Ex Parte Gammel

Patent Trial and Appeal Board

Feb 13, 2018

13942096 (P.T.A.B. Feb. 13, 2018)

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.
13/942,096 07/15/2013 Berndt Gammel 1012-0652/ 4568
2013P50237US
57579 7590 02/15/2018
MURPHY, BILAK & HOMILLER/INFINEON TECHNOLOGIES
1255 Crescent Green
Suite 200
CARY, NC 27518
EXAMINER
PYZOCHA, MICHAEL J
ART UNIT PAPER NUMBER
2437
NOTIFICATION DATE DELIVERY MODE
02/15/2018 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):
official@mbhiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BERNDT GAMMEL
Appeal 2017-008563
Application 13/942,096
Technology Center 2400
Before ALLEN R. MacDONALD, ROBERT E. NAPPI, and
SHARON FENICK, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2017-008563
Application 13/942,096
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-8, 17, and 19-21. Claims 9-16, 18, and 22-24 have been
withdrawn from consideration pursuant to 37 C.F.R. § 1.142(b) as being
drawn to a nonelected Species. Final Act. 2. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
Representative Claim
Representative claim 1 under appeal reads as follows;
1. An apparatus for encrypting an input memory address
to obtain an encrypted memory address, comprising:
an input interface configured to receive the input memory
address being an address of a memory, and
an encryption module configured to encrypt the input
memory address depending on a cryptographic key to obtain the
encrypted memory address,
wherein the encryption module is configured to encrypt
the input memory address by applying a map mapping the input
memory address to the encrypted memory address, wherein the
encryption module is configured to apply the map by
conducting a multiplication and a modulo operation using the
cryptographic key and a divisor of the modulo operation, such
that the map is bijective,
wherein the apparatus is implemented using a hardware
apparatus or using a computer or using a combination of a
hardware apparatus and a computer.
App. Br. 14 (Claims Appendix).
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Rejection on Appeal
The Examiner rejected claims 1-8, 17, and 19-21 under
35 U.S.C. § 101 for being directed to patent-ineligible subject matter. See
Final Act. 4.1
Issue on Appeal
Did the Examiner err in rejecting claim 1 as being directed to patent-
ineligible subject matter?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We disagree with Appellant’s
contention that the Examiner erred. Instead, we concur with the conclusions
reached by the Examiner. Except as noted below, we adopt as our own the
reasoning set forth by the Examiner in the Final Office Action and
Examiner’s Answer.
A. Section 101 Case Law
Under 35 U.S.C. § 101, a patent may be obtained “for any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” The Supreme Court has “long held that
this provision contains an important implicit exception: Laws of nature,
1 We select claim 1 as representative. Separate patentability, in compliance
with 37 C.F.R. § 41.37(c)(iv), is not argued for claims 2-8, 17, and 19-21.
See App. Br. 5-11. Except for our ultimate decision, the rejection of claims
2-8, 17, and 19-21 is not discussed further herein.
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natural phenomena, and abstract ideas are not patentable.” Alice Corp. v.
CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014) (quoting Ass ’n for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). The
Supreme Court in Alice reiterated the two-step framework previously set
forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566
U.S. 66 (2012), “for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.” Alice, 134 S. Ct. at 2355. The first step in
that analysis is to “determine whether the claims at issue are directed to one
of those patent-ineligible concepts,” such as an abstract idea. Id. The Court
acknowledged in Mayo that “all inventions at some level embody, use,
reflect, rest upon, or apply laws of nature, natural phenomena, or abstract
ideas.” Mayo, 566 U.S. at 71. Therefore, we look to whether the claims
focus on a specific means or method that improves the relevant technology
or are instead directed to a result or effect that itself is the abstract idea and
otherwise merely recite generic processes and machinery. See Enflsh, LLC
v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016). If the claims are
not directed to an abstract idea, the inquiry ends. Otherwise, the inquiry
proceeds to the second step, in which the elements of the claims are
considered “individually and ‘as an ordered combination’ to determine
whether the additional elements ‘transform the nature of the claim’ into a
patent-eligible application.” Alice, 134 S. Ct. at 2355 (quoting Mayo, 566
U.S. at 79, 78).
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B. Alice/Mayo — Step 1
The Examiner determines claim 1 is directed to performing a
mathematical operation (i.e., encryption) on received input data. See Final
Act. 4. Appellant contends claim 1 is not directed to an abstract idea under
35U.S.C. § 101 because:
[The claims] do not merely perform a “mathematical
operation ”. [The claims] represent significantly more than just a
mathematical algorithm, and qualify as “significantly more” than
a mere abstract idea[.] [Claim 1 recites a] memory address [that]
points to a physical place on a physical device. This memory
address is encrypted and secured by simple read-out access.
This encryption secures the location in the physical device...
from unauthorized access. An attacker/intruder [does not know
the] location/address within the physical device’s memory the
sought information is stored due to the address being encrypted.
Consequently, the attacker cannot simply read out the needed
data just by applying electrical control signals because it is
unknown to the attacker as to which memory cells comprise the
relevant data and the encryption key is not available to the
attacker.
In interpreting 35 U.S.C. § 101, the courts have been
concerned with. . . claims that seek to cover conventional human
activity or mathematical algorithms, such as might be performed
solely in a person's mind or using pencil and paper. [Claim 1 is]
directed to none of these - encrypting memory addresses by
mapping the input memory address to the encrypted memory
address by conducting multiplication and modulo operations
using both a cryptographic key and a divisor does not involve
“mental stepsand cannot be carried out with pencil and
paper. The pending claims are thus directed to specific
techniques for encrypting input memory addresses. They do not
represent abstract mathematical operation on data.
App. Br. 6-8 (Appellant’s emphasis omitted; panel’s emphasis added).
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The Examiner responds:
[Mathematical relationships are one of the identified judicial
exceptions and encryption is a well-known mathematical
relationship. Applicant’s own claims show that the encryption
is a mathematical relationship by using a mathematical
formula (see, for example, claim 3). The ability to perform the
steps to be performed “mentally” or “with pencil and paper” is
not a requirement for the judicial exception, however, the
encryption steps performed in the claims can be performed this
way. Taking, by way of example, the formula from claim 3: a’=
a k (mod p); is merely multiplying two values (a and k) and
taking the modular value between this result and another value
(p) (note that the modular value is merely the remainder from the
division of the two values). The claims put no limitations on the
sizes of these values or the number of times these operations are
performed. As such, these mathematical relationships are
capable of being performed “mentally” or “with pencil and
paper”. Therefore, the claims relate to an abstract idea that is
a judicial exception.
Ans. 3-4 (emphasis added).
We are unpersuaded by Appellant’s arguments. Contrary to
Appellant’s assertion, we conclude the character of claim 1 as a whole is
directed to a mathematical operation of performing a mapping function on
an input memory address to obtain an output memory address. Such claimed
subject matter is similar to subject matter found by our reviewing courts to
be abstract. See Gottschalkv. Benson, 409 U.S. 63, 67 (1972) (“a scientific
truth, or the mathematical expression of it, is not [a] patentable invention”
(citation omitted)); see also Parker v. Flook, 437 U.S. 584, 595 (1978) (“if a
claim is directed essentially to a method of calculating, using a mathematical
formula, even if the solution is for a specific purpose, the claimed method is
nonstatutory” (citation omitted)); Diamond v. Diehr, 450 U.S. 175, 191
(1981) (“[a] mathematical formula ... is not accorded the protection of our
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patent laws, and this principle cannot be circumvented by attempting to limit
the use of the formula to a particular technological environment” (citation
omitted)); In re Grams, 888 F.2d 835, 837 (Fed. Cir. 1989) (“mathematical
algorithms join the list of non-patentable subject matter not within the scope
of section 101”).
Appellant argues claim 1 is not directed to a mathematical operation
because claim 1 recites an encryption of a memory address, where the
encryption of the memory address secures the memory address from
unauthorized access, and thus, changes the nature of a physical device
associated with the memory address. See App. Br. 7. However, the claim
fails to recite the technical details that describe the securing of the memory
address from unauthorized access via the encryption of the memory address.
Further, the claim fails to recite the usage of the encrypted (and secured)
memory address by the physical device. Thus, the claim fails to recite the
improvement to the field of encrypted memory device access that Appellant
argues the claim is directed to.
In light of the above, the Examiner correctly concluded that claim 1
recites a mathematical operation that is merely limited to the technological
environment of memory address encryption, and thus, is directed to an
abstract idea.2 To the extent that Appellant is arguing that claim 1 recites
2 We further agree with the Examiner’s finding that claim 1, when
interpreted under the broadest reasonable interpretation, is capable of being
performed “mentally” or “with pencil and paper,” although we also agree
with the Examiner that this finding is not a prerequisite for a finding that a
claim is directed to a judicial exception, such as an abstract idea. See
Ans. 3—4. More specifically, claim 1 recites “an input memory address,”
and thus, only requires applying a mathematical operation on a single
memory address to encrypt the single memory address. The claim defines
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additional elements that amount to “significantly more” than the abstract
idea, that issue is distinct from whether claim 1 is directed to a mathematical
operation of performing a mapping function on an input memory address to
obtain an output memory address. Appellant’s arguments that claim 1 is
directed to “significantly more” are addressed infra.
C. Alice/Mayo — Step 2
The Examiner determines claim 1 does not include additional
elements that are sufficient to amount to significantly more than an abstract
idea because the claim merely recites general purpose hardware. See Final
Act. 4-5. Appellant contends claim 1 has sufficiently more to transform the
claim from an allegedly abstract idea into patent-eligible subject matter
because:
The apparatus of claim 1 is ... not simply a generic
computer structure that serves to perform generic computer
functions that are well-understood, routine, and conventional
activities previously known to the industry. To the contrary, the
apparatus of claim 1 is a particular machine with a specific
purpose e.g., controlling access to particular memory cells by
obscuring their addresses (i.e., the location/address within
memory of the illegitimately sought information) by encryption.
the “input memory address” as “an address of a memory,” but does not
define the size of the address. Thus, in at least one embodiment, the “input
memory address” can be a single memory address that comprises a single bit
value. Further, the claim recites a “cryptographic key” and a “divisor,” but
also fails to define the sizes of the aforementioned recitations. Thus, in at
least one embodiment, the “cryptographic key” and “divisor” can also be
single bit values. Therefore, the recited “multiplication” and “modulo
operation” can merely be simple mathematical operations performed on the
aforementioned single bit values. We agree with the Examiner’s conclusion
that such mathematical operations, at the very least, could clearly be
performed mentally or with pencil and paper.
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The apparatus of claim 1 and the hardware elements associated
with it represent meaningful limitations that transforms data
such that the claim as a whole amounts to “significantly more ”
than the abstract idea itself The apparatus of claim 1 thus in
effect “applies the judicial exception with, or by use of, a
particular machine”.
The apparatus of claim 1 also represents “improvements
to another technology of technical fieldSpecifically, claim 1
provides improvements to the field of encrypted memory device
access, more specifically improvements to the field of memory
address encryption for securely accessing memory devices. The
apparatus of claim 1 includes “a specific limitation other than
what is well-understood, routine, and conventional in the
field’'.
App. Br. 7 (Appellant’s emphasis omitted; panel’s emphasis added).
The Examiner responds:
[T]he independent claims merely relate to reading a memory
address which every computing device does when reading from
memory and then applying mathematical operations to this value
(the dependent claims provide more detail to the mathematics
applied not to the device itself). There is no protection, and
therefore no improvement, of the physical device provided in
the claims as there are only steps related to obtaining a memory
address and applying the mathematical operations related to
encryption to said memory address.
Ans. 3 (emphasis added).
We do not agree with Appellant’s argument. The issue before us is
what is claimed, rather than what is disclosed in Appellant’s Specification.
Beyond a general allegation that the improvement (i.e., the protection of the
memory addresses from unauthorized access via the obscuring of the
memory address) is due to the claimed invention, Appellant’s argument fails
to specify particular limitations in claim 1 which provide the technical
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improvement disclosed in Appellant’s Specification and argued by
Appellant.
We agree with the Examiner that, besides the recited mathematical
operation, claim 1 merely recites: (a) steps related to obtaining a memory
address and applying the mathematical operation to the obtained memory
address; and (b) well-understood, routine, and conventional elements found
in a general purpose computer device (e.g., “hardware apparatus,”
“computer, “interface,” “module,” etc.). See Ans. 2-3. Such recitations are
not sufficient to transform claim 1 from an abstract idea into patent-eligible
subject matter. In light of the above, the Examiner correctly concluded that
claim 1 does not amount to significantly more than an abstract idea.
D. Other 101 Arguments
Appellant further contends the Examiner’s rejection of claim 1 under
35 U.S.C. § 101 is inconsistent with examination guidelines issued by the
Office. See App. Br. 8-11. More specifically, Appellant contends:
The first of [the] examples [included in the USPTO’s published
“Abstract Idea Examples” corresponding to the 2014 Interim
Guidance on Subject Matter Eligibility] involves hypothetical
claims directed to “isolating and removing malicious code from
electronic messages”. Notably, the [USPTO] indicates that
these hypothetical claims are not directed to an abstract idea,
despite being no less directed to a “mathematical operation”
than the presently pending claims. A second [example] is
directed to an actual case, DDR Holdings, LLC v. Hotels.com.
The claims in DDR Holdings were directed to the automatic
generation and transmitting of web pages in response to
activation of a link using data identified with a source web page
having certain visually perceptible elements. These claims were
held by the [Federal Circuit] to be directed to eligible subject
matter, despite their involving “data manipulation. ” As the
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court noted, the claims at issue did not recite a mathematical
algorithm[.] The same is true of the pending claims — they
clearly do not recite a mathematical algorithm[.]
. . . [The USPTO’s May 2016 Update: Memorandum —
Recent Subject Matter Eligibility Decisions (Enfish, LLC v.
Microsoft Corp. and TLI Communications LLC v. A. V
Automotive, LLC)] notes that the [Federal Circuit] recently held
[in Enfish] that “claimed database software designed as a ‘self-
referential’ table is patent eligible under 35US.C. § 101 because
it is not directed to an abstract idea.” The memorandum further
notes that . . . claims directed to improvements in computer-
related technology, “including claims directed to software, are
not necessarily abstract. ” . . .
A review of the pending independent claims . . . indicates
that each claim is directed to specific improvements in
computer-related technology. More specifically, the claims are
directed to [an improved] apparatus that, among other things,
[encrypts] memory addresses by mapping the input memory
address to the encrypted memory address by conducting
multiplication and modulo operations using both a
cryptographic key and a divisor. Thus, the present claims are
directed to improvements in computer-related technology.
App. Br. 8-10 (Appellant’s emphasis omitted; panel’s emphasis added).
The Examiner responds:
[N]one of [the] decisions or memorandums cited by Appellant
relate to the Abstract Idea of Mathematical Relationships. The
claims in these decisions are shown to be more than an Abstract
Idea, however, these claims are drastically different and
therefore do not relate to the present claims. Furthermore, cited
portions [of] the memorandums related to “describing a claim at
a high level of abstraction” are not applicable . . . [because] the
Examiner has directly tied the specific claim language to the
identified Abstract Idea and [the] “additional elements.”
Ans. 4 (emphasis added).
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We are not persuaded by Appellant’s argument. Regarding the
hypothetical claims in the USPTO’s published “Abstract Idea Examples”
corresponding to the 2014 Interim Guidance on Subject Matter Eligibility,
we agree with the Examiner that the hypothetical claims are drastically
different from claim 1, and we disagree with Appellant’s characterization of
the hypothetical claims as being directed to a “mathematical operation.” See
Ans. 4; see also App. Br. 9. Instead, the hypothetical claims are directed to
physically isolating a received communication on a memory sector and
extracting malicious code from the communication to create a sanitized
communication in a new data file. Furthermore, the hypothetical claims
recite the technical details as to how the processor physically isolates the
received communication, extracts the malicious code, and creates the
sanitized communication in a new data file. As previously described, such
technical details are not present in claim 1.
Regarding Appellant’s argument that claim 1 is similar to the claims
in DDR Holdings, LLCv. Hotels.com, 773 F.3d 1245, 1257 (Fed. Cir. 2014),
this argument is also not persuasive. Appellant states that, in DDR, the court
stated that the claims at issue did not recite a mathematical algorithm, and
merely alleges that the same is true of claim 1 (i.e., that claim 1 clearly does
not recite a mathematical algorithm). See App. Br. 9. However, Appellant
provides no persuasive analysis as to why claim 1 is similar to the claims at
issue in DDR. In DDR, the court determined that the claims at issue were
necessarily rooted in computer technology in order to address the Internet-
centric problem of how to provide user access to computer-implemented
applications over the Internet. DDR, 773 F.3datl257. In contrast, the
mapping of an input memory address to an output memory address via a
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mathematical operation (i.e., multiplication and modulo operation), as
recited in claim 1, is not necessary rooted in computer technology, as the
claim fails to link either the input memory address or output memory
address to any functionality performed by the claimed computer or hardware
apparatus.
Further, Appellant’s argument that claim 1 is similar to the claims in
Enflsh, 822 F.3d at 1335, is also not persuasive. In Enflsh, the court
determined that the claims at issue were directed to a specific improvement
in computer functionality embodied in a self-referential table for a computer
database as recited in the claims. Enfish, 822 F.3d at 1336-38. Unlike the
claims in Enfish, claim 1 fails to recite the technical details that describe the
argued improvement of securing of the memory address from unauthorized
access via the encryption of the memory address, as previously described.
In light of the above, we sustain the rejection of claims 1-8, 17, and
19-21 under 35 U.S.C. § 101.
E. Other Issues
Appellant also argued the Examiner’s finding that claims 1-8 and 17
invoke 35 U.S.C. § 112(f) is erroneous. See App. Br. 11-13. Regarding
these claims, the Examiner found these claims invoked 35 U.S.C. § 112(f)
due to the recitation of the limitations “interface configured to,” “unit
configured to,” and “module configured to,” because the aforementioned
limitations used generic placeholders (i.e., “interface,” “unit,” and
“module”) coupled with functional language “configured to” without
reciting sufficient structure to achieve the function. See Final Act. 3; see
also Ans. 5. We agree with the Examiner that claims 1-8 and 17 invoke
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35 U.S.C. § 112(f) for the reasons provided by the Examiner. Although we
are not required to reach this issue (as the Examiner did not issue a rejection
based on the finding that claims 1-8 and 17 invoke 35 U.S.C. § 112(f) (see
Final Act. 3; see also Ans. 5)), we do so as an exercise of our discretion.
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1-8, 17, and 19-
21 under 35 U.S.C. § 101.
(2) Claims 1-8, 17, and 19-21 are not patentable.
DECISION
We affirm the Examiner’s rejections of claims 1-8, 17, and 19-21
under 35 U.S.C. § 101.
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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