Ex Parte Deng et alDownload PDFPatent Trial and Appeal BoardMay 25, 201814366283 (P.T.A.B. May. 25, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/366,283 06/18/2014 Mina Deng 24737 7590 05/30/2018 PHILIPS INTELLECTUAL PROPERTY & STANDARDS 465 Columbus A venue Suite 340 Valhalla, NY 10595 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. 2011P02314WOUS 5295 EXAMINER KANAAN, SIMON P ART UNIT PAPER NUMBER 2492 NOTIFICATION DATE DELIVERY MODE 05/30/2018 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): patti. demichele@Philips.com marianne.fox@philips.com katelyn.mulroy@philips.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MINA DENG, PAULUS MATHIAS HUBERTUS MECHTILDIS ANTONIUS GORISSEN, and MILAN PETKOVIC Appeal 2017-011262 Application 14/366,283 Technology Center 2400 Before ALLEN R. MacDONALD, AMBER L. HAGY, and SHARON PENICK, Administrative Patent Judges. MacDONALD, Administrative Patent Judge. DECISION ON APPEAL Appeal 2017-011262 Application 14/366,283 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-5, 7, 8, 10-14, and 16-19. Appellants have cancelled claims 6, 9, and 15. App. Br. 20, 22. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Representative Claim Representative claim 1 under appeal reads as follows ( emphasis, formatting, and bracketed material added): 1. A device comprising: [A.] a memory to store multiple operation routines, wherein each operation routine is configured to perform a particular instruction; [B.] at least one processor configured to: [i.] receive an encoded instruction, the encoded instruction being obtained by encoding a plain instruction with a code encoding; [ii.] look-up a corresponding operation routine of the multiple operation routines based on the encoded instruction using a look-up table in the memory, the corresponding operation routine being configured to perform the plain instruction corresponding to the encoded instruction; and [iii.] receive input data encoded with a first encoding; [iv.] perform the corresponding operation routine based on the input data encoded with the first encoding to produce an output; and [v.] encode the output with a second internal encoding. 2 Appeal 2017-011262 Application 14/366,283 Examiner's Rejections The Examiner rejected claims 1-5, 7, 8, 10-14, and 16-19 under 35 U.S.C. § I02(b) as being anticipated by de Jong (US 2005/0069131 Al; pub. March 31, 2005). 1 Issue on Appeal Did the Examiner err in rejecting claim 1 as being anticipated because de Jong fails to disclose the argued limitations? ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' arguments (Appeal Brief and Reply Brief) that the Examiner has erred. A. Appellants raise the following argument in contending that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 102(b ). Nowhere in Jong at [0071] is "receive input data encoded with a first encoding" ever disclosed. Jong does not disclose input data that is encoded before it is received. App. Br. 11. The Examiner responds "all data received on a computing device is inherently encoded whether it be ASCII, Binary or some other machine coding." Ans. 2. 1 We select claim 1 as representative. As to claims 2-5, 7, 8, 10-14, and 16- 19, our decision as to claim 1 is determinative. Although Appellants present sections with headings for claims 12-14 and 17-19, Appellants argue claims 12-14 and 17-19 only by reference to claim 1. Except for our ultimate decision, we do not discuss this rejection of claims 2-5, 7, 8, 10-14, and 16- 19 further herein. 3 Appeal 2017-011262 Application 14/366,283 Appellants raise the following further argument. If the Examiner's interpretation were adopted, the terms "encoding" and "decoding" would hold no patentable weight in computer applications e.g., cryptography, encryption, and obfuscation. It is beyond obvious that one of ordinary skill in the art would not interpret "input data encoded with a first encoding," in the field of encryption technology, as meanmg plain computer data in ASCII or binary. Reply Br. 2. As to Appellants' above contention, we agree with the Examiner. Contrary to Appellants' arguments, we find nothing in Appellants' use of the term "encoding" that requires anything beyond the Examiner's interpretation. For example, Appellants' Specification at page 4, lines 24-- 25, describes an encoding as a bijection (two-way function) that maps a range of integer numbers to the same range, i.e., Appellants' Specification describes encoding as mapping not encrypting. Appellants' Specification at page 4, line 28, states "[e]ncodings include encryptions." We read this as stating an encoding may be an encryption, not an encoding is an encryption. Although Appellants essentially argue the field of claim 1 is encryption technology, we find no such limitation in claim 1. Contrast the "encoded instruction" of claim 1 to claim 17, where the instruction is an "encrypted instruction." However, even in claim 17, the input data and output are encoded, not encrypted. Essentially, Appellants argue we are required to read "encoded" and "encrypted" as having the same meaning even though we have claims before 4 Appeal 2017-011262 Application 14/366,283 us that use both terms, and it is reasonable to construe the terms differently in light of the Specification. We are unpersuaded by Appellants' argument. 2 B. Appellants raise the following argument in contending that the Examiner erred in rejecting claim 1 under 3 5 U.S. C. § 102 (b). Jong's general description of a cryptographic process does not disclose "perform the corresponding operation routine based on the input data encoded with the first encoding to produce an output," as recited in claim 1. Jong at [0071] does not disclose the "corresponding operation routine" or "input data encoded with the first encoding." App. Br. 13. As to Appellants' above contention, Appellants premise the argument on the failure of Jong to teach input data encoded with a first encoding. As we disagree with Appellants' premise for the reasons discussed above, we are unpersuaded by this argument. C. Appellants raise the following arguments in contending that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 102(b ). With regard to the claimed "encode the output...," Jong at [0071] also does not disclose this feature. The one-way function of Jong makes it difficult to determine the corresponding input if given an output. But Jong says nothing about the output specifically being encoded with a second internal encoding. App. Br. 13. 2 Separately, we note that Jong teaches that data to be used with the obfuscated (i.e., encrypted) program code can also be obfuscated. Jong 102. 5 Appeal 2017-011262 Application 14/366,283 Jong does not teach or suggest " ... perform the corresponding operation routine based on the input data encoded with the first encoding to produce an output; and encode the output with a second internal encoding," as recited in claim 1. App. Br. 15 ( emphasis omitted). The Examiner responds, "the examiner respectfully disagrees as Jong, [O 161] or figure 32, items 3200 and 3260, teach a first program being obfuscated i.e. encoded with a second encoding to produce an obfuscated program[], i.e. output with a second encoding." Ans. 3--4. Appellants further argue: As discussed on pages 13-15 of the Appeal Brief, paragraph [0161] and Fig. 32 of Jong do not disclose "encode the output with a second internal encoding," as recited in claim 1. Namely, the Appellant[s] explain[] that Jong merely provides that the application program is the input to a cryptographic process to create an obfuscated application. However, Jong does not teach or suggest that the input to and output from the cryptographic process are encoded. Reply Br. 4 ( emphasis omitted). As to Appellants' above contention, while we disagree with Appellants' previously discussed construction of encoding, we agree with Appellants' assertion that the rejection is deficient. We agree with Appellants that the Examiner erred in finding Jong teaches, at either paragraph 71 or 161, "encode the output with a second internal encoding" as recited in claim 1. First, the Examiner's rejection does not explain how the recited "output" of paragraph 71 (or 161) is relevant in the context of Jong's obfuscated program operation (Jong 111 and 114) which the Examiner relies on to teach the encoded instruction operation of claim 1. Second, Jong at paragraph 161 is outputting the obfuscated program; therefore, it is unclear 6 Appeal 2017-011262 Application 14/366,283 how that in tum shows the output of the same obfuscated program, as recited in the claim. While it might be obvious to apply an obfuscated program such as Jong's to the processing of a binary encoded input to get a binary encoded output such as in paragraph 71 of Jong, the Examiner has not made such a rejection. We leave it to the Examiner to make any such rejection, if warranted. CONCLUSIONS (1) Appellants have established that the Examiner erred in rejecting claims 1-5, 7, 8, 10-14, and 16-19 as being anticipated under 35 U.S.C. § 102(b). (2) On this record, claims 1-5, 7, 8, 10-14, and 16-19 have not been shown to be unpatentable. DECISION The Examiner's rejection of claims 1-5, 7, 8, 10-14, and 16-19 is reversed. REVERSED 7 Copy with citationCopy as parenthetical citation