Gude, Michael

Patent Trials and Appeals Board

Sep 1, 2020

2019002058 (P.T.A.B. Sep. 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.
14/544,614 01/28/2015 Michael Gude 1302
7590 09/01/2020
Dr. Michael Gude
Buchenhoehe 1
Kerpen, 50169
GERMANY
EXAMINER
LIN, KENNY S
ART UNIT PAPER NUMBER
3649
MAIL DATE DELIVERY MODE
09/01/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL GUDE
Appeal 2019-002058
Application 14/544,614
Technology Center 3600
Before STEFAN STAICOVICI, JILL D. HILL, and LEE L. STEPINA,
Administrative Patent Judges.
HILL, 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 1–3, 6–9, 11, and 122. Final Act. 1.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as the inventor, Dr.
Michael Gude. Appeal Br. 1.
2 Claims 4 and 5 were withdrawn from consideration. Final Act. 1, 2.
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BACKGROUND
Independent claims 1, 11, and 12 are pending. Independent claim 1,
reproduced below, illustrates the claimed invention:
1. A system for the encryption and decryption of data
comprising a true random numbers generator of high quality
using physical chance phenomena, at least one data storage
medium for the key or modified key and a symmetrical
encrypting method, characterized in that the key or keys being
generated by the true random numbers generator and recorded
o[n] the data storage medium, and by the information about the
key employed for an unencrypted file I being recorded to
facilitate later re-identification for decryption purposes and that
the key or keys before using them in the symmetrical
encryption process are modified by a known encryption method
with the help of a password.
Appeal Br. 8 (Claims App.).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Boubion US 2010/0316219 A1 Dec. 16, 2010
Spalka US 2012/0036368 A1 Feb. 9, 2012
Altman US 2015/0089245 A1 Mar. 26, 2015
REJECTIONS
I. Claims 1–3, 6–9, and 11 stand rejected under 35 U.S.C.
§ 112(a) as failing to comply with the enablement requirement. Final Act. 2.
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II. Claims 7 and 11 stand rejected under 35 U.S.C. § 112(b) as
indefinite.3 Final Act. 3.
III. Claims 1–3, 6–9, and 11 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Spalka, Altman, and Boubion. Final Act. 4.
IV. Claim 12 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Spalka and Boubion. Final Act. 8.
OPINION
Rejection I – Enablement – Claims 1–3, 6–9, and 11
The Examiner finds that Appellant’s Specification “does not clearly
describe how a true random numbers generator of high quality using
physical chance phenomena works.” Final Act. 3. According to the
Examiner, the Specification discloses “‘[g]enerators . . . using chance
phenomena such as transistor noises, radioactive disintegration, or phase
jitters of a semiconductor circuit’ but does not provide sufficient explanation
on what chance phenomena functions in accordance with the random
number generators to generate random numbers.” Id. The Examiner
contends that Appellant’s Specification does not define “‘physical chance
phenomena’” and does not explain how a random number generator would
“use physical chance phenomena,” and therefore a skilled artisan would not
understands how to make and use the invention. Id.
Appellant argues claims 1–3, 6–9, and 11 as a group. Appeal Br. 2.
We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv) (“When

3 It appears that the Examiner intended to reject both claim 7 and claim 11
as indefinite. We consider the Examiner’s arguments regarding both claims
below.
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multiple claims subject to the same ground of rejection are argued as a group
or subgroup by appellant, the Board may select a single claim from the
group or subgroup and may decide the appeal as to the ground of rejection
with respect to the group or subgroup on the basis of the selected claim
alone.”). Claims 2, 3, 6–9, and 11 stand or fall with claim 1.
Appellant argues that a person skilled in the art of building true
random number generators would have understood how “to build it
depending on physical chance phenomena.” Ans. 4. As evidence, Appellant
provides five documents to support this argument, alleging that each
document “show[s] how to construct a true random number generator based
on physical chance phenomena.” Id.
The Examiner responds that the evidence provided by Appellant is for
“‘physical random phenomena,’” which term “differs from the claimed
“‘physical chance phenomena.’” Ans. 4–5. The Examiner continues that
the term “physical chance phenomena” is not defined in Appellant’s
Specification, which only mentions “chance phenomena” once, and does not
indicate that the two terms should be considered equivalent. Id. at 5. The
Examiner refuses to “make the assumption that the claimed ‘physical chance
phenomena’ is the well-known ‘physical random phenomena.’” Id.
Additionally, the Examiner argues, Appellant’s Specification “does not
clearly describe how a true random numbers generator of high quality using
physical chance phenomena works. Id. According to the Examiner,
although Appellant’s Specification states that “[g]enerators that are
particularly suitable for such a purpose are those using chance phenomena
such as transistor noises, radioactive disintegration, or phase jitters of a
semiconductor circuit,” such a statement “does not provide sufficient
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explanation on what chance phenomena functions in accordance with the
random number generators to generate random numbers.” Id. The
Examiner continues that “[w]ithout these description[s] and explanations,
the specification does not enable one skilled in the art to which it pertains, or
with which it is most nearly connected, to make and/or use the invention.”
Id.
Appellant replies that “[t]he words ‘chance’ and ‘random’ are of
similar meaning. Even in many dictionaries they are used as synonyms. So
everybody skilled in the art will understand ‘physical chance phenomena’
identically with ‘physical random phenomena.’” Reply Br. 2. Appellant
contends that a skilled artisan would have known how to build a true random
numbers generator. Id. Appellant states that he is open to amending the
claims to recite, instead of a “true random numbers generator of high quality
using physical chance phenomena,” any of
- “true random numbers generator”
- “true random numbers generator of high quality”
- “true random numbers generator of high quality using
physical random phenomena”
- “true random numbers generator using chance
phenomena such as transistor noises, radioactive disintegration,
or phase jitters of a semiconductor circuit”
- “true random numbers generator using random
phenomena such as transistor noises, radioactive disintegration,
or phase jitters of a semiconductor circuit”
Id.
Despite the similar meanings of the terms “chance” and “random,” it
remains uncertain whether a skilled artisan would understand that the
claimed “physical chance phenomena” is the same as the “physical random
phenomena” disclosed in the evidentiary publications provided by
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Appellant. For this reason, we sustain the Examiner’s rejection. However,
in the interests of compact prosecution, we note that it is in the best interests
of both the Office and Appellant that the Examiner consider Appellant’s
proposed revisions above and, to the extent possible, communicate an
appropriate revision to Appellant so that the claims can be amended to
overcome the pending enablement rejection. In the alternative, it may be
appropriate for the Examiner to propose an Examiner’s Amendment with
Appellant.
Rejection II – Indefiniteness of Claims 7 and 11
The Examiner finds that “the phrase ‘e.g.’ renders [claim 7] indefinite
because it is unclear whether the limitation(s) following the phrase are part
of the claimed invention,” and that “the phrase ‘optional step’ renders [claim
11] indefinite because it is unclear whether the limitation(s) associated with
the phrase are part of the claimed invention.” Final Act. 4.
Appellant argues that claim 7 has been amended to delete the
abbreviation “e.g.,” and claim 11 “is abandoned by adding a claim 13 using
a sequence without the optional step and deleting the phrase ‘optional step’in
claim 11.”
On June 5, 2017, Appellant submitted a proposed amendment after the
final rejection mailed April 17, 2017. Amendments filed after a final
rejection are discussed in the Manual of Patent Examining Procedure
(“MPEP”) § 2272 (“[A] patent owner cannot, as a matter of right, amend any
finally rejected claims, add new claims after a final rejection, or reinstate
previously canceled claims. For an amendment filed after final rejection and
prior to the appeal brief, a showing under 37 C.F.R. § 1.116(b) is required
and will be evaluated by the examiner for all proposed amendments after
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final rejection except where an amendment merely cancels claims, adopts
examiner’s suggestions, removes issues for appeal, or in some other way
requires only a cursory review by the examiner.”). Because Appellant’s
amendment filed June 5, 2017, was submitted after a final rejection and
included new claim 13, the Examiner did not “enter” the amendment. See
Advisory Action dated June 14, 2017. In response to the request by
Appellant on July 6, 2017, that the Amendment of June 5 be entered, which
included an explanation that new claim 13 was simply a copy of claim 11
with the “optional” step missing, the Examiner again refused to enter the
amendment because additional claims were introduced and, thus, did not
“plac[e] the application in better condition for appeal.” See Advisory Action
dated July 14, 2017.
While Appellant can request entry of an amendment filed after a final
rejection, the Examiner is the one who must “enter” the amendment, and the
Examiner has not “entered” the Amendment of June 5, 2017, for the reasons
explained in the Advisory Actions discussed above. The result of non-entry
of the June 5 Amendment is that claim 7 still includes the “e.g.” language
and claim 11 still includes the “(optional step)” language.
Our reviewing court has stated that an applicant “is in the best
position to resolve the ambiguity in the patent claims, and it is highly
desirable that patent examiners demand that applicants do so in appropriate
circumstances so that the patent can be amended during prosecution rather
than attempting to resolve the ambiguity in litigation.” Halliburton Energy
Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008).
Regarding claim 7, we agree with the Examiner that the term “e.g.”
renders the claims indefinite, because it is unclear whether the limitation(s)
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following the phrase are part of the claimed invention. We sustain the
rejection of claim 7 as indefinite. Appellant has requested deletion of the
term “e.g.” from claim 7 if the term renders the claim indefinite. Appellant
also is “open to any phrase which is allowable.” Id. Thus, Appellant states,
“[i]f the appeal board thinks that the phrase[] ‘e.g.’ (Claim 7) . . . is not
allowable I request to delete ‘e.g’.” Id. Appellant notes, in the introduction
to the Reply Brief, that he is representing himself pro se, and is requesting
assistance from the Examiner in navigating to allowable claims. Reply Br. 1
(“I am and was always open to any suggestions and modifications which
makes the patent application allowable.”). We again note that it is in the
best interests of both the Office and Appellant that the Examiner consider
Appellant’s requested revision and, to the extent possible, communicate an
appropriate revision to Appellant so that the claims can be amended to
overcome the pending indefiniteness rejection. In the alternative, it may be
appropriate for the Examiner to propose an Examiner’s Amendment.
Appellant argues that the phrase “‘Optional Step’ in claim 11 “is fully
clear to any person skilled in the art, and “just means that Claim 11 claims
steps a),b),c),d),e) OR steps a),c),d),e).” Reply Br. 2.
Regarding claim 11, we agree with Appellant that a skilled artisan
would understand its meaning to include “steps a),b),c),d),e) OR steps
a),c),d),e).” Reply Br. 2. For this reason, we do not sustain the
indefiniteness rejection of claim 11.
Rejection III – Obviousness over Spalka, Altman, and Boubion
Regarding claim 1, the Examiner finds that Spalka discloses a system
for encrypting and decrypting data, the system including a random numbers
generator, a data storage medium for a key or modified key, and a
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symmetrical encrypting method, characterized in that: (1) the key is
generated by “the random number generator and recorded on the data
storage medium;” (2) “the information about the key employed for an
unencrypted file [is] recorded to facilitate later re-identification for
decryption purposes;” and (3) “the key [is] modified by a known encryption
method before using [the key] in the symmetrical encryption process.” Final
Act. 5. The Examiner further finds that, although Spalka does not disclose
the random number generator being “a true random number generator of
high quality using physical chance phenomena,” Altman discloses utilizing
“various types of random number generators including true random number
generators.” Final Act. 5 (citing Altman ¶ 17). The Examiner concludes
that it would have been obvious to a skilled artisan to combine the teachings
of Spalka and Altman “to utilize hardware random number generators” in
Spalka’s system. Id. The Examiner finds that Spalka and Altman do not
disclose modifying the key with “a known encryption method with the help
of a password,” but finds that Boubion discloses modifying keys by a known
encryption method with the help of a password. Id. (citing Boubion ¶¶ 80,
101). The Examiner concludes that it would have been obvious to a skilled
artisan to “combine the teachings of Spalka, Altman and Boubion . . . to
encrypt the keys using a password encryption method to provide security to
the keys.” Id. at 5–6.
Appellant argues claims 1–3, 6–9, and 11 as a group. Appeal Br. 2–3.
We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv) (“When
multiple claims subject to the same ground of rejection are argued as a group
or subgroup by appellant, the Board may select a single claim from the
group or subgroup and may decide the appeal as to the ground of rejection
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with respect to the group or subgroup on the basis of the selected claim
alone.”). Claims 2, 3, 6–9, and 11 stand or fall with claim 1.
Appellant argues that claim 1 is patentable over the combination of
Spalka, Altman, and Boubion because (1) “‘modification of the key without
the help of a password’ is not intended to hide the key when [the key] is
transmitted by a non secure communication line,” and (2) “the key is never
decrypted in the present invention.” Appeal Br. 2, 3 (“the breakthrough of
the present invention is . . . to never decrypt the key”). Appellant contends
that Boubion, to the contrary, only discloses encrypting and decrypting keys
that are sent over a non-secure communication line, and the key “must be
decrypted at the receiver.” Id. at 3. Thus, Appellant argues, Boubion’s key
is never used for data encryption/decryption. Id.
The Examiner responds that the features upon which Appellant relies
to distinguish the claims from Boubion i.e., that modifying the key with a
password “is not intended to hide the key when it is transmitted by a non
secure communication line,” and that the “the key is never decrypted in the
present invention” are not recited in Appellant’s claims. Ans. 6 (citing In re
Van Geuns, 988 F.2d 1181 (Fed. Cir. 1993) (“limitations from the
specification are not read into the claims”)). According to the Examiner, the
claims only recite that the keys are “modified by a known encryption
method with the help of a password” before they are used in the encryption
process, and Boubion is relied on for modifying its key by a known
encryption method “with the help of a password,” which phrase is “broadly
and reasonable interpreted” by the Examiner as a “known method of using
passwords for encrypting/decrypting keys.” Id. at 6–7 (citing Boubion ¶ 80
(“the one or more keys are preferably in an encrypted form, and may only be
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decrypted by those with the proper decryption protocol, such as a password
or other decryption mechanism”); ¶ 101 (“A password 116 or other
encryption mechanism is created according to step 101 b to encrypt the key
114 . . . .”).
Appellant replies that a skilled artisan would understand, from the
language of claim 1, that “the password is not used in a legacy encryption
process.” Reply Br. 3. Appellant states that “[i]f this is not enough I
suggest the following limitations/disclaimer: - ‘ . . . help of a password.
This modification is never reversed by any decryption.’” Id. Appellant
agrees to the addition of “[t]his phrase or a[n] allowable similar phrase” to
the independent claims. See id.
Here, the Examiner has the better argument regarding obviousness,
because claim 1 does not recite that the modified key is never reversed by
decryption. We again note that it is in the best interests of both the Office
and Appellant that the Examiner consider Appellant’s requested “never
reversed” revision and, to the extent possible, communicate appropriate
claim language that positively recites the above-noted limitation. Further, it
may expedite prosecution if the Examiner assists Appellant (1) in
determining allowable subject matter, to the extent such subject matter exists
and is determinable by the Examiner, and (2) amending the claims in
accordance with such a determination. It may alternatively be appropriate
for the Examiner to propose an Examiner’s Amendment.
Rejection IV – Claim 12 Obvious over Spalka and Boubion
The Examiner finds that Spalka discloses a method for decrypting
data by: (1) “[r]eading the key from the data storage medium (pp. 0092,
0096-0097);” (2) “[m]odifying the key by a known encryption method (pp.
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0092-0093);” and (3) “[u]sing the modified key and the data to decrypt for a
symmetrical encrypting method (pp. 0055-0059, 0093-0099, 0103, 0122-
0125).” Final Act. 8–9. The Examiner finds that Spalka does not disclose
modifying the key “by a known encryption method with the help of a
password,” but finds that Boubion provides such disclosure. Id. at 9 (citing
Boubion ¶¶ 80, 101). The Examiner concludes that it would have been
obvious to a person of ordinary skill in the art to combine the teachings of
Spalka and Boubion “to encrypt the keys using a password encryption
method to provide security to the keys.” Id.
Appellant makes no argument that claim 12 would be patentable over
Spalka and Boubion if claim 1 is not patentable over Spalka, Altman, and
Boubion. Appeal Br. 3. Thus, for the reasons set forth above, we sustain
Rejection IV and invite the Examiner to communicate with Appellant to
negotiate claim language that overcomes the pending rejections.
CONCLUSION
The Examiner’s rejections are affirmed as to claims 1–10 and 12–19.
More specifically:
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 6–9,
11
112(a) Enablement 1–3, 6–9,
11

7, 11 112(b) Indefiniteness 7 11
1–3, 6–9,
11
103(a) Spalka, Altman,
Boubion
1–3, 6–9,
11

12 103(a) Spalka, Boubion 12
Overall
Outcome
1–3, 6–9,
11, 12

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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