Ex Parte Barcarolo et al

Patent Trial and Appeal Board

Apr 26, 2016

12808008 (P.T.A.B. Apr. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/808,008 06/14/2010
65913 7590 04/28/2016
Intellectual Property and Licensing
NXPB.V.
411 East Plumeria Drive, MS41
SAN JOSE, CA 95134
FIRST NAMED INVENTOR
Michele Barcarolo
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
81057350 US05 1021
EXAMINER
REHMAN, MOHAMMED H
ART UNIT PAPER NUMBER
2118
NOTIFICATION DATE DELIVERY MODE
04/28/2016 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 MICHELE BARCAROLO and HARALD WITSCHNIG
Appeal2014-006548
Application 12/808,008 1
Technology Center 2100
Before ROBERT E. NAPPI, JAMES W. DEJMEK, and
JOHN D. HAMANN, Administrative Patent Judges.
HAMANN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner's Non-Final Rejection of claims 1, 2, 4---6, and 9-17. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
THE CLAIMED INVENTION
Appellants' claimed invention relates to masking current requirements
of an electronic circuit. Field of the Invention. Of the claims on appeal,
claims 1 and 12 are illustrative of the subject matter of the appeal and are
reproduced below.
1 According to Appellants, the real party in interest is NXP B.V. App. Br. 1.
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Application 12/808,008
1. A method of masking a current requirement of an
electronic circuit, the method comprising:
determining a current level required by the electronic
circuit for its correct operation and a corresponding point in time
when said current level is required by the electronic circuit;
choosing a current level which is equal or higher than the
determined current level;
switching a current level supplied to/consumed by the
electronic circuit to the chosen current level at a time instant
deviating from the determined point in time, wherein a random
number generator (RNG) chooses the time deviation; and
initiating supply of a current sufficient to supply the
electronic circuit and activating a smart card prior to activation
of the electronic circuit.
12. The method according to claim 1, further comprising:
sending superfluous heat to a resistor.
REJECTIONS ON APPEAL
(1) The Examiner rejected claims 12 and 13 under 35 U.S.C. § 112,
first paragraph, for failing to comply with the written description
requirement.
(2) The Examiner rejected claims 12 and 13 under 35 U.S.C. § 112,
second paragraph, for being indefinite.
(3) The Examiner rejected claims 1, 2, 4---6, 9, 10, and 14--17 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Noh et al.
(US 2006/0117383 Al; June 1, 2006) (hereinafter "Noh"), Carter et al.
(US 2010/0071031 Al; Mar. 18, 2010) (hereinafter "Carter"), and Soleimani
et al. (US 2007 /0229226; Oct. 4, 2007) (hereinafter "Soleimani"),
collectively referred to as the "combination."
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Application 12/808,008
(4) The Examiner rejected claim 11under35 U.S.C. § 103(a) as
being unpatentable over the combination of Noh, Carter, Soleimani, and
Admitted Prior Art.
(5) The Examiner rejected claims 12 and 13 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Noh, Carter,
Soleimani, and Bridgewater et al. (US 6,124,727; Sept. 26, 2000)
(hereinafter "Bridgewater").
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
contentions that the Examiner erred. In reaching our Decision, we consider
all evidence presented and all arguments made by Appellants.
We disagree with Appellants' arguments and we incorporate herein
and adopt as our own: (1) the findings and reasons set forth by the Examiner
in the June 3, 2013 Non-Final Office Action (Final Act. 2-7) and (2) the
reasons and rebuttals set forth in the Examiner's Answer (Ans. 2-5). We
incorporate such findings, reasons, and rebuttals herein by reference unless
otherwise noted. We, however, highlight and address specific findings and
arguments below for emphasis.
(1) Written description for sending superfluous heat to a resistor
Appellants contend the Specification complies with the written
description requirement of 35 U.S.C. § 112, first paragraph, with respect to
claims 12 and 13.2 See App. Br. 4; Reply Br. 2. Appellants argue "the
specification discloses that a resistor can transform superfluous power to
2 Claim 13 recites "sending superfluous heat to a transistor," rather than a
resistor. App. Br. 17 (emphasis added).
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Application 12/808,008
heat," and "discloses both resistor and transistor embodiments." See App.
Br. 4 (citing Spec. 3, 1. 33; 4, 11. 1-3). Appellants further argue the claim
language recites "sending superfluous heat" and does not recite how heat is
being transferred. Reply Br. 2.
The Examiner finds the Specification only recites that "the
superfluous current or power, which currently is not being used for a
correct operation of the electric circuit, is fed to a resistor, ... which
transforms said superfluous power to heat." Ans. 2 (citing Spec. 3, 11. 30-
34). The Examiner concludes the Specification describes feeding "current or
power" to a resistor "but does not positively define how 'heat' is being
transferred to a [resistor]." Ans. 2.
We find Appellants' arguments persuasive. We find that one of
ordinary skill in the art would understand an electrical component, such as a
resistor, drawing current or power dissipates heat, and one skilled in the art
would reasonably conclude that Appellants had possession of this aspect of
the claimed invention at the time the Specification was filed. See In re
Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989); Spec. 3, 1. 30 to 4, 11. 1-3.
Accordingly, we do not sustain this rejection.
(2) Indefiniteness (or sending superfluous heat to a resistor
Appellants contend the Examiner erred in rejecting claims 12 and 13
for being indefinite. See App. Br. 5; Reply Br. 3. Appellants argue "the
claim language is clear because superfluous power is transformed into heat.
See App. Br. 5 (citing Spec. 3, 1. 33). Appellants also argue "either
'superfluous current or power,' ... once transformed into heat, is 'wasted' at
a component such as the claimed resistor and transistor." App. Br. 5.
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Appellants, thus, contend the claim language is not ambiguous. Id.; see also
Reply Br. 3 (arguing "wasted power becomes heat," as one of ordinary skill
in the art would readily understand).
The Examiner finds the claim language "sending superfluous heat to
a resistor" and the cited portion of the Specification do not disclose clearly
how "heat" is transferred to a resistor. See Ans. 2-3 (emphasis added). The
Examiner also finds it is unclear to one of ordinary skill in the art how
"heat" is transferred to a resistor in the context of the claim language. Ans.
3.
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether "those skilled in the art would understand what is claimed when the
claim is read in light of the specification." Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted);seealsoExparteMiyazaki, 89USPQ2d 1207, 1210-13 (BPAI
2008) (precedential) (applying the Orthokinetics standard).
We agree with the Examiner that one of ordinary skill in the art would
not understand the scope of what is being claimed in claims 12 and 13. For
example, we agree that it is unclear how "heat" is sent to a resistor or
transistor, including whether the claimed sent heat relates to current or
power, or some other source. Although we agree electrical components can
get hot when drawing current, it remains unclear in the context of the claim
language in light of the Specification how the heat is sent. Accordingly, we
sustain this rejection.
(3) Determining a current level and a corresponding point in time
Appellants argue the first combination, and Noh in particular, fails to
teach or suggest "determining a current level required by the electronic
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circuit for its correct operation and a corresponding point in time when
said current level is required by the electronic circuit," as recited in claim 1
and similarly recited in claim 6. App. Br. 7. Appellants argue Noh instead
only teaches "peak current consumption," such as when a smart card or CPU
is activated, and does not teach "a corresponding point in time when said
current level is required by the electronic circuit." See id. (citing Noh i-f 39);
Reply Br. 4. Furthermore, according to Appellants, Noh's Figure 4, which is
cited by the Examiner, shows that "the period between A and B corresponds
to 'peak patterns different from other parts of the waveform, which may
otherwise provide some information to an external attacker as to the value of
a key."' See Reply Br. 4 (citing Noh i-f 40). Appellants, thus, contend Noh
does not disclose that point A in Noh's Figure 4 "corresponds to a particular
current level required by an electronic circuit." See Reply Br. 4.
The Examiner finds Noh teaches this disputed limitation. See Ans. 3.
Specifically, the Examiner finds Noh teaches a "controller 75 increases or
decreases the current amount" for smart card 100 operation over time based
on a determined required current level. See Ans. 3 (citing Noh i-f 39)
(emphasis omitted). The Examiner further finds Noh's Figure 4 also teaches
this limitation and illustrates a smart card's current consumption over time,
including points A and B which can correspond to certain operations of the
smart card. See Ans. 3. (citing Noh i-f 40, Fig. 4). 3
3 The Examiner also notes a similarity between the Specification's Figure 2B
and Noh's Figure 4 as illustrating a required current level and corresponding
point in time, such as when a smart card or CPU is activated. See Ans. 3
(citing Spec. 7, 11. 3-20, Fig. 2B).
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Application 12/808,008
We find Appellants' arguments unpersuasive. We agree with the
Examiner Noh teaches or suggests this disputed limitation. See, e.g., Noh
i-f 39. Furthermore, Appellants' argument that Noh does not disclose point A
corresponds to a particular current level required by an electronic circuit is
misplaced, as Figure 4 illustrates the current waveform of the smart card.
See Noh i-f 40, Fig. 4 (teaching the current waveform required for smart card
operation as a function of time).
(4) Time instant deviating from the determined point in time,
wherein a random number generator chooses the time deviation
Appellants argue the first combination fails to teach or suggest
"switching a current level supplied to/consumed by the electronic circuit to
the chosen current level at a time instant deviating from the determined
point in time, wherein a random number generator (RNG) chooses the
time deviation," as recited in claim 1 and similarly recited in claim 6. App.
Br. 7. Specifically, Appellants argue although Soleimani teaches a RNG is
used to select a time slot, the time slots are fixed and do not deviate relative
to the single, determined point in time of the first step of claim 1. See App.
Br. 8 (citing Soleimani i-f 106, Fig. 1 O); Reply Br. 5-6. Appellants argue
these cited portions of Soleimani teach away from this disputed limitation.
See App. Br. 8. Furthermore, Appellants argue Soleimani's time slots are
fixed in length rather than having a random time deviation. See id.; see also
Reply Br. 6 (arguing although the Examiner finds Noh does not limit its
dummy current to a fixed time deviation, Soleimani' s time slots are fixed).
The Examiner finds the combination, Noh and Soleimani in particular,
teaches this disputed limitation. See Ans. 4--5. The Examiner first finds
Noh teaches, in addition to determining a current level required for a
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Application 12/808,008
corresponding point in time, generating a dummy current before, during, or
after the point in time. See Ans. 4 (citing Noh i-f 13 ("generating the amounts
of dummy current before ... [or] after an amount of current consumed by a
corresponding ... operation[]"), 41 (teaching dummy current can be
generated before, after, or during an operation). As to Soleimani, the
Examiner finds it teaches a time deviation (e.g., time slot) can be chosen by
a RNG. See Ans. 4 (citing Soleimani i-fi-1103, 106 ("Random number
generator 1104 may be used to select a time slot in a random manner.");
Figs. 9, 11. Thus, the Examiner concludes the combined teachings of Noh
and Soleimani teach the disputed limitation. See Ans. 4.
We agree with the Examiner's findings. We find Noh teaches, inter
alia, generating a dummy current before, during, or after current consumed
by an operation, which can be a determined point in time. See Noh i-fi-113,
41. We also find Soleimani teaches using a RNG to provide for a random
period of time before operating. See Soleimani i-f 103 (teaching waiting a
random period of time, which for some embodiments can be time slots), 106
(teaching using a RNG to select in a random manner). We also consider
Appellants' arguments to incorrectly attack Noh and Soleimani separately
rather than addressing fully their combined teachings. In re Merck & Co.,
Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (finding each reference "must be
read, not in isolation, but for what it fairly teaches in combination with the
prior art as a whole."). Furthermore, we find the cited portions of Soleimani
do not teach away from the disputed limitation - time slots merely relate to
an embodiment of generating a random period of time. See In re Fulton,
391 F.3d 1195, 1201 (Fed. Cir. 2004) (finding a reference does not teach
away by merely disclosing an alternative invention without criticizing,
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Application 12/808,008
discrediting, or otherwise discouraging investigation into the claimed
invention). Accordingly, we agree with the Examiner the first combination
teaches this disputed limitation.
(5) Randomly choosing the chosen current level
Appellants argue the first combination, and Noh in particular, fails to
teach or suggest "randomly choosing said chosen current level," as recited
in claim 4. Appellants argue Noh instead teaches generating an additional
peak pattern and "is silent regarding randomly choosing a chosen current
level." See App. Br. 9 (citing Noh i-f 41, Fig. 5A); Reply Br. 6-7.
Appellants also argue Noh' s teaching that consumed current can be "varied
to mask" the operations of the smart card does not teach that a
randomization procedure is involved. See Reply Br. 6-7.
The Examiner finds "Noh teaches to hide the pattern of current
dissipation of the smart card a dummy current is added and [the] pattern of
the current consumed by the smart card [is] 'varied to mask' the operation of
the smart card." See Ans. 5 (citing Noh i-f 34). The Examiner also finds
Noh's Figure 5A also teaches that the current level has no fixed level (i.e., is
a random current level). See Ans. 5 (citing Noh Fig. 5A).
We find Appellants' arguments unpersuasive. We agree with the
Examiner that Noh does not limit its teachings to a fixed varying of
consumed current to mask the operation of the smart card. See Noh i-f 34
("[T]he patterns of current consumed by the circuits in the smart card may
be varied to mask the operations of the smart card and thereby allow
improved protection from external attacks."). Rather, Noh teaches varying
the consumed current to mask smart card operations for improved protection
from external attacks. See id. One of ordinary skill in the art would
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Application 12/808,008
understand Noh's teachings include randomly varying the consumed current
to mask operations and better protect from attacks - a fixed varying of
consumed current could be discernible and weaken the protections sought.
One of ordinary skill can use his or her ordinary skill, creativity, and
common sense to make the necessary adjustments and further modifications
to result in a properly functioning device. See KSR Int 'l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007) ("[T]he [obviousness] analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.").
(6) Randomly choosing a current offset
Appellants argue the first combination, and Noh in particular, fails to
teach or suggest "randomly choosing a current offset," as recited in claim
17. See App. Br. 10. Appellants argue the word random is not present in
Noh. See Reply Br. 7. Appellants further argue the Examiner fails to show
that Noh necessarily uses a "random choice," and that the Examiner is
making an inherency rejection improperly. See Reply Br. 7.
The Examiner's findings for this disputed limitation are in accord with
the findings above for "randomly choosing said chosen current level." See
supra; Ans. 5. As above, the Examiner finds Noh teaches masking
operations by increasing the amount of current consumption. See Ans. 5
(citing Noh i-f 41 ). The Examiner also repeats the finding that Noh does not
limit its teachings to a fixed varying of consumed current to mask
operations. See id. The Examiner concludes Noh's choosing of the current
offset is clearly done randomly. See id.
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As above, we find Appellants' arguments unpersuasive. We agree
with the Examiner's findings based on our reasoning above concerning
"randomly choosing said chosen current level" - this reasoning also applies
to this disputed limitation. Accordingly, we find that the first combination
teaches this disputed limitation. See, e.g., Noh i-fi-134, 41, Fig. 5B.
CONCLUSION
Based on the above findings and reasoning, we sustain the Examiner's
rejection of claims 1 and 6, as well as claims 4 and 17. Appellants did not
provide separate arguments for the patentability of the remaining claims on
appeal - claims 2, 5, 9, 15, and 16, which depend from claim 1; and claims
10, 11, and 14, which depend from claim 6- except as to claims 12 and 13
for which Appellants only addressed the § 112 rejections and not the § 103
rejection directed to them. According, we sustain the Examiner's§ 103
rejections of all of the claims on appeal, as well as the Examiner's§ 112,
second paragraph rejection of claims 12 and 13. We do not sustain the
Examiner's§ 112, first paragraph rejection of claims 12 and 13.
DECISION
We affirm the Examiner's decision rejecting claims 1, 2, 4---6, and
9-17.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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