Ex Parte Hayek

Patent Trial and Appeal Board

Jun 28, 2016

13066840 (P.T.A.B. Jun. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/066,840 04/25/2011
24972 7590 06/30/2016
NORTON ROSE FULBRIGHT US LLP
666 FIFTH A VE
NEW YORK, NY 10103-3198
FIRST NAMED INVENTOR
Jan Hayek
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.
1019116755 8236
EXAMINER
BEHESHTI SHIRAZ!, SAYED ARESH
ART UNIT PAPER NUMBER
2435
NOTIFICATION DATE DELIVERY MODE
06/30/2016 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):
nyipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAN HAYEK
Appeal2014-003716
Application 13/066,840
Technology Center 2400
Before IRVINE. BRANCH, KEVIN C. TROCK, and NABEEL U. KHAN,
Administrative Patent Judges.
BRANCH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
15. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal2014-003716
Application 13/066,840
CLAIMED SUBJECT MATTER
The claims are directed to protecting a circuit from cryptoanalytic
side-channel attacks. Spec., Abstract.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A computer-implemented method for protecting a circuit,
which is equipped for executing functional cryptographic
operations according to execution instructions, from
cryptoanalytic side-channel attacks via one of differential power
analysis (DP A), simple power analysis (SP A) or electromagnetic
analysis (EM), comprising:
executing, by a computer processor, the functional
cryptographic operations on data requested to be one of
encrypted and decrypted to output usable data; and
executing, by the processor, nonfunctional dummy
cryptographic operations to produce non-usable data, to decrease
a signal to noise ratio for disguising the functional cryptographic
operations.
REJECTIONS
Claims 1, 8, and 11 stand rejected under 35 U.S.C. § 112(a) or 35
U.S.C. § 112 (pre- AIA), first paragraph, as failing to comply with the
written description requirement. 1 Final Act. 2-3. 2
1 The Examiner's Answer (see Ans. 3) is ambiguous with respect to whether
the rejection of claims 1, 8, and 11 is maintained. The rejection is not listed
under the heading "Grounds of Rejection to be reviewed on Appeal," but
the Examiner responds to Appellant's arguments as if the rejection is
maintained, and the Examiner does not identify the rejection as having been
withdrawn. Accordingly, because Appellant presents a response to the
Examiner's Answer in the Reply Brief, we treat the Examiner's failure to list
the rejection as harmless error and consider it maintained.
2 Final Office Action (mailed May 22, 2013).
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Application 13/066,840
Claims 1, 2, 8, 9, and 11-13 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Liardet (US 2009/0034724 Al; publ. Feb. 5, 2009) and
Park (US 5,796,826; iss. Aug. 18, 1998). Final Act. 4--7. 3
Claims 3-7 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Liardet, Park, and Ito (US 2003/0048903 Al; publ. Mar. 13 2003).
Final Act. 7-9.
Claim 10 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Liardet, Park, and Anderson (US 2005/0268303 Al; publ. Dec. 1,
2005). Final Act. 9-10.
Claims 14 and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Liardet, Park, and Snell (US 2003/0223580 Al; publ.
Dec. 4, 2003). Final Act. 10-11.
OPINION
Rejection under 35 USC§ 112
The Examiner rejected claims 1, 8, and 11under35 U.S.C. § 112 for
failing to comply with the written descnpt10n requirement. Specifically, the
Examiner finds that claim l's "produce non-usable data, to decrease a signal
to noise ratio for disguising the functional cryptographic operations" is not
described in the Specification in such a way as to reasonably convey to one
skilled in the relevant art that the inventor had possession of the claimed
invention at the time the application was filed. Final Act. 2-3. Claims 8 and
11 recite commensurate subject matter.
3 The Final Office Action makes a number of errors in headings with respect
to listing the claims rejected under that heading. Appellant's Appeal Brief
corrects the Examiner's mistake. The rejections listed here follow the
Appeal Brief headings. See App. Br. 4--6.
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Appeal2014-003716
Application 13/066,840
Appellant asserts that "[ o ]ne of ordinary skill in the art would
understand a signal-to-noise ratio to refer to a measure of a level of a desired
signal to a level of background noise" and that Appellant's Specification
"describes the nonfunctional cryptographic operations as non-usable data."
App. Br. 3 (citing Spec. 4, 11. 20-29). Appellant argues further that "in a
signal-to-noise ratio, the nonfunctional cryptographic operations correspond
to noise, while the functional cryptographic operations correspond to
signals." Id. Appellant continues that "producing non-usable data decreases
a signal-to-noise ratio and disguises functional cryptographic operations, as
recited in the independent claims." Id. 3--4.
We do not find Appellant's Specification to describe "non-usable
data" in such a way as to reasonably convey to one skilled in the art that
Appellant has possession of the invention at the time of the application for
patent. The Specification passage cited by Appellant reads as follows:
"Nonfunctional cryptographic operations," however, are
understood to be operations which do not fulfill a functional
purpose in the corresponding device or in the corresponding
circuit but are based on, for example, randomly generated keys
or simulated keys, or they supply random data. Such
nonfunctional cryptographic operations may optionally also be
referred to as so-called dummy operations. Within the scope of
the present invention, such nonfunctional cryptographic
operations are performed primarily or exclusively for masking
the functional cryptographic operations, as mentioned above.
Spec. 4, 11. 20-29.
We agree with the Examiner (Ans. 5---6) that the cited passage does
not mention producing "non-usable" data such that one of ordinary skill in
the art would understand that "non-usable" data are the product of a
nonfunctional cryptographic operation and are actually used---contrary to
being referred to by Appellant as "non-usable"-to mask functional
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Appeal2014-003716
Application 13/066,840
cryptographic operations. We are not persuaded by Appellant's argument
that the term is understandable in the context of the claim because the argued
limitation was not present in the claim at the time of the application. See
Spec. 11-13.
Hence, we sustain the Examiner's decision to reject claims 1, 8, and
11 under 35 U.S.C. § 112, as failing to comply with the written description
requirement.
Rejections under 35 USC§ 103(a)
Appellant argues the claims based on the same arguments, only
nominally arguing the rejections under separate headings. See App. Br. 4---6.
Accordingly, the appeal turns on the rejection of claim 1 over Liardet and
Park and whether the combination of Liardet and Park teaches or suggests
"executing ... nonfunctional dummy cryptographic operations to produce
non-usable data, to decrease a signal to noise ratio for disguising the
functional cryptographic operations.''
The Examiner finds that Liardet discloses all elements of claim 1,
except that Liardet does not explicitly disclose "non-functional dummy
cryptographic operations to produce non-usable data, to decrease a signal to
noise ratio." Final Act. 4--5 (citing Liardet i-fi-17, 11, 13, 40-42, and Figs. 4,
5). The Examiner cites Park (7:33-37) for the missing limitation,
concluding that claim 1 would have been obvious in view of the
combination for the purpose of producing dummy cryptographic data. Final
Act. 5.
Appellant contends that: 1) Liartdet's processes all produce usable
data; 2) Park is concerned with "increasing" signal-to-noise; and 3) Park's
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Appeal2014-003716
Application 13/066,840
operations on the dummy regions produce usable data. Id.; see also Reply
Br. 2-3.
We are unpersuaded of error for the reasons stated by the Examiner.
Ans. 7-8. We note the following for emphasis.
Appellant's arguments are premised on the Examiner having
incorrectly construed "non-usable." App. Br. 4---6; Reply Br. 2-3. But
Appellant does not provide argument or evidence sufficient to persuade us
that the Examiner's construction of non-usable is unreasonably broad.
Further, Appellant's assertion that "[d]ummy data is purposeful, but
not usable because it is merely noise that is not able to be decrypted or
encrypted into a meaningful signal" (Reply Br. 2) is inherently contradictory
in the context of the claim. Generating "noise" for the purpose of altering
signal:noise is a use.
But to whatever extent Appellant argues that "executing" operations
by a processor, whether functional or non-functional and without regard to
the purpose for doing so (i.e., "to output usable data," "to produce non-
usable data," "to decrease a signal to noise ratio," "for disguising the
functional cryptographic operations") is unobvious, we are not persuaded.
We do not find that these new uses for old processes (i.e., Liardet's
executing operations with an integrated circuit (i-f 13)) would have yielded
unpredictable results. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1161 (Fed. Cir. 2007) ("'The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results"' (quoting KSR Int'! Co. v. Teleflex Inc., 550
U.S.398,416(2007D.
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Application 13/066,840
Accordingly, we sustain the Examiner's decision to reject claim 1.
We also sustain the Examiner's rejections of the remaining claims argued on
the same grounds. App. Br. App. Br. 4---6; Reply Br. 2-3.
DECISION
We sustain the Examiner's decision to reject claims 1-15.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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