Ex Parte Teuwen et al

Patent Trial and Appeal Board

Sep 25, 2017

14104772 (P.T.A.B. Sep. 25, 2017)

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.
14/104,772 12/12/2013 Philippe Teuwen 81538461US01 5316
65913 7590 09/27/2017
Intellectual Property and Licensing
NXPB.V.
411 East Plumeria Drive, MS41
SAN JOSE, CA 95134
EXAMINER
DHRUV, DARSHAN I
ART UNIT PAPER NUMBER
2498
NOTIFICATION DATE DELIVERY MODE
09/27/2017 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):
ip. department .u s @ nxp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PHILIPPE TEUWEN,
PETER MARIA FRANCISCUS ROMBOUTS and FRANK MICHAUD
Appeal 2016-007327
Application 14/104,772
Technology Center 2400
Before CARL W. WHITEHEAD JR, ERIC B. CHEN and
MICHAEL M. BARRY, Administrative Patent Judges.
WHITEHEAD JR., Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants are appealing the Final Rejection of claims 1—16 and 18—
21 under 35 U.S.C. § 134(a). Appeal Brief 5—16. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
Introduction
The invention is directed to
A method for verifying the integrity of navigation data
used to produce random values for a white-box cryptography
system including: receiving information from a navigation
system; verifying the integrity of the received navigation
information; extracting random information from the received
Appeal 2016-007327
Application 14/104,772
navigation information; and performing a white-box
cryptography operation using the extracted random information.
Abstract.
Illustrative Claim (disputed limitations emphasized)
1. A method for verifying the integrity of navigation data used to
produce random values for a white-box cryptography system comprising:
receiving received navigation information from a navigation system;
verifying an integrity of the received navigation information;
extracting random information from the received navigation
information; and
performing a white-box cryptography operation using the extracted
random information.
Rejections on Appeal
Claims 1—5, 7—11, 13—16, and 18—21 are rejected under 35 U.S.C.
§ 101 because the claimed invention is directed to non-statutory subject
matter because the claims as a whole, considering all claim elements both
individually and in combination, do not amount to significantly more than an
abstract idea.1 Final Rejection 4—5; Answer 3.
Claims 1—12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Levy (U.S. Patent Application Publication 2011/0025558
Al; published February 3, 2011), Lee (U.S. Patent Application Publication
2012/0170740 Al; published July 5, 2012), and Yang (U.S. Patent
Application Publication 2011/0291880 Al; published December 1, 2011).
Final Rejection 6—12.
1 “Appellant is notified that Prior 35 U.S.C. § 101 rejection for dependent
claims 6 and 12 has been withdrawn. These claims has specialized
computers and specifies what a system can be.” Answer 3.
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Claims 13 and 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Brown (US Patent 8,787,564 B2; issued July 22, 2014)
and Farrugia (US Patent Application 2014/0101458 Al; published April 10,
2014). Final Rejection 12—15.
Claims 15, 16, 20, and 21 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Brown, Farrugia, and Kaplan (US Patent
Application 2014/0195576 Al; published July 10, 2014). Final Rejection
15-18.
Claims 14 and 19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Brown, Farrugia, Kaplan, and Blom (US Patent
Application 2010/0195829 Al; published August 5, 2010). Final Rejection
18-21.
ANALYSIS
Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Appeal Brief (filed October 12, 2015), the Reply Brief (filed
July 18, 2016), the Answer (mailed June 30, 2016) and the Final Rejection
(mailed July 2, 2015) for the respective details.
35 U.S.C. $ 101 Rejection
The Examiner finds claims 1—5, 7—11, 13—16, and 18—21 are
directed to an abstract idea — ""receiving received navigation information,
verifying the integrity, extracting random information, performing a white-
box cryptography operation, comparing received information, processing
the received navigation information.'1'’ Final Rejection 5. The Examiner
further finds:
The additional element(s) or combination of elements in the
claim(s) other than the abstract idea per se amount(s) to no more
than: recitation of a generic computer structure that serves to
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perform generic computer function that are well-understood,
routine, and conventional activities previously known within the
computer security industry. Viewed as a whole, these additional
claim element(s) do not provide meaningful limitation(s) to
transform the abstract idea into a patent eligible application of
the abstract idea such that the claim(s) amounts to significantly
more than the abstract idea itself.
Final Rejection 5.
Appellants contend:
The rejection fails to properly apply the framework set
forth by Alice [Alice Corp. Pty. Ltd. v. CLS Bank Intern. 134
S.Ct. 2347 (2014)] for determining subject matter eligibility.
Instead, the rejections simply conclusorily [sic] state that the
claim language itself (or the majority thereof) constitutes an
abstract idea and that the remaining portions fail to contribute
“significantly more.” As such, the office action effectively
circumvents the required analysis and, instead, supports the
rejection on conclusory statements.
Appeal Brief 3.
We find Appellants’ arguments persuasive. We find the Examiner’s
articulated reasoning is insufficient to support a prima facie case of
nonstatutory subject matter under 35U.S.C. § 101.2 Consequently, we
2 The USPTO recently issued an update to its guidance on determining subject
matter eligibility, further articulating the burden placed on the Examiner in
supporting a rejection based on Alice. July 2015 Update: Subject Matter
Eligibility, available at http://www.uspto.gov/ sites/ default/ files/
documents/ieg-july-2015-update.pdf (hereinafter, “July Update”). The July
Update supplements the previous interim guidance published in December of
2015, (available at http://www.gpo.gov/ fdsys/ pkg/FR-2014-12-16/
pdf/2014-29414.pdf) (hereinafter, “Interim Guidance”), which explained that
the currently accepted test for determining subject matter eligibility with
regard to judicial exceptions under the Supreme Court precedents in Mayo
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Application 14/104,772
reverse the Examiner’s nonstatutory subject matter rejection of claims 1—5,
7-11, 13-16, and 18-21.
35 U.S.C. $ 103(a) Rejection —Claims 1—12
Appellants contend:
The office action argues that it would have been obvious to
incorporate the cryptography of Lee into the sat-nav [satellite
navigation] system of Levy “to conceal the encryption key using
white-box cryptography, thus making it impossible to decipher
the encryption key.” However, Levy does not disclose any
cryptographic key in the first place and, as such, the proposed
rationale would not have driven a person of ordinary skill in the
art to make the proposed modification.
Appeal Brief 10.
The Examiner finds Levy discloses, “/a] method for verifying the
integrity of navigation data (13 5^) used to produce random values for a
white-box cryptography system" final Rejection 6.
Levy paragraph 35 is reproduced below:
The invention relates also to a method for estimating an
indication of integrity of the navigation system, characterized
in that it uses a device according to the invention to carry out the
following steps in real time in order to estimate an indication of
integrity of the system with respect to location errors x that must
be of very low probability.
We agree with Appellants that Levy is silent in regard to
cryptography, however we do not find Appellants’ arguments persuasive
because a preamble is generally not accorded any patentable weight where it
and Alice is a two-step analysis: 1) the Examiner must determine what the
claim is “directed to” and whether that qualifies as a judicial exception and 2)
the Examiner must determine whether the claim recites anything that qualifies
as “significantly more” than the judicial exception. Appeal Brief 5.
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merely recites the purpose of a process or the intended use of a structure, and
where the body of the claim does not depend on the preamble for
completeness but, instead, the process steps or structural limitations are able
to stand alone. See In re Hirao, 535 F.2d 67, 70 (CCPA 1976) and Kropa v.
Robie, 187 F.2d 150 (CCPA 1951).
Appellants further contend the Examiner’s finding that “[e]ncoding is
a form of an encryption which is an indication of data to be encrypted, using
cryptographic operation” is “factually and technologically incorrect;
encoding is not the same as encryption (or a ‘form’ thereof).” Appeal Brief
10 (citing Final Rejection 4).
The Examiner finds:
While the examiner acknowledges the difference between
encoding and encryption, the examiner submits that the teaching
of Levy’s transmitted satellite signal encoding is further
complemented by the teaching of Lee’s data encoding technique
using white box cipher in order to conceal the information. In
other words, the encoding technique described in the
combination is equivalent to encryption.
Answer 9.
Appellants argue, “[a] person of ordinary skill in the art would have
understood that ‘encoding’ is the process of placing a value into a special
format for transmission while encryption is the translation of data into a
secret code.” Appeal Brief 10-11 (footnotes omitted).
Appellants further argue, “[e]ven assuming arguendo that it would
have been obvious to implement cryptography in Levy to protect a
cryptographic key:”
The office action alleges that the random variable
mentioned in para. [0014] constitutes the extracted random
information, but fails to allege whether it would have been
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Application 14/104,772
obvious to implement Lee’s cryptography to use Levy’s random
variable. Further, it appears that any such further modification
would have been completely arbitrary and based solely on the
present claims (and thus premised solely on impermissible
hindsight).
Appeal Brief 12.
This is unpersuasive. The Examiner specifically finds, and we agree,
it would have been obvious to implement the “white box encryption” of Lee
using the “random variable” information of Levy. See Final Action 7—8
(citing Levy Tflf 14, 17, 35; Lee Tflf 61—62, 64—66, Fig. 4) (finding the
references are analogous as pertaining to “implementing integrity and
confidentiality” and it would have been obvious to an ordinarily skilled
artisan to combine their identified teachings “to measure integrity of the
navigation data (taught by Levy) and secure data using white-box
cryptography (taught by Lee)”); see also Answer 9—13.
Regarding hindsight, we note that “[a]ny judgment on obviousness is
in a sense necessarily a reconstruction based upon hindsight reasoning, but
so long as it takes into account only knowledge which was within the level
of ordinary skill at the time the claimed invention was made and does not
include knowledge gleaned only from applicant’s disclosure, such a
reconstruction is proper.” In re McLaughlin, 433 F.2d 1392, 1395 (CCPA
1971). Appellants provide no persuasive evidence to show that combining
the references’ teachings as explained by the Examiner was “uniquely
challenging or difficult for one of ordinary skill in the art.” See Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)
(citing KSR Inti Co. v. Teleflex, Inc., 550 U.S. 398, 419 (2007)). We are
persuaded the claimed subject matter here exemplifies the principle that
“[t]he combination of familiar elements according to known methods is
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Application 14/104,772
likely to be obvious when it does no more than yield predictable results.”
KSR, 550 U.S. at 416.
Accordingly, we sustain the Examiner’s obviousness rejection of
independent claims 1 and 7, as well as, dependent claims 1—6 and 8—11 not
separately argued. See Appeal Brief 13.
35 U.S.C. $ 103(a) Rejections —Claims 13—16 and 18—21
Appellants contend:
The office action correctly concedes that Brown fails to
disclose the above-cited subject matter, but goes on to cite
Farrugia’s computation of hashes as allegedly remedying this
deficiency. Farrugia, however, does not teach that the hashes are
taken against random data.
Specifically, Farrugia’s hashes are used for the purpose of
verifying the integrity of the white box implementation’s code.
Appeal Brief 15 (citing Farrugia, paragraph 28. Appellants contend
Farrugia’s “[ojbject code is not random data and, in fact, if the hashes were
taken of random data, then they would not serve their purpose of verifying
the integrity of the code.” Appeal Brief 16.
We do not find Appellants’ arguments persuasive. Claims 13 and 18
require, “encrypting or hashing the collected random samples to produce
encrypted random samples” and “encrypt or hash the collected random
samples to produce encrypted random samples” respectively. Brown
discloses in Figure 1 a “cryptographic secret generator module 106 can be a
pseudorandom number generator module that is seeded by the output values
from the entropy source system 102.” Brown, column 2, lines 21—24.
Farrugia discloses in paragraph 28, “[i]t is well known how to store these
hash values and check at a random instant some particular hash value Tj by
recomputing it from the compiled code at the runtime of the code to verify
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the code integrity by means of a match.” Farragia generates random hash
samples by checking the hash values at random instances of time. We agree
the Examiner’s findings that it would have been obvious to one of ordinary
skill in the art “to calculate an estimate of the entropy of the collected
random samples (taught by Brown) and perform a white-box cryptography
operation on encrypted collected random samples (taught by Farrugia).”
Final Rejection 14. Consequently, we sustain the Examiner’s obviousness
rejection of independent claims 13 and 18, as well as, dependent claims 14-
lb and 19—21 not separately argued. See Appeal Brief 16.
DECISION
The Examiner’s rejection of claims 1—5, 7—11, 13—16, and 18—21
under 35U.S.C. § 101 is reversed.
The Examiner’s rejections of claims 1—16 and 18—21 under 35 U.S.C.
§103 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(l)(v).
AFFIRMED
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