Ex Parte Mundra et al

Patent Trial and Appeal Board

May 31, 2017

14305772 (P.T.A.B. May. 31, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/305,772 06/16/2014 Amritpal S. Mundra TI-73877 4628
23494 7590 06/02/2017
TEXAS INSTRUMENTS INCORPORATED
P O BOX 655474, M/S 3999
DALLAS, TX 75265
EXAMINER
SALEHI, HELAI
ART UNIT PAPER NUMBER
2433
NOTIFICATION DATE DELIVERY MODE
06/02/2017 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):
uspto@ti.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AMRITPAL S. MUNDRA and
WILLIAM C. WALLACE
Appeal 2017-001635
Application 14/305,772
Technology Center 2400
Before JASON V. MORGAN, IRVIN E. BRANCH, and
JOHN F. HORVATH, Administrative Patent Judges.
BRANCH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1
and 3—7, all pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse and enter a new ground of rejection.
Appeal 2017-001635
Application 14/305,772
CLAIMED SUBJECT MATTER
The claims are directed to “real time, on-the-fly data encryption.”
Abstract.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A data encryption system comprising:
a plurality of encryption cores operable to perform a
variety of crypto operations,
an external memory interface operable to receive
encrypted data from said data encryption system and write the
encrypted data to an external memory, and further operable to
receive encrypted data from said external memory and provide it
to the data encryption system,
an external memory comprising of one or more memory
segments, connected to said external memory interface,
a Speculative Read Crypto Cache operable to store the full
or partial results of any speculative crypto operation,
a scoreboard storing external memory read commands
associated with any speculative crypto operation, and
a speculative crypto operation may be initiated in at least
one of the plurality of encryption cores before all of the data
required for the operation is received from the external memory.
REFERENCE AND REJECTION
Claims 1 and 3—7 stand rejected under 35 U.S.C. § 102(a)(1) as
anticipated by Flynn (US 2007/0050641 Al, published Mar. 1,2007). Ans.
2-7.
OPINION
We have reviewed the Examiner’s rejection (Ans. 2—7) in view of
Appellants’ arguments (App. Br. 6—10). As we explain in detail below,
because the independent claims are so indefinite that “considerable
speculation as to [the] meaning of the terms employed and assumptions as to
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Appeal 2017-001635
Application 14/305,772
the scope of such claims” is needed, we do not address the merits of the
Examiner’s rejection under 35 U.S.C. § 102(a) over Flynn. See In re Steele,
305 F.2d 859, 862, (CCPA 1962) (holding that the Examiner and the Board
were wrong in relying on what, at best, were speculative assumptions as to
the meaning of the claims and in basing a prior-art rejection thereon). We
therefore reverse this rejection pro forma.
Claim 1 purports to be a system (i.e., an apparatus) claim: “[a] data
encryption system comprising ...” Yet claim 1 includes the limitation “a
speculative crypto operation may be initiated in at least one of the plurality
of encryption cores before all of the data required for the operation is
received from the external memory.” App. Br. 12 (Claims App’x)
(emphasis added). This limitation is not a structural limitation. It is, at best,
a conditional method step. “[Rjeciting both an apparatus and a method of
using that apparatus renders a claim indefinite under section 112.” IPXL
Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377 (CAFC 2005) (citing
Ex parte Lyell, 17 USPQ2d 1548 (BPAI 1990)”. The claim is, therefore,
incapable of substantive examination.
Claim 5, a method claim, recites:
5. A method of data encryption comprising the steps
of:
performing a variety of encryption, decryption or message
authentication functions via a plurality of encryption cores;
receiving encrypted data from a data encryption system
and writing the encrypted data to an external memory;
receiving encrypted data from the external memory and
providing it to at least one of the plurality of encryption cores;
connected to said external memory interface,
speculatively initiating a crypto operation in at least one of
the plurality of encryption cores before all of the data required
for the operation is received from the external memory;
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Appeal 2017-001635
Application 14/305,772
storing full or partial results of any speculative crypto
operation; and
storing external memory read commands associated with
any speculative crypto operation.
App. Br. 13 (Claims App’x) (formatting in original, emphasis added).
Notably, the emphasized limitation is set apart by a semicolon from the
preceding limitation, indicating that it begins a new limitation, but there
is no clear indication what it pertains to in the succeeding limitation.
Accordingly, we would have to engage in considerable speculation to
interpret the claim. It is, therefore, indefinite.
The remaining claims inherit the indefiniteness of the independent
claims. Accordingly, we enter a new ground of rejection under 35 U.S.C.
§ 112 (b) as to all pending claims because the claims are indefinite.
We note, however, Appellants’ arguments that Flynn’s speculative
read operation is not the same as Appellants’ claimed speculative crypto
operation. App. Br. 6—10; Reply Br. 2-4. In the event further prosecution
ensues of claims that overcome the indefiniteness issue and raise a similar
question regarding Flynn’s speculative read operation vis-a-vis the claimed
speculative crypto operation, the Examiner might consider what “data” in
Flynn is “required” for Flynn’s speculative read operation that has not been
received when the read operation is initiated according to the claim. The
question might turn on the construction of “required” and a proper
explanation of the data in Flynn that is “required” as that term should be
construed.
We also note—and agree with the Examiner (Ans. 9)—that claim 1 ’s
“may be initiated” language could be considered a conditional limitation,
which is not necessarily limiting with respect to the broadest reasonable
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Application 14/305,772
construction of the claim, because performance of the limitation is not
necessarily required when the claim is read onto the prior art. See Ex pane
DECISION
The Examiner’s decision rejecting claims 1 and 3—7 under 35 U.S.C.
§ 102 as being anticipated by Flynn is reversed.
A new ground of rejection is entered rejecting claims 1 and 3—7 under
35 U.S.C. § 112(b) as being indefinite.
37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection . . .
shall not be considered final for judicial review.” This section also provides
that the Appellant, 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
(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. . . .
REVERSED
37 C.F.R, $ 41.50(b)
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