of the algorithm, but claim 1 merely recites performing a modular subtraction and modular multiplication by two using conventional hardware. Moreover, Appellants provide no argument that the Examiner’s findings with respect to analysis of step two of Alice are erroneous. For the above reasons, Appellants have failed to demonstrate 14 Appeal 2017-000964 Application 14/139,831 error in the Examiner’s findings and conclusions. Accordingly, I would find claim 1 is merely directed to an abstract idea, rendering it patent-ineligible and would sustain the Examiner’s rejection of claims 1—18 as directed to non-statutory subject matter. Concurring APJ: JB 15 Copy with citationCopy as parenthetical citation