Ex Parte Dyke et al

Board of Patent Appeals and Interferences

Jul 14, 2006

09419828 (B.P.A.I. Jul. 14, 2006)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DON VAN DYKE, KORBIN VAN DYKE,
and STEPHEN C. PURCELL
____________

Appeal No. 2006-1017
Application No. 09/419,8281
____________

ON BRIEF
____________

Before RUGGIERO, SAADAT, and HOMERE, Administrative Patent
Judges.
SAADAT, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 3-13 and 15-23. Claims 2 and 15 have been canceled.
We reverse.

1 Application for patent filed October 14, 1999.
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BACKGROUND
Appellants’ invention is directed generally to an encryption and decryption
method under the Data Encryption Standard (DES) such that the DES algorithm is
implemented without the need for special purpose modules. Additionally, according to
Appellants, using general purpose registers for storing attributes and parameters of the
added instruction combines all data flow into a unified data path. An understanding of
the invention can be derived from a reading of exemplary independent claim 1, which is
reproduced as follows:
1. A computer system capable of performing encryption or decryption under
a Data Encryption Standard (DES) algorithm, comprising:

an arithmetic logic unit having a logic circuit for performing expansion
permutation, S-box substitution, P-box permutation and associated XOR operations;

wherein said computer system further comprises a register file providing
operands to said arithmetic logic unit; and

wherein said register file includes general purpose registers.

The Examiner relies on the following reference:
Jones et al. (Jones) 6,088,800 Jul. 11, 2000
(filed Feb. 27, 1998)

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Claims 1, 3-13 and 15-23 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Jones.
We make reference to the answer (mailed September 7, 2005)
for the Examiner’s reasoning and to the appeal brief (filed July
11, 2005) for Appellants’ arguments thereagainst.
OPINION
Initially, we note that a rejection for anticipation under
section 102 requires that each and every limitation of the
claimed invention be disclosed in a single prior art reference.
In re Paulsen, 30 F.3d 1475, 1478-79, 31 USPQ2d 1671, 1673 (Fed.
Cir. 1994). See also Atlas Powder Co. v. Ireco Inc., 190 F.3d
1342, 1347, 51 USPQ2d 1943, 1946 (Fed. Cir. 1999).
Appellants assert that Jones does not use “general purpose
registers” and instead, avoids using such registers (col. 10,
lines 20-29) by employing specific purpose registers in a
dedicated encryption/decryption processor (brief, page 4).
Appellants further argue that Jones suggests away from the
claimed general purpose processors and the associated general
purpose registers which are used to execute both the DES
algorithm and other instructions (brief, page 5). The Examiner
responds by stating that this portion of Jones does not suggest
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that a general-purpose processor cannot be used to accomplish his
objective or the simpler arrangement is limited to specific
purpose registers (answer, page 10).
We observe that Jones relates to a programmable encryption
chip for processing a variety of secret key and public key
encryption algorithms (abstract). Jones further teaches that
using a dedicated chip reduces complexity by avoiding switch
designs and a simpler linear arrangement (col. 10, lines 20-29).
Jones’ lack of suggestion for excluding general purpose
registers notwithstanding and as argued by Appellants (brief,
pages 3 & 5), by using special purpose registers, the reference
provides for a dedicated encryption process which would be
different from the claimed “general purpose registers.”
Additionally, referring to Figure 3 and its corresponding
description (col. 7, lines 15-38), Appellants point out that
using ALU 56 operating on 32-bit words from the register file 58
of Jones does not describe or suggest the claimed register file
including general purpose registers (brief, page 6). In response
to Appellants’ arguments, the Examiner asserts that Jones
discloses that the registers can be used as an operand to any
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instruction which allows them to be a general purpose register
(answer, page 11). The Examiner further asserts that, since “the
same architecture is being used, the registers are not used for
only a specific purpose but are addressable depending on the type
of instruction ...” (id.).
As correctly identified by Appellants, Jones specifically
avoids complexity by processing the algorithm using dedicated
registers (col. 10, lines 25-29). Although the Examiner asserts
that the registers of Jones function in the same manner as
Appellants’ registers when they perform an encryption process
(answer, page 12), the Examiner does not point to, nor do we find
any, teaching in Jones indicating that the registers are general
purpose registers. What a reference teaches is a question of
fact. In re Baird, 16 F.3d 380, 382, 29 USPQ2d 1550, 1552 (Fed.
Cir. 1994) (citing In re Beattie, 974 F.2d 1309, 1311, 24 USPQ2d
1040, 1041 (Fed. Cir. 1992)). In fact, while all types of
registers store information, the portions in Jones identified by
Appellants actually provide more evidence demonstrating that the
registers are dedicated and assigned to the processor for the
encryption.
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In view of the discussion above and the weight of evidence
presented by Appellants and the Examiner, we find that the use of
general purpose registers, as recited in independent claims 1, 13
and 22, are absent in Jones. Accordingly, since the Examiner has
failed to meet the burden of providing a prima facie case of
anticipation, the 35 U.S.C. § 102 rejection of claims 1, 3-13 and
15-23 over Jones cannot be sustained.
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CONCLUSION
To summarize, the decision of the Examiner to reject claims 1, 3-13 and 15-
23 under 35 U.S.C. § 102 is reversed.
REVERSED

JOSEPH F. RUGGIERO )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MAHSHID D. SAADAT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEAN R. HOMERE )
Administrative Patent Judge )

MDS/ce

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