Wil Michiels et al.

Patent Trials and Appeals Board

Jan 31, 2020

14577148 - (D) (P.T.A.B. Jan. 31, 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.
14/577,148 12/19/2014 Wil Michiels 81641874US01 1008
65913 7590 01/31/2020
Intellectual Property and Licensing
NXP B.V.
411 East Plumeria Drive, MS41
SAN JOSE, CA 95134
EXAMINER
POPHAM, JEFFREY D
ART UNIT PAPER NUMBER
2432
NOTIFICATION DATE DELIVERY MODE
01/31/2020 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):
ip.department.us@nxp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WIL MICHIELS and JAN HOOGERBRUGGE
____________

Appeal 2019-000001
Application 14/577,148
Technology Center 2400
____________

Before DENISE M. POTHIER, CATHERINE SHIANG, and
JOYCE CRAIG, Administrative Patent Judges.

SHIANG, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–7 and 29–33, which are all the claims pending and
rejected in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies NXP Semiconductors as the real party in interest.
Appeal Br. 3.

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STATEMENT OF THE CASE
Introduction
The present invention relates to “binding software components that
perform a cryptographic function to a reduced secure element.” Spec. ¶ 1.
Various exemplary embodiments relate to a non-
transitory machine-readable storage medium encoded with
instructions for a keyed cryptographic operation having a first
and second portion for execution by a cryptographic system
mapping an input message to an output message, including:
instructions for outputting first cryptographic data from a first
portion the cryptographic operation to a secure hardware device
implementing a secure function on the data; instructions for
receiving output data from the secure hardware device;
instructions for implementing an inverse of the secure function
on the output data; and instructions for performing a second
portion of the cryptographic operation on the inverted output
data, wherein the instructions for implementing an inverse of
the secure function on the output data are securely merged with
the instructions for performing the second portion of the
cryptographic operation on the inverted output data so that the
inverted output is not accessible to an attacker.
Spec. ¶ 12. Claims 1 and 29 are exemplary:
1. A non-transitory machine-readable storage medium
encoded with instructions for a keyed cryptographic operation
having first and second portions for execution by a
cryptographic system mapping an input message to an output
message, comprising:
instructions for outputting first cryptographic data from
the first portion of the cryptographic operation to a secure
hardware device implementing a secure function on the data;
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instructions for receiving output data from the secure
hardware device;
instructions for implementing an inverse of the secure
function on the output data to produce inverted output data;
instructions for performing a second portion of the
cryptographic operation on the inverted output data; and
instructions for outputting second cryptographic data
from the first portion of the cryptographic operation directly to
the second portion of the cryptographic operation, bypassing
the secure hardware device,
wherein the instructions for implementing an inverse of
the secure function on the output data are securely merged with
the instructions for performing the second portion of the
cryptographic operation on the inverted output data so that the
inverted output data is not accessible to an attacker.

29. A white-box cryptographic system for performing a
keyed cryptographic operation mapping an input message to an
output message, the system comprising:
a processor configured to implement a secure hardware
device, a secure function implemented in the secure hardware
device, wherein,
the system is configured to output first cryptographic
data from a first portion of the keyed cryptographic operation to
the secure hardware device,
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the secure hardware device configured to implement the
secure function on the first cryptographic data to produce
output data,
the system configured to implement an inverse of the
secure function on the output data to produce inverted output
data,
the system configured to implement a second portion of
the cryptographic operation on the inverted output data, and
the system configured to output second cryptographic
data from the first portion of the cryptographic operation
directly to the second portion of the cryptographic operation,
the second cryptographic data bypassing the secure hardware
device,
wherein the implementation of the inverse of the secure
function is securely merged with the implementation of the
second portion of the cryptographic operation on the inverted
output data so that the inverted output data is not accessible to
an attacker.

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References and Rejections2
The Examiner rejects claims 1–7 and 29–33 under 35 U.S.C. § 112(b)
as being indefinite for failing to particularly point out and distinctly claim
the subject matter that the inventor regards as the invention. Final Act. 20–
25.
The Examiner rejects claims 29–33 under 35 U.S.C. § 112(a) for lack
of enablement. Final Act. 22–23.
The Examiner rejects claims 1–6 and 29–32 under 35 U.S.C. § 103 as
being obvious over the collective teachings of Ciet (US 2009/0252327 A1,
published October 8, 2009) and Michiels (US 2012/0093313 A1, published
April 19, 2012). Final Act. 26–33.
The Examiner rejects claims 7 and 33 under 35 U.S.C. § 103 as being
obvious over the collective teachings of Ciet, Michiels, and ARM
(TrustZone® System Security by ARM, The Architecture for the Digital
World®, pp. 1–6 (November 21, 2013),
http://web.archive.org/web/20131121212920/http://www.arm.com/products/
processors/technologies/trustzone/index.php (last viewed January 23,
2020)). Final Act. 33–34.

2 Throughout this opinion, we refer to the (1) Final Office Action dated
March 12, 2018 (“Final Act.”); (2) Appeal Brief dated June 4, 2018
(“Appeal Br.”); (3) Examiner’s Answer dated September 10, 2018 (“Ans.”);
and (4) Reply Brief dated October 1, 2018 (“Reply Br.”).
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ANALYSIS
35 U.S.C. § 112(b)

The Examiner determines: “Claims 1–7 and 29–33 are rejected under
35 U.S.C. 112(a) and 112(b) . . . as being indefinite for failing to particularly
point out and distinctly claim the subject matter which the inventor or a joint
inventor, or for pre-AIA the applicant regards as the invention” with respect
to various claim elements (discussed below). Final Act. 20–25.
While the Examiner refers to 35 U.S.C. § 112(a), indefiniteness
rejections are governed by 35 U.S.C. § 112(b). Therefore, we assume the
reference to 35 U.S.C. § 112(a) is a typographical error.

I

The Examiner rejects claims 1–7 and 29–33 under 35 U.S.C. § 112(b)
as being indefinite with respect to the claimed “inverse” of the secure
function. See Final Act. 20–22. In particular, the Examiner determines:
Applicant has clearly and explicitly stated that
multiplication is not an inverse of division. However, one of
ordinary skill in the art would understand that multiplication is
the inverse of division. Therefore, Applicant appears to be
arguing that the claimed inverse is somehow different from the
normal definition of inverse. The claim is indefinite, since the
claim cannot be construed using the normal definition of
inverse (based on Applicant’s allegation that the claimed
inverse operation is different from the normal definition of
inverse, in particular, alleging that “‘multiplication’ is not an
inverse of the described ‘division’”, which is the opposite of
how one of ordinary skill in the art would understand inverses
and inverse operations), but must be construed using the normal
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definition, since the application as originally filed does not
provide any specific definition of inverse or inverse function
that is different than the ordinary definition. These 2
interpretations of inverse are incompatible since Applicant has
explicitly alleged that multiplication is not the inverse of
division and it appears as though the interpretation of “inverse”
has been irreparably changed based on Applicant’s remarks that
inverse functions are not inverse functions. Applicant must, in
response to this rejection, provide basis for Applicant’s
abnormal definition of inverse (e.g., that multiplication is not
the inverse of division) in the application as originally filed.
Final Act. 21–22 (emphases omitted); see also Ans. 5–11.
We disagree with the Examiner. “The specification shall conclude
with one or more claims particularly pointing out and distinctly claiming the
subject matter which the inventor or a joint inventor regards as
the invention.” 35 U.S.C. § 112(b).
We apply the indefiniteness test approved by In re Packard, 751 F.3d
1307 (Fed. Cir. 2014) (per curiam): “[a] claim is indefinite when it contains
words or phrases whose meaning is unclear,” and “claims are required to be
cast in clear–as opposed to ambiguous, vague, indefinite–terms.” See
Packard, 751 F.3d at 1310, 1313; Ex parte McAward, Appeal No. 2015-
006416 (PTAB Aug. 25, 2017) (precedential) at *8–11 (explaining because
of different approaches to indefiniteness before the PTAB and the courts, the
PTAB continues to follow Packard after the Supreme Court’s Nautilus, Inc.
v. Biosig Instruments, Inc., 572 U.S. 898 (2014) decision).
[W]hen the USPTO has initially issued a well-grounded
rejection that identifies ways in which language in a claim is
ambiguous, vague, incoherent, opaque, or otherwise unclear in
describing and defining the claimed invention, and thereafter
the applicant fails to provide a satisfactory response, the
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USPTO can properly reject the claim as failing to meet the
statutory requirements of § 112(b).
Packard, 751 F.3d at 1311.
We have reviewed the record, and the record fails to show the
Appellant has argued multiplication is not the inverse of division. Nor has
Appellant argued the claimed “inverse” requires a special definition.
Further, Appellant clarifies
the appellant argued that “Ciet et al. does not show or suggest
the claimed “inverse of the secure function” and the claimed
“perform a second portion of the cryptographic operation on the
inverted output data.” The examiner has taken that to mean the
appellant has argued a different definition of “inverse”. The
appellant did not provide any arguments that require a
definition different from the normal definition of inverse.
Appeal Br. 7.
In short, the Examiner has not shown the meaning of “inverse” in the
claims is unclear to one skilled in the art. See Packard, 751 F.3d at 1310.
Because the Examiner has not provided sufficient basis for the
rejection, we reverse the Examiner’s rejection of claims 1–7 and 29–33
under 35 U.S.C. § 112(b).

II

The Examiner determines:
Claim 29 states “wherein the implementation of the
inverse of the secure function is securely merged with the
implementation of the second portion of the cryptographic
operation on the inverted output data so that the inverted output
data is not accessible to an attacker”. However, the claim
includes limitations reading “the system configured to
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implement an inverse of the secure function on the output data
to produce inverted output data” and “the system configured to
implement a second portion of the cryptographic operation on
the inverted output data”. Therefore, the claimed system is
already configured to implement both the inverse and the
second portion and, thus, both are already merged into a single
system. It is unclear just what effect the final limitation has on
the scope of the claim, since it appears to merely be directed to
something that already inherently occurs when the same system
performs both steps. Claims 30-33 are dependent from claim 29
and are rejected for the same reasons.
Final Act. 23; see also Ans. 16–17.
It is well established that during examination, claims are given their
broadest reasonable interpretation consistent with the specification and
should be read in light of the specification as it would be interpreted by one
of ordinary skill in the art, but without importing limitations from the
specification. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004) (citations omitted); SuperGuide Corp. v. DirecTV Enters.,
Inc., 358 F.3d 870, 875 (Fed. Cir. 2004).
Contrary to the Examiner’s interpretation, the limitations “the system
configured to implement an inverse of the secure function on the output data
to produce inverted output data” and “the system configured to implement a
second portion of the cryptographic operation on the inverted output data”
do not require the instructions to be securely merged. Therefore, the
limitation “wherein the instructions for implementing an inverse of the
secure function on the output data are securely merged with the instructions
for performing the second portion of the cryptographic operation on the
inverted output data so that the inverted output data is not accessible to an
attacker” further limits the claims by reciting the “securely merged”
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language. In short, the Examiner has not shown one skilled in the art would
understand that the wherein clause “contains words or phrases whose
meaning is unclear.” Packard, 751 F.3d at 1310.
Because the Examiner has not provided sufficient basis for the
rejection, we reverse the Examiner’s rejection of claims 29–33 under
35 U.S.C. § 112(b).

III

The Examiner determines:
Claim 29 is directed to a system comprising a processor
configured to implement a secure hardware device. The claim
then goes on to describe functionality of the system, such as
“the system configured implement an inverse of the secure
function on the output data to produce inverted output data” in
response to “the secure hardware device configured to
implement the secure function on the first cryptographic data to
produce output data”. However, the only component of the
system is, itself, the processor that implements the secure
hardware device. . . . . Claims 29-33 are additionally rejected
under 35 U.S.C. 112(b), since as the claim stands, the processor
must be both trusted and untrusted, is the only component
within the system, and must, therefore, perform all functions of
the claim, but cannot perform all functions of the claim.
Final Act. 22–23; see also Ans. 12–16.
We disagree with the Examiner’s interpretation of the claims.
Because the claims recite “[a] white-box cryptographic system for
performing a keyed cryptographic operation mapping an input message to an
output message, the system comprising . . .” (emphasis added), the claims
are non-limiting and open-ended. See Gillette Co. v. Energizer Holdings,
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Inc., 405 F.3d 1367, 1371 (Fed. Cir. 2005) (“claim 1 uses the ‘open’ claim
term[] ‘comprising’ . . . in addition to other language, to encompass subject
matter beyond [the explicitly recited limitations]”). Therefore, the system
includes—but is not limited to—the claimed processor, and the claimed
processor is not “the only component within the system,” as the Examiner
asserts (Final Act. 23). Nor has the Examiner persuasively explained why
the processor “must be both trusted and untrusted . . . [and] perform all
functions of the claim, but cannot perform all functions of the claim,” as the
Examiner asserts (Final Act. 23). In short, the Examiner has not shown the
meaning of the claimed “processor” is unclear to one skilled in the art. See
Packard, 751 F.3d at 1310.
Because the Examiner has not provided sufficient basis for the
rejection, we reverse the Examiner’s rejection of claims 29–33 under
35 U.S.C. § 112(b).

IV

The Examiner determines:
Claim 1 is directed to a storage medium having
“instructions for” performing various functions. However,
Applicant has persistently argued that these instructions must
necessarily be executed and their corresponding functions
performed. For example, in the response dated 4/10/2017,
Applicant has alleged that “According to claim 1, an inverse of
the secure function is implemented” (page 12), “A second
portion of the cryptographic operation is performed” (page 12),
“outputting second cryptographic data . . .” (page 12 and 14).
Therefore, Applicant believes that claim 1 requires at least
implementing an inverse of the secure function, a second
portion of the cryptographic operation, and outputting of the
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second cryptographic data. However, the claim merely states
that instructions for such are provided on a medium. It is
unclear how this claimed non-transitory machine-readable
storage medium may possibly perform such functions.
Therefore, while claim 1 states that only instructions are
provided, Applicant has alleged that the functions performed by
the instructions must actually be performed. Therefore, one
cannot ascertain the scope of the claim, since it is unclear
whether the medium requires instructions stored thereon or is
actually required to perform the inverse function, second
portion, and outputting of specific data. Claim 29 has a similar
issue and is rejected for the same reasons. All dependent claims
are also rejected for the same reasons.
Final Act. 24 (original emphases omitted); see also Ans. 17–18.
First, the Examiner misreads claim 29 and the associated dependent
claims, because such claims do not recite “a storage medium having
‘instructions for’ performing various functions,” as the Examiner asserts
(Final Act. 24).
Second, each of claim 1 and associated dependent claims recites “[a]
non-transitory machine-readable storage medium encoded with instructions
for a keyed cryptographic operation having first and second portions for
execution by a cryptographic system mapping an input message to an output
message, comprising . . . .” A “storage medium encoded with instructions”
for performing various processes is a well-known claim form, and one
skilled in the art would know how to interpret such claims. See, e.g., Finjan,
Inc. v. Secure Computing Corp., 626 F.3d 1197, 1204–05 (Fed. Cir. 2010)
(“the claims at issue are . . . ‘storage medium’ claims, which do not require
the performance of any method steps”; “The storage medium claims . . .
cover capability. Claim 65 . . . recites a ‘computer-readable storage medium
storing program code for causing a server that serves as a gateway to a client
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to perform the steps of: receiving . . .; comparing . . .; and preventing
execution . . . .’ This language does not require that the program code be
‘active,’ only that it be written ‘for causing’ a server . . . to perform certain
steps”). In short, the Examiner has not shown the meaning of a “storage
medium encoded with instructions” for performing various processes is
unclear to one skilled in the art. See Packard, 751 F.3d at 1310.
Because the Examiner has not provided sufficient basis for the
rejection, we reverse the Examiner’s rejection of claims 1–7 and 29–32
under 35 U.S.C. § 112(b).

V

The Examiner determines:
Claim 1 includes “instructions for implementing an
inverse of the secure function on the output data to produce
inverted output data”. However, the inverse of a secure function
will rarely result in inverted output data. Therefore, not every
implementation of an inverse of a secure function will result in
inverted output data. The output data may be “4”, arrived at by
adding 2 and 2. The inverse of addition being subtraction, the
inverse operation would subtract some data from 4, either 2 or
otherwise. However, assuming that 2 is subtracted from 4, the
result is 2, which is most certainly not the inverse of 4.
Therefore, the claim is indefinite, since implementation of the
inverse of a secure function will not always result in inverted
output data. Claim 29 has a similar issue and is rejected for the
same reasons. All dependent claims are also rejected for the
same reasons.
Ans. 24–25; see also Ans. 19–20.
We disagree with the Examiner, as one skilled in the art would
understand the meaning of “instructions for implementing an inverse of the
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secure function on the output data to produce inverted output data.”
Specifically, one skilled in the art would understand the claimed “inverted
output data” are produced from “implementing an inverse of the secure
function on the output data,” and the results of that implementation are the
claimed “inverted output data.” As a result, the Examiner has not shown the
claimed “instructions for implementing an inverse of the secure function on
the output data to produce inverted output data” limitation “contains words
or phrases whose meaning is unclear” to one skilled in the art. Packard, 751
F.3d at 1310.
Because the Examiner has not provided sufficient basis for the
rejection, we reverse the Examiner’s rejection of claims 1–7 and 29–32
under 35 U.S.C. § 112(b).

VI

The Examiner determines:
Claim 29 attempts to reference “the output data”.
However, it is unclear which output data is being referenced,
since claim 29 includes at least “output first cryptographic data”
and “implement the secure function on the first cryptographic
data to produce output data”. It is entirely unclear which of
these is being referenced later on with respect to “the output
data” (and also for anything based thereon, such as “the
inverted output data” which, in addition to the issue described
above with respect to claim 1, is also indefinite since it is
unclear which output data is being referenced). Claims 30-33,
dependent from claim 29 are rejected for the same reasons.
Final Act. 25; see also Ans. 20–21.
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We disagree. Claim 29 recites “the secure hardware device
configured to implement the secure function on the first cryptographic data
to produce output data” and “the system configured to implement an inverse
of the secure function on the output data to produce inverted output data”
(emphases added). Therefore, claim 29 provides the requisite antecedent
basis for the claimed “output data” and one skilled in the art would
understand how to interpret that claim limitation.
Further, claim 29 recites “the system configured to implement an
inverse of the secure function on the output data to produce inverted output
data” and “the system configured to implement a second portion of the
cryptographic operation on the inverted output data” (emphases added).
Therefore, the claim provides the requisite antecedent basis for the claimed
“inverted output data” and one skilled in the art would understand how to
interpret that claim limitation. As a result, the Examiner has not shown the
meanings of the “output data” and the “inverted output data” are unclear to
one skilled in the art. See Packard, 751 F.3d at 1310.
Because the Examiner has not shown sufficient basis for the rejection,
we reverse the Examiner’s rejection of claims 29–33 under 35 U.S.C.
§ 112(b).

35 U.S.C. § 112(a)

The Examiner determines:
Claim 29 is directed to a system comprising a processor
configured to implement a secure hardware device. The claim
then goes on to describe functionality of the system, such as
“the system configured implement an inverse of the secure
function on the output data to produce inverted output data” in
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response to “the secure hardware device configured to
implement the secure function on the first cryptographic data to
produce output data”. However, the only component of the
system is, itself, the processor that implements the secure
hardware device. Thus, this appears to mean that the processor
sends and receives data to and from itself (e.g., between the
portions of the claim that are performed by the secure hardware
device, which is implemented on/in the processor and the rest
of the claim, which is performed by the system which solely
includes this processor implementing the secure hardware
device), which does not make sense in the realm of secure
computing, where one portion of the system is intended to be
trusted and the other is not, since the same processor would be
both trusted and untrusted, which does not appear to be
possible (there is certainly no description of such a trusted and
un-trusted processor in the application). It appears as though the
claim is missing an essential component, i.e., the component(s)
that sends and receives data to/from the secure hardware device.
Thus, claims 29-33 are rejected under 35 U.S.C. 112(a) or 35
U.S.C. 112 (pre-AIA), first paragraph, as based on a disclosure
which is not enabling. See In re Mayhew, 527 F.2d 1229, 188
USPQ 356 (CCPA 1976).
Final Act. 22–23.
We disagree. “The specification shall contain a written description of
the invention, and of the manner and process of making and using it, in such
full, clear, concise, and exact terms as to enable any person skilled in the art
to which it pertains, or with which it is most nearly connected, to make and
use the same.” 35 U.S.C. § 112(b).
The test of enablement is whether without undue experimentation, one
skilled in the art could make or use the invention from the disclosures
coupled with information known in the art. See In re Antor Media Corp.,
689 F.3d 1282, 1289 (Fed. Cir. 2012); U.S. v. Telectronics, Inc., 857 F.2d
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778, 785 (Fed. Cir. 1988) (citation omitted). In Mayhew, the Federal Circuit
determines:
Although appellant now strenuously argues that the cooling
bath is optional, his specification not only fails to support this
contention, but leads us, as it did the examiner and board, to
believe that both it and its location are essential. We therefore
conclude that claims which fail to recite the use of a cooling
zone, specially located, are not supported by an enabling
disclosure.

In re Mayhew, 527 F.2d 1229, 1233.
Because the claims recite “[a] white-box cryptographic system for
performing a keyed cryptographic operation mapping an input message to an
output message, the system comprising . . .” (emphasis added), the system
includes—but is not limited to—the claimed processor. Therefore, the
claimed processor is not “the only component within the system,” and is not
required to be “both trusted and untrusted” (Final Act. 23). Unlike the
situation in Mayhew, the Examiner has not provided sufficient evidence
from the Specification to show the claims lack essential elements. As a
result, the Examiner has not shown “the claim is missing an essential
component” (Final Act. 22), and, therefore, has not provided sufficient basis
for the enablement rejection. See Mayhew, 527 F.2d at 1233.
Accordingly, we reverse the Examiner’s rejection of claims 29–33
under 35 U.S.C. § 112(a).

Obviousness
On this record, the Examiner did not err in rejecting claim 1.
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We disagree with Appellant’s arguments. To the extent consistent
with our analysis below, we adopt the Examiner’s findings and conclusions
in (i) the action from which this appeal is taken and (ii) the Answer.3

I

Appellant contends:
Ciet et al. does not show or suggest the claim 1
limitations “instructions for receiving output data from the
secure hardware device” and “instructions for implementing an
inverse of the secure function on the output data to produce
inverted output data.” The inverse of Ciet et al. is of the “secret
value”, see for example, Ciet et al. at paragraph 0025. Ciet et al.
teaches at paragraph 0021 that the secret is a random value.
Whereas, the present invention, as claimed in claim 1, includes
instructions for implementing an inverse of the secure function
on output data to produce inverted output data. Also, the output
data is claimed to be received from the secure hardware device.
Ciet et al. does not disclose where the secret originates, but says
at paragraph 0021 that it is a “secure scalar value”, not a secure
function as in, for example, claim 1.
Appeal Br. 10.
Appellant has not persuaded us of error, because Appellant’s
arguments are not directed to the Examiner’s specific findings. As pointed
out by the Examiner,
Appellant is making allegations regarding an inverted secret
value, which is not an inverse function. The rejection made
clear that the instructions for implementing an inverse of the

3 To the extent Appellant advances new arguments in the Reply Brief
without showing good cause, Appellant has waived such arguments. See
37 C.F.R. § 41.41(b)(2).

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secure function on the output data is met by “performing the
inverse of any operation performed in function P within
function N in the white box, such as RSA signature
verification” [in Ciet.] The rejection did not state that the
inverse of the secure function was an inverted secret value.

Ans. 22.
Instructions for implementing an inverse of the secure function
on the output data to produce inverted output data (Abstract;
Paragraphs 15- 25 and 29-37; performing the inverse of any
operation performed in function P within function N in the
white box, such as RSA signature verification, in step 4 of the
reference cited in paragraph 31 of Ciet, etc., as examples).

Final Act. 27.

II

Appellant contends:
Ciet et al. does not show or suggest the claim limitation
“wherein the instructions for implementing an inverse of the
secure function on the output data are securely merged with the
instructions for performing the second portion of the
cryptographic operation on the inverted output data so that the
inverted output data is not accessible to an attacker”. As
discussed above, Ciet et al. does not disclose “inverse of the
secure function”. Ciet et al. only shows the inverse of a scalar
value (paragraphs 0021 and 0025). Also, Ciet el al. does not say
that the instructions for implementing an inverse of the secure
function are securely merged with the instructions for
performing the second portion. Ciet el al. only discloses
implementations of the functions P, M, and N, but does not
disclose a relationship between the functions such as the
claimed instructions for implementing an inverse of the secure
function on the output data being securely merged with the
instructions for performing the second portion of the
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cryptographic operation on the inverted output data so that the
inverted output data is not accessible to an attacker.
Appeal Br. 10–11; see also Reply Br. 8.
In response to Appellant’s arguments, the Examiner further explains:
The rejection of claim 1 made clear that the final
limitation was met by Ciet’s disclosure of “function N performs
both the inverse of a function within function P as well as the
additional functions described therein, such as in computing the
exponentiation using the now available m’ as well as the
signature verification, for example”.

It is noted that the claimed “instructions for performing a
second portion of the cryptographic operation” that is merged
with the instructions for implementing an inverse of the secure
function is quite broad. Any operation whatsoever could meet
this “second portion” since the claim does not define what is
within this second portion. Any single addition, multiplication,
XOR, NOR, OR, AND, move, subtraction, division, reception,
or any other operation could be within this claimed second
portion.

As the rejection made clear one example of what is
performed in function N() that shows that function N() includes
both an inverse of a secure function and a second portion of the
cryptographic operation (e.g., signature verification and
computing an exponentiation using m’) and Appellant has
provided no argument there against, it is clear that Ciet
discloses the merging of the instructions.

Additionally, Ciet makes clear that both M() (paragraph
18) and N() (paragraph 20) could be executed in a white box,
while P() could be executed in a black box (paragraph 19).
Thus, M() and N() are securely merged within the white box as
well. This shows that the first portion (e.g., at least one
operation performed in M( )) is associated with the second
portion (e.g., at least one operation performed in N( )).

Appeal 2019-000001
Application 14/577,148

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Ans. 25–26.
Appellant fails to persuasively respond to such explanation and,
therefore, fails to show Examiner error. See In re Baxter Travenol Labs.,
952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this court [or
this Board] to examine the claims in greater detail than argued by an
appellant, looking for [patentable] distinctions over the prior art.”).
Further, Appellant’s attorney arguments about Ciet and Michiels
(Appeal Br. 11; Reply Br. 8) are unpersuasive, as Appellant does not provide
sufficient objective evidence to support such arguments. See In re Geisler,
116 F.3d 1465, 1470 (Fed. Cir. 1997) (“attorney argument [is] not the kind
of factual evidence that is required to rebut a prima facie case of
obviousness”); Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977)
(“Argument of counsel cannot take the place of evidence lacking in the
record.”).

III

Appellant argues:
Michiels does not disclose either a secure entity or a secure
hardware device as claimed. Michiels generally discloses the
use of lookup tables in the computation of a cryptography
algorithm in a white box implementation. The white box
implementation of Michiels does not disclose the use of a
secure entity or a secure hardware device as claimed.
Appeal Br. 11.
Appellant has not persuaded us of error, because Appellant’s
arguments are not directed to the Examiner’s specific findings. As pointed
out by the Examiner (Ans. 26), because the Examiner cites Ciet for teaching
Appeal 2019-000001
Application 14/577,148

22
the claimed “secure hardware device,” Michiels does not need to teach that
element.
Further, Appellant’s arguments about “a secure entity” (App. Br. 11)
are not commensurate with the scope of the claims, as the claims do not
recite that term.

Because Appellant has not persuaded us the Examiner erred, we
sustain the Examiner’s obviousness rejection of independent claim 1.
Appellant argues “independent claim 29 . . . [is] patentable for at least
the same reasons.” Appeal Br. 12. The Examiner applies the same findings
and conclusions (discussed above) to claim 29. See Final Act. 30.
Therefore, for similar reasons, we sustain the Examiner’s obviousness
rejection of independent claim 29.
We also sustain the Examiner’s obviousness rejection of dependent
claims 2–7 and 30–33, as Appellant does not advance separate substantive
arguments about those claims.

CONCLUSION
We reverse the Examiner’s decision rejecting claims 1–7 and 29–33
under 35 U.S.C. § 112(b).
We reverse the Examiner’s decision rejecting claims 29–33 under
35 U.S.C. § 112(a).
We affirm the Examiner’s decision rejecting claims 1–7 and 29–33
under 35 U.S.C. § 103.
Appeal 2019-000001
Application 14/577,148

23
Because we affirm at least one ground of rejection with respect to
each claim on appeal, we affirm the Examiner’s decision rejecting claims 1–
7 and 29–33. See 37 C.F.R. § 41.50(a)(1).

DECISION SUMMARY

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–7, 29–33 112(b) Indefiniteness 1–7, 29–33
29–33 112(a) Enablement 29–33
1–6, 29–32 103 Ciet, Michiels 1–6, 29–32
7, 33 103 Ciet, Michiels,
ARM
7, 33
Overall
Outcome
1–7, 29–33

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)(iv). See 37
C.F.R. § 41.50(f).

AFFIRMED