Ex Parte Eslinger et al

Board of Patent Appeals and Interferences

Jul 21, 2004

09186546 (B.P.A.I. Jul. 21, 2004)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte GREGORY CLAYTON ESLINGER and
MARK LEONARD BUER
____________
Appeal No. 2003-0033
Application No. 09/186,546
____________
ON BRIEF
____________
Before KRASS, DIXON, and GROSS, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-6 and
9-14, which are all of the claims pending in this application.
We REVERSE.
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Application No. 09/186,546
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BACKGROUND
Appellants’ invention relates to a secure memory management unit which uses
multiple cryptographic algorithms. An understanding of the invention can be derived
from a reading of exemplary claim 1, which is reproduced below.
1. A method by which an integrated circuit accesses first encrypted
data stored in a first external memory and accesses second encrypted
data stored in a second external memory, the first external memory and
the second external memory being external to the integrated circuit, the
method comprising the following steps:
(a) when accessing a first portion of the first encrypted data stored
in the first external memory, performing the following substep:
(a.1) using a first algorithm to decrypt the first portion of the
first encrypted data, decryption using the first algorithm being performed
within the integrated circuit; and,
(b) when accessing a first portion of the second encrypted data
stored in the second external memory, performing the following substep:
(b.1) using a second algorithm to decrypt the first portion of
the second encrypted data, decryption using the second algorithm being
performed within the integrated circuit, wherein the second algorithm is
different than the first algorithm.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Abadi et al. (Abadi) 5,268,962 Dec. 7, 1993
Sourgen et al. (Sourgen) 5,850,452 Dec. 15, 1998
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Claims 1-6 and 9-14 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Sourgen. The examiner uses Abadi as evidence to support taking Official notice.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
appellants regarding the above-noted rejections, we make reference to the examiner's
answer (Paper No. 15, mailed May 17, 2002) for the examiner's reasoning in support of
the rejections, and to appellants’ brief (Paper No. 14, filed Mar. 12, 2002) for the
appellants’ arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
appellants’ specification and claims, to the applied prior art references, and to the
respective positions articulated by appellants and the examiner. As a consequence of
our review, we make the determinations which follow.
35 U.S.C. § 103
In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden
of presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531,
1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of obviousness is
established by presenting evidence that the reference teachings would appear to be
sufficient for one of ordinary skill in the relevant art having the references before him to
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make the proposed combination or other modification. See In re Lintner, 458 F.2d
1013, 1016, 173 USPQ 560, 562 (CCPA 1972). Furthermore, the conclusion that the
claimed subject matter is prima facie obvious must be supported by evidence, as
shown by some objective teaching in the prior art or by knowledge generally available to
one of ordinary skill in the art that would have led that individual to combine the relevant
teachings of the references to arrive at the claimed invention. See In re Fine, 837 F.2d
1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Rejections based on § 103
must rest on a factual basis with these facts being interpreted without hindsight
reconstruction of the invention from the prior art. The examiner may not, because of
doubt that the invention is patentable, resort to speculation, unfounded assumption or
hindsight reconstruction to supply deficiencies in the factual basis for the rejection. See
In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177 (CCPA 1967), cert.
denied, 389 U.S. 1057 (1968). Our reviewing court has repeatedly cautioned against
employing hindsight by using the appellant's disclosure as a blueprint to reconstruct the
claimed invention from the isolated teachings of the prior art. See, e.g., Grain
Processing Corp. v. American Maize-Prods. Co., 840 F.2d 902, 907, 5 USPQ2d
1788, 1792 (Fed. Cir. 1988).
When determining obviousness, "the [E]xaminer can satisfy the burden of
showing obviousness of the combination `only by showing some objective teaching in
the prior art or that knowledge generally available to one of ordinary skill in the art would
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lead that individual to combine the relevant teachings of the references.’" In re Lee,
277 F.3d 1338, 1343, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002), citing In re Fritch,
972 F.2d 1260, 1265, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992). "Broad conclusory
statements regarding the teaching of multiple references, standing alone, are not
‘evidence.'” In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir.
1999). "Mere denials and conclusory statements, however, are not sufficient to establish
a genuine issue of material fact." Dembiczak, 175 F.3d at 999-1000,
50 USPQ2d at 1617, citing McElmurry v. Arkansas Power & Light Co., 995 F.2d
1576, 1578, 27 USPQ2d 1129, 1131 (Fed. Cir. 1993).
Further, as pointed out by our reviewing court, we must first determine the scope
of the claim. "[T]he name of the game is the claim." In re Hiniker Co., 150 F.3d
1362,1369, 47 USPQ2d 1523, 1529 (Fed. Cir. 1998). Therefore, we look to the
language of independent claim 1. We find that independent claim 1 recites the use of a
first and a second algorithm on an integrated circuit to decrypt first and second
encrypted data. The examiner admits that Sourgen teaches only a first algorithm. (See
answer at page 4.) Appellants argue that Sourgen fails to teach or suggest all of the
limitations of the claim and the examiner fails to cite any evidence or motivation in the
prior art to modify the reference. (See brief at page 4 and 5.) We agree with appellants
and find that the examiner has not established a convincing line of reasoning for
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modifying the system of Sourgen to use a second/different algorithm to decrypt the
second data.
From our review of the teachings of Sourgen, Sourgen is concerned with having
different data treated differently, and we find no evidence or motivation to use two
different algorithms on the integrated circuit in the teachings of Sourgen alone. The
examiner concludes that the second permutation circuit would provide enhanced
security and “nothing in Sourgen’s disclosure precludes such a modification, and in fact
the disclosure almost suggests such an improvement. Sourgen does not teach why his
device does not include a second permutation circuit inside control unit UC, but one can
easily surmise the reason is in the associated cost of the control unit UC.” (See answer
at page 9.) From the examiner’s discussion and analysis it is clear that the examiner
has based his rejection upon impermissible hindsight in an attempt to reconstruct the
claimed invention. Clearly, this is improper and the examiner has based the rejection
upon speculation and reliance on the negative inference that Sourgen does not teach
that you can’t have a second algorithm as a motivation to have a second algorithm. In
order for us to sustain the Examiner's rejection under 35 U.S.C. § 103, we would need
to resort to speculation or unfounded assumptions or rationales to supply deficiencies in
the factual basis of the rejection before us. In re Warner, 379 F.2d 1011, 1017, 154
USPQ 173, 178 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968), rehearing
denied, 390 U.S. 1000 (1968).
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"Deficiencies of the cited references cannot be remedied by the Board's general
conclusions about what is ‘basic knowledge’ or ‘common sense.’” In re Zurko, 258
F.3d 1379, 1385, 59 USPQ2d 1693, 1697(Fed. Cir. 2001). Furthermore, "the Board's
findings must extend to all material facts and must be documented on the record, lest
the ‘haze of so-called expertise’ acquire insulation from accountability." In re Lee, 277
F.3d 1338, 1345, 61 USPQ2d 1430, 1435 (Fed. Cir. 2002). Here, we find the
Examiner's arguments to be supported merely by the Examiner's own expertise instead
of the evidence of record and the teachings of prior art which are required in order to
establish a prima facie case of obviousness. Accordingly, we do not sustain the 35
U.S.C. § 103 rejection of any of claims 1-6 and 9-14 over Sourgen.
CONCLUSION
To summarize, the decision of the examiner to reject claims 1-6 and 9-14 under
35 U.S.C. § 103 is reversed.
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Application No. 09/186,546
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REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
JLD/dpv
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Application No. 09/186,546
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Corporate Patent Counsel
Philips Electronics North America Corporation
580 White Plains Road
Tarrytown, NY 10591