Amazon Technologies, Inc.

Patent Trials and Appeals Board

Jul 1, 2020

2019004782 (P.T.A.B. Jul. 1, 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.
14/733,795 06/08/2015 Jason Jenks 0097749-445US1 3962
113507 7590 07/01/2020
Davis Wright Tremaine LLP - ATI
IP Docketing Dept.
920 Fifth Ave., Suite 3300
Seattle, WA 98104-1610
EXAMINER
HUANG, JAY
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
07/01/2020 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):
amznpatents@dwt.com
patentdocket@dwt.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON JENKS, BRANDON B. LOW, HANSON CHAR, PETER
S. VOSSHALL, and WAYLON BRUNETTE
Appeal 2019-004782
Application 14/733,795
Technology Center 3600
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BENNETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–5 and 13–22. Claims 6–12 have been
withdrawn from consideration. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm in part.

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
Amazon Technologies, Inc. Appeal Br. 3.
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Application 14/733,795

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CLAIMED SUBJECT MATTER
Appellant describes the invention as relating to “secure decryption
and business rule validation of encrypted confidential data within a hardware
security module (HSM).” Spec., Abstract. The Specification states “[d]ata
validation . . . typically involves testing against a list of valid items or
algorithms.” Spec. 2.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method comprising:
receiving, at a hardware security module, an application
programming interface call to validate data, the application
programming interface call made to an application programming
interface provided by the hardware security module, the
application programming interface call specifying a secret
comprising encrypted information from a storage device external
to the hardware security module, the hardware security module
comprising a
cryptographic processor and memory within a tamper
resistant physical package; and
fulfilling the application programming interface call by at
least:
decrypting the secret within the hardware security module
to obtain cleartext that represents the data;
generating, based at least in part on application of a
hashing algorithm to the cleartext within the hardware security
module, a validation result that indicates whether the cleartext
satisfies a set of rules in the memory corresponding to a type of
payment information; and
providing the validation result.
Appeal Br. 25 (Claims Appendix).
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REFERENCES
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Ginter et al. US 2002/0112171 A1 Aug. 15, 2002
Wright et al. US 2002/0194119 A1 Dec. 19, 2002
Wah et al. US 2006/0085333 A1 April 20, 2006
Crosson Smith US 7,236,957 B2 June 26, 2007
Sako et al. US 2007/0237136 A1 Oct. 11, 2007
Schuba et al. US 2008/0071903 A1 March 20, 2008
REJECTIONS2
Claims 1–3, 13, 15–18, and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Wah, Ginter, and Smith. Final Act. 12.
Claims 4, 5, and 19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wah, Ginter, Smith, and Wright. Final Act. 17.
Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wah, Ginter, Smith, and Schuba. Final Act. 19.
Claims 21 and 22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wah, Ginter, Smith, and Sako. Final Act. 20.
STANDARD OF REVIEW
The Board conducts a limited de novo review of the appealed
rejections for error based upon the issues identified by Appellant and in light
of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d
1072, 1075 (BPAI 2010) (precedential).

2 The Examiner has withdrawn the rejection of claims 1–5 and 13–22 under
35 U.S.C. § 101. Ans. 3.
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Application 14/733,795

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ISSUES
We have reviewed Appellant’s arguments presented in the Appeal
Brief and the Reply Brief. Based on the presented arguments, we identify the
following issues for our review:
First Issue: Has the Examiner erred in combining the teachings of
Wah with those of Ginter and Smith to teach or suggest the invention recited
in claims 1 and 13?
Second Issue: Has the Examiner erred in combining the references in
order to teach or suggest “providing the results in a randomized order,” as
recited in dependent claims 21 and 22?
ANALYSIS
First Issue
In rejecting claim 1, the Examiner relies on the combination of Wah,
Ginter, and Smith. Relevant to this issue, the Examiner finds the limitation
“generating, based at least in part on application of a hashing algorithm to
the cleartext within the hardware security module, a validation result that
indicates whether the cleartext satisfies a set of rules in the memory
corresponding to a type of payment information” taught or suggested by the
combination of Wah, Ginter, and Smith. In particular, the Examiner finds
Smith teaches “generating, based at least in part on application of a hashing
algorithm to the cleartext, a validation result,” while Ginter teaches the
recited “within the hardware security module.” Final Act. 13–15. The
Examiner relies on Wah for teaching “a validation result that indicates
whether the cleartext satisfies a set of rules in the memory corresponding to
a type of payment information.”
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In combining Ginter with Wah, the Examiner finds:
[I]t would have been recognized by those of ordinary skill in the
art that modifying the module so it is a hardware security module
that receives an API call to decrypt encrypted data, the hardware
security module comprising a cryptographic processor and
memory within a tamper resistant physical package, results in an
improved invention because applying said technique ensures that
only authorized entities have access to encrypted data, thus
improving the overall security of the invention.
Final Act. 14. In combining Smith with Ginter, the Examiner finds:
One of ordinary skill in the art would have recognized that
applying the known technique of Smith to the known invention
of Wah, Ginter would have yielded predictable results and
resulted in an improved invention. It would have been recognized
that the application of the technique would have yielded
predictable results because the level of ordinary skill in the art
demonstrated by the references applied shows the ability to
incorporate such cryptography features into a similar invention.
Further, it would have been recognized by those of ordinary skill
in the art that modifying the step of generating a validation result
so it uses a hashing algorithm results in an improved invention
because applying said technique leverages the SHA-1 hashing
algorithm that is known for being secure, thus improving the
overall security of the invention.
Final Act. 15.
Appellant argues the Examiner has relied on impermissible hindsight
in combining Smith with Ginter and Wah (Appeal Br. 15–22, Reply Br. 3–8)
with respect to the “generating” step. Appellant contends the Examiner
failed to provide evidence that Smith “contains a known technique that is
applicable to a device analogous to a ‘hardware security module.’” Appeal
Br. 16.
We are not persuaded the Examiner’s rationale to combine the cited
references is insufficient. With respect to hindsight, Appellant has not
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identified knowledge gleaned only from the present application that was not
within the level of ordinary skill at the time the claimed invention was made.
See In re McLaughlin, 443 F.2d 1392 (CCPA 1971). Nor has Appellant
provided any objective evidence of secondary considerations (e.g.,
unexpected results), which our reviewing court guides “operates as a
beneficial check on hindsight.” Cheese Sys., Inc. v. Tetra Pak Cheese &
Powder Sys., Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
Appellant’s argument regarding Smith is also unavailing. As noted
above, Appellant also contends the Examiner erred in finding that the
SHA-1 hashing algorithm described by Smith was “well-known” because it
was not officially noticed, nor properly based upon common knowledge.
Appeal Br. 17–18. We are not persuaded by Appellant’s argument because
the Background section of Smith describes the SHA-1 hash as “a well-
known secure hash algorithm developed by the National Institute of
Standards and Technology which is useful for generating a 160-bit has of
any data file. . . .” Smith, col. 2, ll. 12–14. In fact, Appellant’s own
Specification supports that algorithms were known to be used in data
validation, describing: “Data validation . . . typically involves testing
against a list of valid items or algorithms.” Spec. 2. As such, a
preponderance of evidence in the record supports the Examiner’s finding.
For the same reasons, we also find unpersuasive Appellant’s similar
basis for arguing that Smith renders Wah and Ginter unsatisfactory for its
intended purpose and changes its principle of operation. Appeal Br. 18–21.
Accordingly, we are not persuaded of Examiner error with respect to
the rejection of claims 1 and 13.
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Second Issue
Claims 21 and 22, which depend from claims 1 and 13, respectively,
recite the limitation that the application programming interface call is
fulfilled by “generating a plurality of validation results that corresponds to
the plurality of secrets and providing the plurality of validation results in a
randomized order.” Appeal Br. 28–29 (Claims Appendix). The Examiner
relies on Sato for teaching or suggesting the limitation “providing the results
in a randomized order.” Final Act. 20–21. The Examiner states his
motivation to combine the references Wah, Ginter, Smith and Sato was that
those of ordinary skill in the art that modifying the invention to
provide the plurality of results in a randomized order results in
an improved invention because applying said technique ensures
that nefarious entities will not be able to gain information about
the plurality of secrets by intercepting the order of the plurality
of results, thus improving the overall security of the invention.
Final Act. 21.
Appellant argues “providing results ‘in a randomized order,’ by
definition means providing results in an ‘order’ that is unpredictable.”
Appeal Br. 23. Appellant further argues “The Office cites Sako as allegedly
teaching this feature, yet fails to explain how Sako would be capable of
“providing [a plurality of] results in a randomized order” if Wah in view of
Ginter, and further in view of Crosson Smith only disclose ‘generating a
[single] validation result.”’ Appeal Br. 23.
Appellant argues the Examiner used impermissible hindsight to make
the combination of references:
In fact, despite the Office's declaration that the motivation for
combining Wah, Ginter, and Crosson Smith with Sako would be
to “ensure[] that nefarious entities will not be able to gain
information about the plurality of secrets by intercepting the
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order of the plurality of results, thus improving the overall
security of the invention,” this motivation appears to have been
appropriated from Appellant's specification since the cited
portions of the art supply no such motivation. In fact, the reason
given by Sako for randomizing the order of its “music contents”
is so as not to “bore the user” ( e.g., by providing music contents
to the user in the same order as provided in the past). A person
having ordinary skill seeking to foil “nefarious entities” and
“improv[ e] the overall security of the invention,” as proposed by
the Office, would not be led to combine the boredom-avoidance
technique of Sako with the credit card payment system of Wah in
view of Ginter, and further in view of Crosson Smith. Therefore,
it seems clear that the Office has again resorted to impermissible
hindsight to make the combination.
Reply Br. 10–11 (footnotes omitted). We agree with Appellant because, for
example, the Sato reference is not in the same field of the invention – it is in
the music content field. The section of Sato the Examiner cites teaches
transmitting music content in a random order so as not to bore with user with
the same, repetitive order of music content. Sako ¶ 135. On this record, we
do not find someone of ordinary skill in the art would have considered
Sato’s transmission of randomized music content as a teaching or suggestion
to provide the validation results in a randomized order to thwart a security
risk.
As such, we are persuaded the Examiner has erred in rejecting claims
21 and 22.
Remaining Claims
Appellant does not present separate arguments for the remaining
rejected claims. Appeal Br. 23–24. Therefore, we sustain the rejections of
claims 2–5 and 14–20 under 35 U.S.C. § 103(a).

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CONCLUSION
The Examiner’s rejection is affirmed in part.
More specifically:
We reverse the Examiner’s rejection of claims 21 and 22 under
35 U.S.C. § 103(a).
We affirm the Examiner’s rejections of claims 1–5 and 13–20 under
35 U.S.C. § 103(a).
DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 13, 15–
18, and 20
103(a) Wah, Ginter, and
Smith
1–3, 13, 15–
18, and 20

4, 5, and 19 103(a) Wah, Ginter,
Smith, and Wright
4, 5, and 19
14 103(a) Wah, Ginter,
Smith, and Schuba
14
21 and 22 103(a) Wah, Ginter,
Smith, and Sako
21 and 22
Overall
Outcome
1–5 and 13–
20
21 and 22
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED IN PART