Ex Parte MCLEAN et al

Patent Trials and Appeals Board

Feb 22, 2019

14264645 - (D) (P.T.A.B. Feb. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/264,645 04/29/2014 Ivan Hugh MCLEAN
112246 7590 02/26/2019
Loza & Loza, LLP/Qualcomm
305 N. Second Ave., #127
Upland, CA 91786
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
QCOM-2406US (135107) 8617
EXAMINER
PEARSON, DAVID J
ART UNIT PAPER NUMBER
2438
NOTIFICATION DATE DELIVERY MODE
02/26/2019 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):
ocpat_uspto@qualcomm.com
qualcomm-pto@lozaip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IV AN HUGH MCLEAN and MANFRED VON WILLICH
Appeal2018-005196
Application 14/264,645 1
Technology Center 2400
Before ROBERT E. NAPPI, CATHERINE SHIANG, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-5, 8-26 and 30-34, which are all the claims pending
and rejected in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 Appellants identify QUALCOMM Incorporated as the real party in
interest. App. Br. 2.
Appeal2018-005196
Application 14/264,645
STATEMENT OF THE CASE
Introduction
According to the Specification, the present invention relates to
"preventing the generation of a duplicate derivative key based on weaker
metadata in an SoC [system-on-a-chip] device." Spec. ,r 3. Claim 1 is
exemplary:
1. An integrated circuit, comprising:
a hardware processor configured to:
receive a delegate certificate from a first party, wherein the
delegate certificate includes a first public key of the first party;
validate a digital signature of the delegate certificate using a
second public key of a supplier and/or manufacturer of the integrated
circuit; and
generate a derivative key using a secret key securely stored in
the integrated circuit and the first public key as inputs to a key
derivation function, wherein the secret key is different from a first
private key corresponding to the first public key, and the secret key is
available to the first party.
Rejections2
Claims 32 and 34 are rejected under 35 U.S.C. § 112(a) as failing to
comply with the written-description requirement. Final Act. 2-3.
Claims 1-5, 8-26, and 30-34 are rejected under 35 U.S.C. § 101
because they are directed to patent-ineligible matter. Final Act. 3--4.
2 Throughout this opinion, we refer to the ( 1) Final Rejection dated August
17, 2017 ("Final Act."); (2) Appeal Brief dated December 19, 2017
("App. Br."); (3) Examiner's Answer dated February 20, 2018 ("Ans."); and
( 4) Reply Brief dated April 19, 2018 ("Reply Br.").
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Application 14/264,645
ANALYSIS
35 US.C. § l 12(a)
To satisfy the written-description requirement, the disclosure must
reasonably convey to skilled artisans that Appellants possessed the claimed
invention as of the filing date. See Ariad Pharms., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane). Specifically, the
description must "clearly allow persons of ordinary skill in the art to
recognize that [the inventor] invented what is claimed" and
the test requires an objective inquiry into the four comers of the
specification from the perspective of a person of ordinary skill
in the art. Based on that inquiry, the specification must
describe an invention understandable to that skilled artisan and
show that the inventor actually invented the invention claimed.
Id. ( citations omitted).
Further, the written-description statute "requires that the written
description actually or inherently disclose the claim element." PowerOasis,
Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306--07 (Fed. Cir. 2008).
[I]t is not a question of whether one skilled in the art might be
able to construct the patentee's device from the teachings of the
disclosure . . . . Rather, it is a question whether the application
necessarily discloses that particular device . . . . A description
which renders obvious the invention for which an earlier filing
date is sought is not sufficient.
Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)
(internal quotation marks and citations omitted) ( emphases added).
For claim 32, Appellants cite original claim 1 and paragraphs 3 and 35
of the Specification. See App. Br. 21. While the cited Specification
excerpts separately teach "using the first public key as an input to the key
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Application 14/264,645
derivation function" and "prevent[ing] duplicate derivative key generation,"
such separately teachings do not actually or inherently disclose "using the
first public key as an input to the key derivation function prevents duplicate
derivative key generation," as required by claim 32. See PowerOasis, 522
F.3d at 1306--07.
For claim 34, Appellants cite paragraphs 3 and 37 of the Specification
and the knowledge of one skilled in the art. See App. Br. 22. While the
cited Specification excerpts teach "a party to create specific derivative keys
for their own use" ( emphasis added), "security," and "information,"
Appellants have not persuasively explained why the cited Specification
excerpts and the knowledge of one skilled in the art actually or inherently
disclose "use the derivative key to secure information/or the first party," as
required by claim 34 (emphasis added). See PowerOasis, 522 F.3d at 1306-
07.
Because Appellants have not persuaded us the Examiner erred, we
sustain the Examiner's rejection of claims 32 and 34 under 35 U.S.C.
§ 112(a).
35 us.c. § 101
We have reviewed the Examiner's rejection in light of Appellants'
contentions and the evidence of record. We concur with Appellants'
contention that the Examiner erred in determining claims 1-5, 8-26, and 30-
34 are directed to patent-ineligible subject matter. See App. Br. 11-20;
Reply Br. 2-7.
Section 101 of the Patent Act provides "[ w ]hoever invents or
discovers any new and useful process, machine, manufacture, or
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Application 14/264,645
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title." 35 U.S.C. § 101. However, the Supreme Court has long interpreted
35 U.S.C. § 101 to include implicit exceptions: "[l]aws of nature, natural
phenomena, and abstract ideas" are not patentable. E.g., Alice Corp. v. CLS
Bankint'l, 573 U.S. 208,216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes ( Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192
( 1981) ); "tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores" (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S.
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252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 192 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 (quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
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The PTO recently published revised guidance on the application of
§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance ("Memorandum"). Under that
guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Memorandum.
For the reasons discussed below, we proceed directly to the Alice step-
two analysis (Step 2A, Prong 2 of the Memorandum).
In DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir.
2014), the Federal Circuit determines the claims satisfy Alice step two
because "the claimed solution is necessarily rooted in computer technology
in order to overcome a problem specifically arising in the realm of computer
networks." DDR Holdings, 773 F.3d at 1257. As a result, the DDR court
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holds the claims are patent eligible regardless of whether the claims are
characterized as an abstract idea under Alice step one. See id. at 1257.
Similar to the claims in DDR, the claims here are necessarily rooted in
integrated-circuit technology in order to overcome a problem specifically
arising in the realm of generating derivative keys. See claims 1-5, 8-26, and
30-34; see also Spec. 1-2; DDR Holdings, 773 F.3d at 1257. As a result,
the claims are patent eligible regardless of whether they are characterized as
an abstract idea under Alice step one. See DDR Holdings, 773 F.3d at 1257.
In particular, the claims address the problem of duplicative derivative
keys based on weak metadata. See claims 1-5, 8-26, and 30-34; see also
Spec. 1-2. To that end, the claims provide an improved system for
preventing the generation of a duplicative derivative key based on weak
metadata in a device. See claims 1-5, 8-26, and 30-34. For example,
independent claim 1 recites a system comprising "a hardware processor
configured to: receive a delegate certificate from a first part ... ; validate a
digital signature of the delegate certificate using a second public key of a
supplier and/or manufacturer of the integrated circuit; and generate a
derivative key using a secret key securely stored in the integrated circuit and
the first public key as inputs to a key derivation function .... " Claim 1.
Independent claims 8, 15, and 22 recite similar functions. See claims 8, 15,
and 22. Contrary to the detailed functions discussed above, the Examiner
incorrectly asserts the claims merely use a generic computer to perform
mathematical functions (Ans. 3).
Instead of adhering to the conventional way of generating a
duplicative derivative, the claims provide an improved system for preventing
the generation of a duplicative derivative key based on weak metadata. See
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claims 1-5, 8-26, and 30-34; DDR Holdings, 773 F.3d at 1258-59.
Therefore, similar to the claims of DDR and contrary to the Examiner's
assertion (Ans. 5), "[ w ]hen the limitations of [this invention] are taken
together[], the claims recite an invention that is not merely the routine or
conventional use of' general-purpose electronic circuitry. See claims 1-5,
8-26, and 30-34; DDR Holdings, 773 F.3d at 1259.
Finally, "[i]t is also clear that the claims at issue do not attempt to
preempt every application of the idea of' preventing the generation of a
duplicative derivative key based on weak metadata. "Rather, they recite a
specific way" based on detailed receiving, validating, and generating
functions discussed above. DDR Holdings, 773 F.3d at 1259. As a result,
the claims include "additional features" that ensure the claims are "more
than a drafting effort designed to monopolize the [abstract idea]." Id.
( citation omitted). In short, "the claimed solution amounts to an inventive
concept for resolving this particular" key-generation problem, rendering the
claims patent eligible. Id. As a result, the claims are patent eligible
according to the Memorandum. See Memorandum, Step 2A, Prong 2; see
also MPEP § 2106.05(a).
Accordingly, we reverse the Examiner's rejection of claims 1-5, 8-
26, and 30-34 under 35 U.S.C. § 101.
DECISION
We sustain the Examiner's rejection of claims 32 and 34 under
35 U.S.C. § 112(a).
We reverse the Examiner's rejection of claims 1-5, 8-26, and 30-34
under 35 U.S.C. § 101.
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Because we affirm at least one ground of rejection with respect to 32
and 34, we affirm the Examiner's decision rejecting claims 32 and 34. See
37 C.F.R. § 4I.50(a)(l).
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-IN-PART
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