Ex Parte Vater et al

Board of Patent Appeals and Interferences

Jan 30, 2009

09763621 (B.P.A.I. Jan. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte HARALD VATER and HERMANN DREXLER
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Appeal 2008-0134
Application 09/763,621
Technology Center 2100
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Decided: January 30, 2009
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Before HOWARD B. BLANKENSHIP, ST. JOHN COURTENAY III, and
STEPHEN C. SIU, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
INTRODUCTION
Appellants’ Request for Rehearing (filed Jul. 14, 2008) contends that
we erred in our Decision on Appeal entered May 13, 2008, in which we
sustained the rejection of claims 1-18.

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OPINION
We hold to our previous conclusion that Appellants failed to show
error in the rejection of the claims over the applied prior art. Appellants’
briefs purported to show error in the rejection of the claims found by the
Examiner to be anticipated by Kocher (US 2001/0053220 A1), with claim 1
being the selected claim in our review of the § 102 rejection. Appellants’
Request does not show that we misapprehended or overlooked anything in
making our determinations.
Appellants’ arguments in the Request do not begin well, by purporting
to reproduce material from page 6 of the Appeal Brief. The relevant section
of the Appeal Brief does not contain any underlining, although the Request
indicates that it does.
In any event, Appellants argued in the briefs that Kocher fails to
disclose an operation (h) that is disguised before its execution to obtain a
disguised operation (hR1) that is “a different operation than” the operation
(h), as recited in claim 1. Appellants submitted that Kocher teaches only
“standard” Data Encryption Standard (DES) operations, not a “disguised”
version of the standard algorithm. (Decision 3.) We were not persuaded of
error in the rejection of claim 1, in part, because we were not persuaded that
the “leak-minimizing” DES implementation described by Kocher was a
“standard” DES operation. (Id. at 4.)
Appellants now admit that Kocher describes modifying the DES
algorithm (Req. for Reh’g 2 and 4). The reference is thus not limited to
describing a “standard” DES operation, as we indicated in our Decision (at
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4). Appellants suggest that we were misled by Appellants’ reference to
Kocher’s algorithm as a “standard” DES algorithm. (Req. for Reh’g 3.)
Appellants now submit that the “disguised” operation that is claimed
was intended to have a different meaning from the “modified” operation
described by the reference. (Req. for Reh’g 3-4.) Appellants do not,
however, point to any limiting definition for “disguised” in the Specification
that would distinguish over the operation described by Kocher. More
important, Appellants do not point to anywhere in the briefs, that we
considered in making our determinations, that relied on any limiting
definition in the Specification. Nor do Appellants point to where the briefs
might have referred to evidence tending to show some understanding known
to the ordinary artisan that an algorithm that is “modified” to contribute
against external monitoring attacks (Kocher) cannot be considered a
“disguising” operation (as claimed).
Instant claim 1 recites that the “disguised operation (hR1) is executed
with disguised input data . . . .” Appellants admit (Req. for Reh’g 4) that
Kocher disguises input data, using the same operation as described by
Appellants.
Appellants argue, however, that in Appellants’ system “hR1(disguised
input data) = y = h(x).” (Req. for Reh’g 1-2.) Unfortunately, Appellants do
not tell us where this equality is set forth in instant claim 1. We do not find
it in claim 1, or in any of the claims that Appellants submitted in the Claims
Appendix of the Appeal Brief.
Appellants’ interpretation of the equality that does not appear in claim
1 seems to be that performing the “different” operation on the disguised
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input data has the same effect as performing the original operation on the
undisguised input data. (See Req. for Reh’g 1.) Appellants’ argument thus
appears to rely on the third clause in the body of claim 1, reciting that the
execution of the “disguised” operation “yields output data (y) identical with
the output data (y) determined upon execution of the operation (h) with input
data (x) . . . .”
However, as we noted in our Decision (at 4), the Examiner referred to
paragraph [0036] of Kocher, which indicates that at the end of the
operations, the two parts of the cyphertext “may be recombined to form the
same encrypted/decrypted quantity that would have been produced by a
standard DES protocol.” We also took into consideration the Examiner’s
reliance on paragraphs [0011] (“The ciphertext is produced in permuted,
blinded form, which may be easily converted to the standard DES
ciphertext”) and [0065] (“If the result is non-secret (e.g., cyphertext), the
standard DES ciphertext is produced . . . .”).
We considered, and presently consider, the reference to provide more
than adequate support for the Examiner’s finding that the limitations of
claim 1 are met by Kocher, and Appellants’ arguments do not persuade us
otherwise. In the multiple pages of arguments submitted in the Request,
Appellants seem to studiously avoid the description in Kocher’s paragraphs
[0011], [0036], and [0065]. The only remarks in the Appeal Brief that might
address the Examiner’s reliance on the relevant paragraphs appear to be that
paragraphs [0065] and [0036] do not teach disguising of the DES operation.
(See App. Br. 8 and 10.) We are not persuaded that Kocher fails to describe
“disguising” of an operation within the meaning of claim 1. Further,
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Appellants’ remarks in the Appeal Brief, Reply Brief, and Request for
Rehearing do not show error in the Examiner’s position that Kocher
describes “output data” that is within the scope of claim 1.
Appellants also allege in the Request that Kocher has a different goal
than Appellants, and seem to allege that the reference does not teach the
same “randomizing” operation taught by Appellants. While we can assume
both allegations to be true, we remind Appellants that the rejection is for
anticipation under § 102. The law of anticipation does not require that a
reference “teach” what an applicant’s disclosure teaches. Assuming that a
reference is properly “prior art,” it is only necessary that the claims “read
on” something disclosed in the reference, i.e., all limitations of the claim are
found in the reference, or “fully met” by it. Kalman v. Kimberly-Clark
Corp., 713 F.2d 760, 772 (Fed. Cir. 1983).
Moreover, most of Appellants’ remarks in the Request that concern
supposed differences between Appellants’ invention and Kocher seem to be
more particular than the apparent scope of claim 1. Appellants have not
shown where the claim requires the particulars that are alleged to distinguish
the invention over Kocher. The claims measure the invention. See SRI Int’l
v. Matsushita Elec. Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc).
Our reviewing court has repeatedly warned against confining the claims to
specific embodiments described in the specification. Phillips v. AWH Corp.,
415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc). During prosecution before
the USPTO, claims are to be given their broadest reasonable interpretation,
and the scope of a claim cannot be narrowed by reading disclosed limitations
into the claim. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997); In re
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Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989); In re Prater, 415 F.2d 1393,
1404-05 (CCPA 1969). “An essential purpose of patent examination is to
fashion claims that are precise, clear, correct, and unambiguous. Only in
this way can uncertainties of claim scope be removed, as much as possible,
during the administrative process.” In re Zletz, 893 F.2d at 322.

CONCLUSION
In summary, we have granted Appellants’ request for rehearing to the
extent that we have reconsidered our decision sustaining the rejection of
claims 1-18, but we decline to modify the decision in any way.

DENIED

msc

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