Ex Parte Mundra et alDownload PDFPatent Trial and Appeal BoardMay 31, 201714305772 (P.T.A.B. May. 31, 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. 14/305,772 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 2 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; 3 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 4 Appeal 2017-001635 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) 5 Copy with citationCopy as parenthetical citation