Ex Parte Kahl

Patent Trial and Appeal Board

Aug 20, 2014

10513652 (P.T.A.B. Aug. 20, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/513,652 11/05/2004 Helmut Kahl WACHP003 4331
25920 7590 08/20/2014
MARTINE PENILLA GROUP, LLP
710 LAKEWAY DRIVE
SUITE 200
SUNNYVALE, CA 94085
EXAMINER
TRAN, ELLEN C
ART UNIT PAPER NUMBER
2433
MAIL DATE DELIVERY MODE
08/20/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HELMUT KAHL
____________

Appeal 2011-007443
Application 10/513,652
Technology Center 2400
____________

Before JOSEPH F. RUGGIERO, CAROLYN D. THOMAS, and
JEFFREY S. SMITH, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Final Rejection of
claims 1–8, 11, and 13–25, all of the pending claims. Claims 1–9, 10, and
12 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse, and enter a new ground of rejection in accordance with
37 C.F.R. § 41.50(b).
Rather than reiterate the arguments of Appellant and the Examiner,
we refer to the Appeal Brief (filed Sep. 21, 2010), the Answer (mailed Nov.
29, 2010), and the Reply Brief (filed Jan. 31, 2011) for the respective details.
We have considered in this decision only those arguments Appellant actually
raised in the Briefs. Any other arguments which Appellant could have made
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but chose not to make in the Briefs are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii).

Appellant’s Invention
Appellant’s invention relates to calculating the modular inverse of a
value E in relation to a module M. A breakdown of the module M into at
least two factors M1 and M2 is determined and a respective auxiliary value
R1, R2 is calculated for each of the M1 and M2 factors. Each auxiliary
value R1, R2 is the modular inverse of the value E in relation to the
respective factor M1 and M2. The modular inverse R is calculated using at
least the calculated auxiliary values R1, R2. See generally Abstract.

Claim 1 is illustrative of the invention and reads as follows:

1. A method for calculating the modular inverse of a value E in
relation to a module M, comprising the steps of:
a) determining a breakdown of the module M into at least two factors
M1, M2,
b) calculating a respective auxiliary value R1, R2 for each of the
factors M1, M2 determined in step a), wherein each auxiliary value R1, R2
is the modular inverse of the value E in relation to the respective factor M1,
M2 as module, such that R1 = 1/E mod M1 and R2 = 1/E mod M2 hold, and
c) calculating the modular inverse of the value E in relation to the
module M at least using the auxiliary values R1, R2 calculated in step b),
wherein the method is used for a cryptographic application.

The Examiner’s Rejections
The Examiner’s Answer relies on the following prior art references:
Shimbo US 2002/0126838 A1 Sep. 12, 2002
(filed Jan. 22, 2002)
Chen US 2005/0185791 A1 Aug. 25, 2005
(filed Dec. 19, 2000)
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Application 10/513,652

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Hopkins US 2005/0190912 A1 Sep. 1, 2005
(filed Mar. 26, 2001)

Claims 1–8, 11, and 13–25, all of the appealed claims, stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Chen in view of
Hopkins and Shimbo.1

ANALYSIS
Appellant contends, with respect to the obviousness rejection of each
of the appealed independent claims 1, 14, and 18, the Examiner has not
established an adequate basis for the proposed combination of Chen,
Hopkins, and Shimbo. According to Appellant, the Examiner has not
adequately explained how and in what manner the individually applied
references would be combined to arrive at the claimed invention.2 App. Br.
10; Reply Br. 6.
We agree with Appellant. While the Examiner has undertaken a
detailed analysis of how the various claimed limitation are allegedly found
in different ones of the applied references, no obviousness rationale is set
forth for the proposed combination references. Ans. 3–4. Again, in the
“Response to Argument” section of the Answer, the Examiner summarizes
how each of the claimed limitations are found in the different references, but
has not explained why and how a skilled artisan would combine the
references to arrive at the claimed invention. Ans. 9–10. Accordingly, we

1 Although the Examiner did not include claims 23–25 in the listing of
claims subject to this rejection, claims 23–25 are discussed by the Examiner
in the body of the rejection. Ans. 7.
2 Appellant has made other arguments. We do not reach these arguments
since the argument discussed infra is dispositive of this rejection.

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find the Examiner’s stated position does not provide a valid articulated line
of reasoning to support the conclusion of obviousness. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007).
In view of the above discussion, because we are of the opinion that the
proposed combination of references set forth by the Examiner does not
support the obviousness rejection, we do not sustain the rejection of
independent claims 1, 14, and 18, or the rejection of claims 2–8, 11, 13, 15–
17, and 19–25 dependent thereon.
NEW GROUND OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject
appealed claims 1–8, 11, and 13–25 under 35 U.S.C. § 101 as being directed
to a non-statutory subject matter for the following reasons.
Pursuant to § 101, an inventor may obtain a patent for “any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” 35 U.S.C. § 101. Although Appellant’s
claims are nominally process claims that fall within one of the four subject
matter categories, these claims may nevertheless still be ineligible if they
encompass laws of nature, physical phenomena, or abstract ideas. Diamond
v. Chakrabarty, 447 U.S. 303, 309 (1980).3
We find that claims 1–8, 11, and 13–25 are directed to a mathematical
algorithm for calculating the modular inverse of a value, i.e., an abstract
idea. The Supreme Court has recently reaffirmed that fundamental concepts,
by themselves, are ineligible abstract ideas. Alice Corp. v. CLS Bank Int’l,

3 Although the preambles of independent claims 14 and 18 recite,
respectively, a “computer program product” and a “portable data carrier,”
the bodies of these claims recite method steps that are identical to those
recited in independent claim 1.
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573 U.S. ___, No. 13-298, slip op. 1 at 10 (June 19, 2014). We recognize
that independent claims 1, 14, and 18 conclude with an intended use clause
“used for a cryptographic application” that applies the mathematical
calculation steps to a specific application. A claim may be patent eligible if
it includes additional inventive features such that the claim scope does not
solely capture the abstract idea. Alice Corp., 573 U.S. ___, slip op. at 6. A
claim reciting an abstract idea, however, does not become eligible “merely
by adding the words ‘apply it.’” Bancorp Servs., LLC v. Sun Life Assurance
Co. of Can. (U.S.), 687 F.3d 1266, 1276 (Fed. Cir. 2012).
We additionally note independent claim 14 recites “[a] computer
program product which includes a computer program stored on a computer-
readable storage medium. . .” (Emphasis added). The broadest reasonable
interpretation of the “computer readable storage medium” language of
independent claim 14, when read in light of Appellant’s Specification, is
inclusive of transitory propagating signals. See Ex parte Mewherter,
107 USPQ2d 1857, 1862 (PTAB 2013) (precedential). “A transitory,
propagating signal [however] . . . is not a ‘process, machine, manufacture, or
composition of matter.’ [These] four categories define the explicit scope
and reach of subject matter patentable under 35 U.S.C. § 101; thus, such a
signal cannot be patentable subject matter.” In re Nuijten, 500 F.3d 1346,
1357 (Fed. Cir. 2007).

DECISION
The rejection of claims 1–8, 11, and 13–25 under 35 U.S.C. § 103(a)
is reversed.
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In the new ground of rejection, we have rejected claims 1–8, 11, and
13–25 under 35 U.S.C. § 101.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:

(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner . . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record . . . .

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.
§ 41.50(f).
REVERSED
37 C.F.R. § 41.50(b)

cam