Infineon Technologies AG

Patent Trials and Appeals Board

Oct 2, 2020

2019004345 (P.T.A.B. Oct. 2, 2020)

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.
14/623,529 02/17/2015 Wieland Fischer P59438US 7507
81722 7590 10/02/2020
Viering, Jentschura & Partner mbB - Inf
c/o
444 Brickell Avenue
Suite 700
Miami, FL 33131
EXAMINER
HAILU, TESHOME
ART UNIT PAPER NUMBER
2434
NOTIFICATION DATE DELIVERY MODE
10/02/2020 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):
patint@vjp.de
vjp-us@vjp.de
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WIELAND FISCHER and BERND MEYER

Appeal 2019-004345
Application 14/623,529
Technology Center 2400
Before MAHSHID D. SAADAT, JAMES R. HUGHES, and
STEPHEN E. BELISLE, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Claims 1–17 are pending, stand rejected, are appealed by Appellant,
and are the subject of our decision under 35 U.S.C. § 134(a).1 See Final Act.
1–2; Appeal Br. 4.2 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Infineon
Technologies AG. See Appeal Br. 2.
2 We refer to Appellant’s Specification (“Spec.”), filed Feb. 17, 2015
(claiming benefit of DE 102014101936.9, filed Feb. 17, 2014); and Appeal
Brief (“Appeal Br.”), filed Aug. 14, 2018. We also refer to the Examiner’s
Final Office Action (“Final Act.”), mailed Feb. 22, 2018; and Answer
(“Ans.”) mailed Nov. 16, 2018.
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CLAIMED SUBJECT MATTER
The claimed subject matter, according to Appellant, “relate[s]
generally to methods for permuting data elements and to permuting
apparatuses.” Spec. ¶ 2. More specifically, Appellant’s claimed subject
matter relates to permuting apparatuses and methods for permuting data
elements within a chip card module by receiving a sequence of data
elements at an input of a permuting apparatus and performing interchange
operations within the sequence using a processing device that is part of the
permuting apparatus. Each of the interchange operations involves
determining a predefined position of a first data element within the received
sequence, randomly determining a second position of a second data element
within the received sequence, and interchanging the first data element with
the second data element. See Spec. ¶¶ 4, 92, 93; Abstract. Claims 1
(directed to a method) and 15 (directed to a permuting apparatus) are
independent. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A method for permuting data elements within a chip
card module, the method comprising:
receiving a sequence of data elements at an input of a
permuting apparatus; and
carrying out a plurality of interchange operations within
the sequence with a processing device within the permuting
apparatus, wherein each interchange operation comprises:
determining a predefined position of a first data
element within the sequence received within the permuting
apparatus of the chip card module;
randomly determining a second position of a second
data element within the sequence;
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interchanging the first data element with the second
data element; and
applying a predefined permutation to the
determined predefined position or to the sequence of data
elements.
Appeal Br. 19 (Claims App.) (emphasis added).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Elbwart et al. (“Elbwart”) US 2003/0120990 A1 June 26, 2003
Barry et al. (“Barry”) US 2004/0162863 A1 Aug. 19, 2004
Geist et al. (“Geist”) US 2005/0021474 A1 Jan. 27, 2005
Girault et al. (“Girault”) US 2005/0213769 A1 Sept. 29, 2005
Rawson, Sr. (“Rawson”) US 2010/0054471 A1 Mar. 4, 2010
Roskind et al. (“Roskind”) US 2010/0142005 A1 June 10, 2010
Olson et al. (“Olson”) US 2010/0246814 A1 Sept. 30, 2010
Sinha et al. (“Sinha”) US 2013/0061057 A1 Mar. 7, 2013

REJECTIONS3
1. The Examiner rejects claims 1, 4, 5, 7, 10, 15, and 174 under
35 U.S.C. § 103 as being unpatentable over Sinha, Rawson, and Elbwart.
See Final Act. 3–6.

3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125
Stat. 284 (2011), amended 35 U.S.C. § 103. Because the present application
has an effective filing date (Feb. 17, 2014) after the AIA’s effective
(March 16, 2013), this decision refers to 35 U.S.C. § 103.
4 The Examiner omits claim 17 from the statement of the rejection, but
discusses claim 17 in the substantive rejection. See Final Act. 8. We find
this typographical error harmless and include claim 17 in the statement of
rejection for clarity.
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2. The Examiner rejects claims 2, 3, and 11 under 35 U.S.C. § 103
as being unpatentable over Sinha, Rawson, Elbwart, and Olson. See Final
Act. 6–8.
3. The Examiner rejects claims 8 and 9 under 35 U.S.C. § 103 as
being unpatentable over Sinha, Rawson, Elbwart, and Barry. See Final Act.
8–10.
4. The Examiner rejects claim 6 under 35 U.S.C. § 103 as being
unpatentable over Sinha, Rawson, Elbwart, and Roskind. See Final Act. 10.
5. The Examiner rejects claims 12–14 under 35 U.S.C. § 103 as
being unpatentable over Sinha, Rawson, Elbwart, and Girault. See Final
Act. 11–12.
6. The Examiner rejects claim 16 under 35 U.S.C. § 103 as being
unpatentable over Sinha, Rawson, Elbwart, and Geist. See Final Act. 12–13.
ANALYSIS
Obviousness Rejection of Claims 1, 4, 5, 7, 10, 15, and 17
The Examiner rejects independent claim 1 (as well as independent
claim 15, and dependent claims 4, 5, 7, 10, and 17) as obvious over Sinha,
Rawson, and Elbwart. See Final Act. 3–6; Ans. 13–17. Appellant contends
that Sinha, Rawson, and Elbwart do not teach the disputed limitations of
claim 1. See Appeal Br. 10–15. Specifically, Appellant contends, inter alia,
that “there is no teaching, suggestion, or motivation to include a permutator
circuit as disclosed by Rawson, or an interleaver as disclosed by Elbwart,
into the disclosure of Sinha, as suggested by the Examiner” because the
combination would be technically incompatible with the Sinha’s
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authentication process and would destroy the ability of Sinha to be used for
its intended purpose. Appeal Br. 14.
Appellant asserts that the Examiner-cited portions of Sinha (see Sinha
¶¶ 12, 27, 30) require substitutions of numbers from two different or distinct
sequences (sets of numbers). See Appeal Br. 10–15. Although the
Examiner points to Sinha’s Paragraph 27 as an example of interchanging
data elements (see Final Act. 3–4), the Examiner is only using the session
key of Sinha to meet the “sequence of data elements” recitation of claim 1.
Appellant misconstrues the Examiner’s rejection with respect to the
teachings of Sinha.
Even so, we agree with Appellant that the Examiner has not provided
a sufficient, reasonable rationale for combining the disparate Sinha, Rawson,
and Elbwart references. See Appeal Br. 12–15. It is true that each reference
describes cryptographic functionality and permutations, but Sinha describes
device authentication by substituting numbers in a personal identification
number (PIN) with numbers from a cryptographic key (Sinha, Abstract),
Rawson describes hardware encryption using a permutator circuit
(performing permutations) (Rawson, Abstract; ¶ 14), and Elbwart describes
using an interleaver to perform permutations in a telecommunications signal.
The Examiner provides only a perfunctory rationale for combining the
references (see Final Act. 4, 5) and picks only select teachings from the
references to piece together Appellant’s claim limitations.
Here, the Examiner benefitted from impermissible hindsight in
rejecting as obvious claims 1 and 15. See In re Warner, 379 F.2d 1011,
1017 (CCPA 1967) (“A rejection based on section 103 clearly must rest on a
factual basis, and these facts must be interpreted without hindsight
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reconstruction of the invention from the prior art.”). To protect against the
improper use of hindsight, the Examiner is required to explain why a person
having ordinary skill in the art at the time of the invention would have had
reason to combine the prior art’s teachings in the manner proposed by the
Examiner. In re Rouffet, 149 F.3d 1350, 1358 (Fed. Cir. 1998) (inferring
“hindsight” when the specific understanding or principal leading to
modification of prior art has not been explained). Indeed, even if one of
ordinary skill in the art may have understood that a reference could be
modified as reasoned by the Examiner, this does not imply a motivation to
modify the reference. See Belden Inc. v. Berk–Tek LLC, 805 F.3d 1064,
1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not
only could have made but would have been motivated to make the
combinations or modifications of prior art to arrive at the claimed
invention.”)
Motivation to combine is a factual inquiry, and “[t]he factual inquiry
whether to combine references must be thorough and searching and the need
for specificity pervades our authority on the findings on motivation to
combine.” In re Nuvasive, 842 F.3d 1376, 1381–82 (Fed. Cir. 2016)
(internal quotation marks and citation omitted). The Examiner “must
examine the relevant data and articulate a satisfactory explanation for [the
combination] including a rational connection between the facts found and
the choice made.” Nuvasive, 842 F.3d at 1382. The Examiner did not
provide a sufficient, reasonable rationale for combining Sinha, Rawson, and
Elbwart.
Consequently, we are constrained by the record before us to find that
the Examiner erred in finding that the combination of Sinha, Rawson, and
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Elbwart renders obvious Appellant’s claim 1. Independent claim 15
includes limitations of commensurate scope. Claims 4, 5, 7, 10, and 17
depend from and stand with claim 1.
Obviousness Rejection of Claims 2, 3,
6, 8, 9, 11–14, and 16
The Examiner rejects dependent claims 2, 3, and 11 as obvious over
Sinha, Rawson, Elbwart, and Olson. See Final Act. 6–8. The Examiner also
rejects claims 8 and 9 as obvious over Sinha, Rawson, Elbwart, and Barry.
See Final Act. 8–10. The Examiner further rejects claim 6 as obvious over
Sinha, Rawson, Elbwart, and Roskind. See Final Act. 10. The Examiner
additionally rejects claims 12–14 as obvious over Sinha, Rawson, Elbwart,
and Girault. See Final Act. 11–12. Finally, the Examiner rejects claim 16 as
obvious over Sinha, Rawson, Elbwart, and Geist. See Final Act. 12–13.
The Examiner does not suggest, and we do not find, that the additional
cited references (Olson, Barry, Roskind, Girault, and/or Geist) cure the
deficiencies of the Sinha-Rawson-Elbwart combination (supra). Therefore,
we reverse the Examiner’s obviousness rejections of dependent claims 2, 3,
6, 8, 9, 11–14, and 16 for the same reasons set forth for claim 1 (supra).
CONCLUSION
Appellant has shown that the Examiner erred in rejecting claims 1–17
under 35 U.S.C. § 103. We, therefore, do not sustain the Examiner’s
rejection of claims 1–17.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4, 5, 7, 10,
15, 17
103 Sinha, Rawson,
Elbwart
1, 4, 5, 7, 10,
15, 17
2, 3, 11 103 Sinha, Rawson,
Elbwart, Olson
2, 3, 11
8, 9 103 Sinha, Rawson,
Elbwart, Barry
8, 9
6 Sinha, Rawson,
Elbwart, Roskind
6
12–14 Sinha, Rawson,
Elbwart, Girault
12–14
16 103 Sinha, Rawson,
Elbwart, Geist
16
Overall
Outcome
1–17

REVERSED