Debout, Vincent et al.Download PDFPatent Trials and Appeals BoardMay 20, 20202019002238 (P.T.A.B. May. 20, 2020) Copy Citation 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. 13/483,669 05/30/2012 Vincent Debout 20057-1594 3513 69569 7590 05/20/2020 NORTH WEBER & BAUGH LLP 3260 Hillview Avenue, 1st Floor Pitman PALO ALTO, CA 94304 EXAMINER AHMED, ZUBAIR ART UNIT PAPER NUMBER 2132 NOTIFICATION DATE DELIVERY MODE 05/20/2020 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): docket1@northweber.com mnorth@northweber.com mnorth@northweber.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte VINCENT DEBOUT, FRANK LHERMET, YANN LOISEL, and ALAIN-CHRISTOPHE ROLLET ____________ Appeal 2019-002238 Application 13/483,669 Technology Center 2100 ____________ Before JAMES R. HUGHES, ERIC S. FRAHM, and JOHN A. EVANS, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1, 2, 4, 6–9, 12, 13, 15, 16, 18–21, 23, and 25–27, which are all the claims pending and rejected in the application. Claims 3, 5, 10, 11, 14, 17, 22, and 24 have been canceled (see Appeal Br. 5; see also Appeal Br. 20, 22–24, 26 (Claims Appendix)). We have jurisdiction under 35 U.S.C. § 6(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. “The word ‘applicant’ when used in this title refers to the inventor or all of the joint inventors, or to the person applying for a patent as provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Maxim Integrated Products (Appeal Br. 3). Appeal 2019-002238 Application 13/483,669 2 We REVERSE. STATEMENT OF THE CASE Introduction Appellant’s invention, entitled “Data Interleaving Scheme for an External Memory of a Secure Microcontroller” (Title), “relates generally to a secure microcontroller using an external memory, and more particularly to methods, systems and devices for performing integrity check by interleaving payload data and integrity control data in an external memory interfaced with a secure microcontroller” (Spec. ¶ 2). Independent claim 1 is exemplary, and is reproduced below with emphases, formatting, and bracketed material added to disputed portions of the claim: 1. A method for securely storing data words and integrity words within an external memory of a microcontroller, the method comprising: receiving a plurality of data words and a plurality of logic addresses; associating each data word, within the plurality of data words, with a corresponding logic address within the plurality of logic addresses; [A] generating a plurality of integrity words from the plurality of data words based on an integrity check method, [A1] each integrity word comprising a plurality of consecutive integrity sub-words of equal length, [A2] each integrity sub-word corresponding to a data word within the plurality of data words, [A3] each integrity word and the data words corresponding to the consecutive integrity sub- words within the integrity word have the same length; translating the plurality of logic addresses to a plurality of first physical addresses within the external memory and a plurality of second physical addresses within the external memory based on a data map, wherein the plurality of first Appeal 2019-002238 Application 13/483,669 3 physical addresses and the plurality of second physical addresses are interleaved; encrypting the plurality of data words to a plurality of encrypted data words; storing the plurality of encrypted data words in the plurality of first physical addresses in the external memory; and storing at least one complete integrity word, within the plurality of integrity words, with its integrity sub-words derived from successive data words and combined in an integrity cache in the microcontroller prior to storing the complete integrity word in the plurality of second physical addresses in the external memory, wherein a least significant integrity sub-word is related to a first data word among the successive data words and a most significant integrity sub-word is related to a last data word among the successive data words, wherein the integrity cache is different from a CPU cache. Appeal Br. 19–20, Claims Appendix (emphases, formatting, bracketed material added). Remaining independent claims 9, 13, and 18 recite limitations commensurate in scope with limitation A, including limitation A3 regarding the relation between word lengths of the integrity and data words. Examiner’s Rejections (1) Claims 1, 2, 4, 6–9, 12, 13, 15, 16, 18, 19, 21, 23, and 25–27 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Asano et al. (US 2010/0235633 A1; published Sept. 16, 2010) (hereinafter, “Asano”), Arntzen et al. (US 2008/0301403 A1; published Dec. 4, 2008), Goldschmidt et al. (US 2006/0074960 A1; published April 6, 2006) (hereinafter, “Goldschmidt”), and Hall (US 2006/0080553 A1; published April 13, 2006). Final Act. 4–22. (2) Claim 20 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Asano, Arntzen, Goldschmidt, Hall, and Muchsel et al. Appeal 2019-002238 Application 13/483,669 4 (US 2010/0106954 A1; published April 29, 2010) (hereinafter, “Muchsel”). Final Act. 22–23. Appellant’s Contentions With regard to the obviousness rejection of claims 1, 2, 4, 6–9, 12, 13, 15, 16, 18, 19, 21, 23, and 25–27, Appellant primarily argues the merits of independent claim 1 (see Appeal Br. 14–17; Reply Br. 5–7), and makes similar arguments as to the patentability of remaining independent claims 9, 13, and 18 (see Appeal Br. 17; Reply Br. 7), as well as dependent claim 20 (see Appeal Br. 14, 18; Reply Br. 5, 8). As to independent claim 1, Appellant contends (Appeal Br. 15–17; Reply Br. 5–7) that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a), because Goldschmidt fails to teach or suggest limitation A, as recited in claim 1. Appellant contends the Examiner fails to provide articulated reasoning to support the legal conclusion of obviousness (see Appeal Br. 15; Reply 5). Principal Issue on Appeal Based on Appellant’s arguments in the Appeal Brief (Appeal Br. 14– 18) and the Reply Brief (Reply Br. 5–8), the following issue is presented on appeal: Did the Examiner err in rejecting claims 1, 2, 4, 6–9, 12, 13, 15, 16, 18, 19, 21, 23, and 25–27 as being unpatentable over the base combination of Asano, Arntzen, Goldschmidt, and Hall, because Goldschmidt fails to teach or suggest limitation A, including limitation A3 (“each integrity word and the data words corresponding to the consecutive integrity sub-words within the integrity word have the same length”), as recited in claim 1, and commensurately recited in claims 9, 13, and 18? Appeal 2019-002238 Application 13/483,669 5 ANALYSIS We have reviewed the Examiner’s rejections (Final Act. 4–23) in light of Appellant’s contentions (Appeal Br. 14–18; Reply Br. 5–8), and evidence of record. We have also considered the Examiner’s (i) Advisory Action mailed June 26, 2018, and (ii) response to Appellant’s arguments in the Appeal Brief (Ans. 4–8). With regard to claims 1, 9, 13, and 18, we concur with Appellant’s contentions (see Appeal Br. 15–17; Reply Br. 5–7) that the Examiner erred in finding the cited portions of Goldschmidt teach or suggest the integrity word and the data words having the same length recited in limitation A (see e.g., claim 1, limitation A). The USPTO “must examine the relevant data and articulate a satisfactory explanation for its action including a rational connection between the facts found and the choice made.” Motor Vehicle Mfrs. Ass’n v. State Farm Mut. Auto. Ins. Co., 463 U.S. 29, 43 (1983) (internal quotation marks and citation omitted); see Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309, 1322 (Fed. Cir. 2016) (stating that, as an administrative agency, the PTAB “must articulate logical and rational reasons for [its] decisions” (internal quotation marks and citation omitted)). We will not resort to speculation or assumptions to cure the deficiencies in the Examiner’s fact finding. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). The Examiner cites Goldschmidt’s Figure 6 as teaching limitations A and A1–A3 recited in claim 1 (see Final Act. 8), and relies on paragraphs 25 and 26 of Goldschmidt as evidence supporting this finding (see Final Act. 10; see also Ans. 6). Then in the Advisory Action the Examiner states that: “Referring to FIG. 3 of Goldschmidt, it is respectfully submitted that one of Appeal 2019-002238 Application 13/483,669 6 ordinary skill may choose to append the integrity sub-words (8-byte DIF 306a through 306n) at the end of the 4096 bytes input data stream constituted by the data blocks 302a through 302n to meet the claim requirement” (Advisory Act. 2). In response to Appellant’s arguments, the Examiner determines Goldschmidt teaches an integrity field of 512 bytes (see Ans. 5–6), and generates an 8 byte data integrity field for each 512 byte block of data (see Ans. 6–7), but does not adequately explain how Goldschmidt supports the Examiner’s finding. Specifically, the Examiner reasons: Clearly, when the data integrity engine 300 of Goldschmidt applies a data integrity function to 64 (sixty four) blocks of input data stream 302, the resulting integrity field has a size of 64 x 8 = 512 bytes, as already explained above, which is the same as the size of a data block. Further, one of ordinary skill may choose to append the 64 8-byte integrity sub-fields at the end of the 64 blocks of input data stream 302 to arrive at the claimed invention. Ans. 7 (emphases added). Then, “[t]he Examiner respectfully submits that it would be obvious to one of ordinary skill in the art to carry out the calculation of the integrity field for 64 (sixty four) data blocks to derive a total size of the integrity field to be 64 x 8 = 512 bytes which is the same as the size of a data block as required by all independent claims” (Ans. 7–8). Thus, the Examiner speculates as to what is taught or suggested by Goldschmidt, and does not provide articulated reasoning or findings supported by the record to support the legal conclusion of obviousness. At best, the Examiner’s proposed combination, and specifically Goldschmidt, teaches or suggests appending an 8 byte integrity field to each 512 byte block of input data, yielding an output word of 520 bytes. Thus, a Appeal 2019-002238 Application 13/483,669 7 512 byte input data word does not have the same length as an 8 byte integrity word added to the data word to create a 520 byte output word. Modifying Goldschmidt to have both the integrity word and data word be the same length leaves us to speculate as to how or why one of ordinary skill in the art would modify Goldschmidt to meet the disputed limitation A recited in claim 1, including making the integrity and data words the same length (see claim 1, limitation A3). See In re Warner, 379 F.2d at 1017; Ex parte Braeken, 54 USPQ2d 1110, 1112 (BPAI 1999) (unpublished) (“The review authorized by 35 U.S.C. [§] 134 is not a process whereby the examiner . . . invite[s] the [B]oard to examine the application and resolve patentability in the first instance.”). Our careful review of Goldschmidt reveals that paragraph 25 describes receiving an input data stream 302 having eight blocks of 512 byte data words each, making for a total of 4096 bytes. And, paragraph 26 describes applying a data integrity function to produce an output data stream 304 by “append[ing] a eight byte data integrity field to a block of the input data stream 302. For example, an eight byte data integrity field 306a may be added to the 512 byte block 302a to generate the 520 byte block 304a,” making for a total of 4160 bytes. This is confirmed by what is shown in Figure 3 of Goldschmidt – a 4096 bytes input data stream 302, and a 4160 byte block guarded output data stream 304. This does not support a finding that Goldschmidt teaches or suggests “each integrity word and the data words corresponding to the consecutive integrity sub-words within the integrity word have the same length” as recited in limitation A3 of claim 1, and as similarly recited in claims 9, 13, and 18. Appeal 2019-002238 Application 13/483,669 8 In view of the foregoing, Appellant’s contentions that (i) Goldschmidt’s “data block 304a [i.e., the 520 byte block generated by adding the 8 byte integrity field to the 512 byte input data block] and 306b [i.e., the eight byte integrity field] are not the same byte size” (Appeal Br. 17), and (ii) “using the disclosure of FIG. 3 of Goldschmidt to meet the requirement in claim 1 is definitely not obvious” (Appeal Br. 17), are persuasive. And as a result, Appellant’s other contentions are persuasive of Examiner error: The Examiner’s interpretation of “applies a data integrity function to 64 (sixty four) blocks of input data stream 302, the resulting integrity field has a size of 64 x 8 = 512 bytes” significantly changes the scope and natural of the disclosure of the Goldschmidt, because in order to get an integrity words (comprising consecutive integrity sub-words) having the same 512 bytes as the data stream 302a, 64 DIFs (306a, 306b, . . . 306n) have to be removed from the scattered state into a congregated stated. Such as change of the scattering state is not explicitly disclosed nor suggested by Goldschmidt. In the Examiner’s Answer, the Examiner also states on page 7 that “Further, one of ordinary skill may choose to append the 64 8-byte integrity sub-fields at the end of the 64 blocks of input data stream 302 to arrive at the claimed invention.” However, Appellant notes that just like the Examiner’s rejections in the Advisory Action, the Examiner’s Answer is still devoid of evidence or reasoning as to reasonably convey to one of ordinary skill in the art to significantly change the disclosure of Goldschmidt to attach append the 64 8-byte integrity sub-fields at the end of the 64 blocks of input data stream 302, especially such attachment is not disclosed or suggested, but more importantly fundamentally alters the scatter structure of DIFs within the data streams. As such Appellant respectfully asserts that the Examiner does not provide citations with articulated reasoning [] able to support Appeal 2019-002238 Application 13/483,669 9 the legal conclusion of obviousness for establishing a prima facie case. Reply Br. 7. Because the Examiner fails to provide sufficient evidence or explanation to support the rejection, we are constrained by the record to reverse the Examiner’s rejection of claims 1, 9, 13, and 18, as well as claims 2, 4, 6–8, 15, 16, 19–21, 23, and 25–27 depending respectively therefrom. CONCLUSION Based on the record before us, we are constrained to reverse the Examiner’s decision rejecting claims 1, 2, 4, 6–9, 12, 13, 15, 16, 18–21, 23, 25–27 under 35 U.S.C. § 103(a) as being unpatentable over the base combination of Asano, Arntzen, Goldschmidt, and Hall. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4, 6–9, 12, 13, 15, 16, 18, 19, 21, 23, 25– 27 103(a) Asano, Arntzen, Goldschmidt, Hall 1, 2, 4, 6–9, 12, 13, 15, 16, 18, 19, 21, 23, 25– 27 20 103(a) Asano, Arntzen, Goldschmidt, Hall, Muchsel 20 Overall Outcome 1, 2, 4, 6–9, 12, 13, 15, Appeal 2019-002238 Application 13/483,669 10 16, 18–21, 23, 25–27 REVERSED Copy with citationCopy as parenthetical citation