GOOGLE INC.

Patent Trials and Appeals Board

Sep 15, 2020

2020004523 (P.T.A.B. Sep. 15, 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.
15/436,489 02/17/2017 Donald STARK 2332100US 8114
149118 7590 09/15/2020
Colby Nipper / Google
291 East Shore Drive
Suite 200
Eagle, ID 83616
EXAMINER
KORSAK, OLEG
ART UNIT PAPER NUMBER
2492
NOTIFICATION DATE DELIVERY MODE
09/15/2020 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):
docket@colbynipper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DONALD STARK
Appeal 2020-004523
Application 15/436,489
Technology Center 2400
Before JOSEPH L. DIXON, JAMES R. HUGHES, and
JOHN A. EVANS, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Claims 29–57 are pending, stand rejected, are appealed by Appellant,1
and are the subject of our decision under 35 U.S.C. § 134(a). See Final Act.
1–2; Appeal Br. 5.2 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 Google, Inc. See
Appeal Br. 3.
2 We refer to Appellant’s Specification (“Spec.”), filed Feb. 17, 2017
(claiming benefit of US 62/298,842 (filed Feb. 23, 2016)); and Appeal Brief
(“Appeal Br.”), filed Sept. 12, 2019. We also refer to the Examiner’s Final
Office Action (“Final Act.”), mailed Apr. 15, 2019; and Answer (“Ans.”)
mailed Nov. 22, 2019.
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Application 15/436,489

2
CLAIMED SUBJECT MATTER
The invention “generally relates to methods and [apparatuses] for
protecting the security of data” and more “specifically, . . . to protecting
against cryptographic attacks using clock period randomization.” Spec. ¶ 7.
The method recites a process of generating a variable clock signal with a
variable clock period for use during a cryptographic operation that includes
receiving an input clock signal, generating a fixed delay, generating a
variable delay, combining the fixed and variable delays to create a combined
delay, applying the combined delay to the input clock signal to create the
variable clock period, and generating the variable clock signal from the
variable clock period. See Spec. ¶ 8; Abstract. Claims 29 (directed to a
method) and 44 (directed to an apparatus) are independent. Claim 29,
reproduced below, is illustrative of the claimed subject matter:
29. A method of generating a variable clock signal with
a variable clock period for use during a cryptographic operation,
the method comprising:
receiving an input clock signal;
generating a fixed delay amount;
generating a variable delay amount;
combining the fixed delay amount and the variable delay
amount to create a combined delay amount;
applying the combined delay amount to the input clock
signal to create the variable clock period; and
generating the variable clock signal based on the variable
clock period to control a device during the cryptographic
operation.
Appeal Br. 40 (Claims App.) (emphasis added).

Appeal 2020-004523
Application 15/436,489

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REFERENCES
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Lin US 2009/0163166 A1 June 25, 2009
Samavedam et al.
(“Samavedam”)
US 2011/0074509 A1 Mar. 31, 2011
Henry et al.
(“Henry”)
US 2011/0296202 A1 Dec. 1, 2011
Xu et al. (“Xu”) US 2013/0285729 A1 Oct. 31, 2013
Bayrak et al., An EDA-Friendly Protection Scheme against Side-
Channel Attacks, EDAA (2013) (“Bayrak”).
Bialek et al., Implementation of a Digital Trim Scheme for SAR ADCs,
11 Adv. Radio Sci., 227–230 (2013) (“Bialek”).
REJECTIONS3
1. The Examiner rejects claims 30, 34, 41, 45, 50, and 55 under 35
U.S.C. § 112(a) as failing to comply with the written description
requirement.4 See Final Act. 2–4; Ans. 4–8.
2. The Examiner rejects claims 29–32, 34–36, 38, 44–48, 50, and
51 under 35 U.S.C. § 102(a)(1) as being anticipated by Bayrak. See Final
Act. 4–7.

3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125
Stat. 284 (2011), amended 35 U.S.C. §§ 102, 112, and 103. Because the
present application has an effective filing date (Feb. 23, 2016) after the
AIA’s effective date, this decision refers 35 U.S.C. §§ 102(a)(1), 112(a), and
103.
4 The Examiner also rejected claims 33, 35, 48, and 49 under 35 U.S.C.
§ 112(a) (see Final Act. 3–4), but withdrew the rejection of these claims (see
Ans. 4). We do not address Appellant’s arguments with respect to the
withdrawn rejection.
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Application 15/436,489

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3. The Examiner rejects claims 33 and 49 under 35 U.S.C. § 103
as being unpatentable over Bayrak and Henry. See Final Act. 7–8.
4. The Examiner rejects claims 37, 39, 52, and 53 under 35 U.S.C.
§ 103 as being unpatentable over Bayrak and Lin. See Final Act. 8–9.
5. The Examiner rejects claims 40, 41, 54, and 55 under 35 U.S.C.
§ 103 as being unpatentable over Bayrak and Samavedam. See Final Act.
10.
6. The Examiner rejects claims 42 and 56 under 35 U.S.C. § 103
as being unpatentable over Bayrak, Samavedam, and Xu. See Final Act. 11.
7. The Examiner rejects claims 43 and 57 under 35 U.S.C. § 103
as being unpatentable over Bayrak, Samavedam, Xu, and Bialek. See Final
Act. 11.
ANALYSIS
Written description Rejection of Claims 30,
34, 41, 45, 50, and 55
The Examiner rejects dependent claims 30, 34, 41, 45, 50, and 55 as
failing to comply with the written description requirement. See Final Act.
2–4; Ans. 4–8. Specifically, the Examiner rejects claims 30 and 45 because
the claims recite “another variable clock period” (Final Act. 3 (emphasis
omitted)), for which the Examiner finds no written description support in
Specification. See Final Act. 3; Ans. 5–6. The Examiner also rejects claims
34 and 50 because the claims recite “prevents a fault injection attack” (Final
Act. 3 (emphasis omitted)), for which the Examiner finds no written
description support in Specification. See Final Act. 3; Ans. 7. The
Examiner further rejects claims 41 and 55 because the claims recite “linear
capacitors are activated or deactivated prior to generating the variable delay
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Application 15/436,489

5
amount” (Final Act. 4 (emphasis omitted)), for which the Examiner, again,
finds no written description support in Specification. See Final Act. 4; Ans.
8.
Appellant contends that support for the disputed features of claims 30
and 45—“another variable clock period” (quoting claim 30 (Appeal Br. 41
(Claims App.))—“can be found in at least FIG. 2 and [0008] of the . . .
specification.” Appeal Br. 14; see Appeal Br. 14–15 (citing Spec. ¶ 8; Fig.
2). Appellant also contends that the disputed features of claims 34 and 50—
“prevents a fault injection attack” (quoting claim 34 (Appeal Br. 41 (Claims
App.)))—are supported by the Specification. See Appeal Br. 16 (citing
Abstract). Appellant further contends that support for the disputed features
of claims 41 and 55—“linear capacitors are activated or deactivated prior to
generating the variable delay amount” (quoting claim 41 (Appeal Br. 43
(Claims App.))—“can be found in at least [0083] of the . . . specification.
Appeal Br. 17 (citing Spec. ¶ 83).
The test for sufficiency under the written description requirement “is
whether the disclosure of the application relied upon reasonably conveys to
those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date.” Ariad Pharms, Inc. v. Eli Lilly and Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010).
With respect to claims 30 and 45, Appellant’s cited support (Spec. ¶ 8;
Fig. 2) describes a process for generating a variable clock period and
multiple variable clock periods. Further, Figure 2 and the Specification
provide a detailed explanation of generating multiple variable clock periods.
See Spec. ¶¶ 40, 60–61; Fig. 2. We find the above-described subject matter
from Appellant’s Specification provides sufficient written description
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Application 15/436,489

6
support for the claimed features the Examiner found lacking in such support.
We, therefore, find the Examiner erred in rejecting claims 30 and 45 as
lacking sufficient written description support.
With respect to claims 34 and 50, Appellant’s cited support (Abstract)
does not explicitly describe preventing a fault injection attack (the
prevention of all possible fault injection attacks), but does describe a process
that makes “fault injection attacks more difficult by using a clock with a
variable period during a cryptographic operation” (Abstract). As discussed
supra, Appellant’s Specification provides a detailed explanation of
generating variable clock periods (see Spec. ¶¶ 40, 60–61; Fig. 2) which
makes such attacks more difficult (i.e., less likely to succeed—that is, the
process lessens the probability of an attack succeeding). See Spec. ¶¶ 54,
56. 58, 60, 62, 71. We agree with Appellant that making an attack more
difficult or less likely to succeed at least suggests (to one of ordinary skill in
the art) preventing an attack, and, therefore, would have reasonably
conveyed that Appellant had possession of the claimed subject matter to one
of ordinary skill in the art. We find the above-described subject matter from
Appellant’s Specification provides sufficient written description support for
the claimed features the Examiner found lacking in such support. Thus, we
find the Examiner erred in rejecting claims 34 and 50 as lacking sufficient
written description support.
With respect to claims 41 and 55, Appellant’s cited support (Spec.
¶ 83) does not explicitly describe that the linear capacitors are activated (or
deactivated) prior to generating the variable delay, but does describe a
process for activating (deactivating) the capacitors—“the control signals to
capacitors 440a-440d may operate one or more switches that switch
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Application 15/436,489

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capacitors 440a-440d into/out of the circuit” (Spec. ¶ 83). In particular, the
above description shows Appellant had possession of activating or
deactivating the capacitors. See Spec. ¶ 83; Fig. 10. It follows from claims
29, 32, 36, 38, and 40, on which claim 41 depends, and Appellant’s
Specification that activating the capacitors must precede generating the
variable delay that requires the use of delay generators that comprise banks
of the linear capacitors. See claims 29, 32, 36, 38, 40, and 41 (Appeal Br.
40–43 (Claims App.)); see also Spec. ¶¶ 9, 13, 24, 67, 75, 76, 83, 87, 88.
We, therefore, conclude the Examiner erred in rejecting independent claims
41 and 55 as lacking sufficient written description support.
Anticipation Rejection of Claims 29–32, 34–
36, 38, 44–48, 50, and 51
The Examiner rejects independent claim 29 (as well as independent
claim 44, and dependent claims 30–32, 34–36, 38, 45–48, 50, and 51) as
being anticipated by Bayrak. See Final Act. 4–7; Ans. 9–14. Appellant
contends that Bayrak does not disclose the disputed limitations of claim 29.
See Appeal Br. 18–21. Specifically, Appellant contends, inter alia, that the
cited portions of Bayak (disclosing “τprot” and “M random clocks”) “cannot
both be analogous to the ‘combined delay amount’ of claim 29” and that
“one of the ‘M random clocks’ of Bayrak cannot be analogous to both the
‘variable delay amount’ and the ‘combined delay amount’ of claim 29.”
Appeal Br. 19; see Appeal Br. 17–21.
We agree with Appellant that the Examiner-cited portions of Bayrak
(see Bayrak 2 and Fig. 2) do not explicitly or inherently describe the
generating a fixed delay and a variable delay and combining the fixed and
variable delay to create a combined delay that is then applied to the input
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clock signal to create a variable clock period, as required by Appellant’s
claim 29. See Appeal Br. 17–21. Specifically, Bayrak describes “τprot” that
is a clock period (see description of Fig. 2 on page 2) and “M random
clocks” that are generated random clocks (see Bayak Section II and
description of Fig. 2 on page 2), and that the phase-shifted clock signals
(having the increased clock period (τprot) are multiplexed to generate the
randomized clocks (M random clocks). Although Bayrak describes
randomized variable clock generation (Bayrak 2), it is unclear from the
Examiner’s rejection how Bayrak’s generated randomized clocks (M
random clocks) can be combined with a variable delay to create a combined
delay when Bayrak’s “M random clocks” are the resulting variable clock
signal (the “variable clock signal based on the variable clock period” recited
in claim 29). The Examiner appears to misconstrue the disclosure of the
Bayrak reference and when properly interpreted the Examiner-cited portions
of Bayrak cannot logically disclose the process of generating the variable
clock signal recited in claim 29.
Consequently, we are constrained by the record before us to find that
the Examiner erred in finding Bayrak anticipates Appellant’s claim 29.
Independent claim 44 includes limitations of commensurate scope. Claims
30–32, 34–36, 38, 45–48, 50, and 51 depend from and stand with their
respective base claims. Accordingly, Appellant’s contentions persuade us of
error in the Examiner’s anticipation rejection of claims 29–32, 34–36, 38,
44–48, 50, and 51, and we reverse the Examiner’s rejection of these claims.
Appeal 2020-004523
Application 15/436,489

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Obviousness Rejections of Claims 33, 37,
39–43, 49, and 52–57
The Examiner rejects claims 33, 37, 39–43, 49, and 52–57 under 35
U.S.C. § 103 as being unpatentable over the cited prior art. Specifically, the
Examiner rejects claims 33 and 49 over Bayrak and Henry (see Final Act. 7–
8); the Examiner rejects claims 37, 39, 52, and 53 over Bayrak and Lin (see
Final Act. 8–9); the Examiner rejects claims 40, 41, 54, and 55 over Bayrak
and Samavedam (see Final Act. 10); the Examiner rejects claims 42 and 56
over Bayrak, Samavedam, and Xu (see Final Act. 11); and the Examiner
rejects claims 43 and 57 over Bayrak, Samavedam, Xu, and Bialek (see
Final Act. 11). The Examiner does not suggest the additional cited
references (Henry, Lin, Samavedam, Xu, and Bialek), alone or in
combination, cure the above noted deficiencies of Bayrak (supra).
Therefore, we reverse the Examiner’s obviousness rejections of dependent
claims 33, 37, 39–43, 49, and 52–57 for the same reasons set forth for claim
29 (supra).
CONCLUSION
Appellant has shown that the Examiner erred in rejecting claims 30,
34, 41, 45, 50, and 55 under 35 U.S.C. § 112(a). Appellant has also shown
that the Examiner erred in rejecting claims 29–32, 34–36, 38, 44–48, 50, and
51 under 35 U.S.C. § 102(a)(1). Appellant has further shown that the
Examiner erred in rejecting claims 33, 37, 39–43, 49, and 52–57 under 35
U.S.C. § 103. We, therefore, do not sustain the Examiner’s rejections of
claims 29–57.
Appeal 2020-004523
Application 15/436,489

10
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
30, 34, 41, 45,
50, 55
112(a) Written
Description
30, 34, 41, 45,
50, 55
29–32, 34–36,
38, 44–48, 50,
51
102(a)(1) Bayrak 29–32, 34–36,
38, 44–48, 50,
51
33, 49 103 Bayrak, Henry 33, 49
37, 39, 52, 53 103 Bayrak, Lin 37, 39, 52, 53
40, 41, 54, 55 103 Bayrak,
Samavedam
40, 41, 54, 55
42, 56 103 Bayrak,
Samavedam,
Xu
42, 56
43, 57 103 Bayrak,
Samavedam,
Xu, Bialek
43, 57
Overall
Outcome
29–57

REVERSED