Ex Parte Kocher

Patent Trial and Appeal Board

Jun 6, 2017

13245054 (P.T.A.B. Jun. 6, 2017)

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.
13/245,054 09/26/2011 PAUL C. KOCHER 10314.0052-04000 8560
15695 7590
Rambus/Finnegan
901 New York Ave., NW
Washington, DC 20001
06/08/2017 EXAMINER
MANDEL, MONICA A
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
06/08/2017 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):
regional-desk @ finnegan. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL C. KOCHER
Appeal 2015-0037781
Application 13/245,0542
Technology Center 3600
Before PHILIP J. HOFFMANN, BRADLEY B. BAYAT, and
TARA L. HUTCHINGS, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—7 and 27-40. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
1 Our decision references Appellant’s Appeal Brief (“App. Br.,” filed Oct. 6,
2014) and Reply Brief (“Reply Br.,” filed Jan. 28, 2015), and the Examiner’s
Answer (“Ans.,” mailed Nov. 28, 2014) and Final Office Action (“Final
Act.,” mailed Jan. 29, 2014).
2 Appellant identifies Cryptography Research, Inc. as the real party in
interest. App. Br. 1.
Appeal 2015-003778
Application 13/245,054
CLAIMED INVENTION
Appellant’s claimed invention relates to “methods and apparatuses for
securing payment cards against external monitoring attacks.” Spec. 1,
11. 12-14.
Claims 1, 27, and 34 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A portable cryptographic hardware token for
deriving cryptographic authentication codes for securing
transactions, said token operable to limit the number of times
secret keys are used, thereby providing protection against
external monitoring attacks, comprising:
(a) a memory configured to store a value for each of a
plurality of keys, each of said plurality of keys associated with a
different one of a plurality of levels, said plurality of keys
comprising a top-level key, a plurality of intermediate-level keys,
and a lowest-level key, said plurality of intermediate-level keys
comprising at least
a second-to-lowest level key,
a third-to-lowest level key, and
a fourth-to-lowest level key;
(b) a processor configured to perform a key update
operation, wherein said key update operation comprises
communicating with said memory,
receiving as an input from said memory a stored
value of one of said keys at a particular one of said
plurality of levels, and
operating on said received key value using a block
cipher to generate a value for a key one level below said
particular level; and
(c) a timer;
wherein said processor is further configured to use said
key update operation and said timer to periodically derive new
key values comprising:
(i) at least one new value for said lowest-level key,
where said stored value of said second-to-lowest level key
is an input to said key update operation;
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(ii) at least one new value for said second-to-lowest
level key, where said stored value of said third-to-lowest
level key is an input to said key update operation, and
where said at least one new value for said second-to-
lowest level key is derived after deriving said at least one
new value for said lowest-level key; and
(iii) at least one new value for said third-to-lowest
level key, where said stored value of said fourth-to-lowest
level key is an input to said key update operation, and
where said at least one new value for said third-to-lowest
level key is derived after deriving said at least one new
value for said second-to-lowest level key;
and wherein said token is operable to secure a transaction
with a server based on a value derived from said at least one new
value for said lowest-level key.
REJECTIONS
Claims 1—7 and 27-40 are rejected under 35 U.S.C. § 101 as directed
to non-statutory subject matter.
Claims 5—7, 31—33, 35, 39, and 40 are rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement.
Claims 1—7 and 27-40 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite for failing to particularly point out and distinctly
claim the subject matter that Appellant regards as the invention.
Claims 1—3, 27—29, 34, 36, and 37 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Richards (US 6,069,957, iss. May 20, 2000)
and Akiyama (US 5,784,464, iss. July 21, 1998).
Claims 4, 30, and 38 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Richards, Akiyama, and admitted prior art.
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Claims 5—7, 31—33, 35, 39, and 40 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Richards, Akiyama, and Schwenk
(US 6,222,923 Bl, iss. Apr. 24, 2001).
Claims 1—7 are rejected under 35 U.S.C. § 102(e) as anticipated by
Akiyama.
ANALYSIS
Non-Statutory Subject Matter
In rejecting claims 1—7 and 27-40 under 35 U.S.C. § 101, the
Examiner finds that “the claims are directed to the abstract idea of
formulating mathematical relationships between values.” Ans. 2.3
However, when considering whether the claims are directed to a patent
ineligible concept, such as an abstract idea, the inquiry is not whether the
invention involves an abstract idea. Enfish, LLC v. Microsoft Corp., 822
F.3d 1327, 1335, 1335 (Fed. Cir. 2016) (citing Mayo Collaborative Services
v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293 (2012)). Rather, the claims
are considered in their entirety, in light of the Specification, to ascertain
whether their character as a whole is directed to excluded subject matter. Id.
(citing Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346
(Fed. Cir. 2015)).
We disagree with the Examiner’s conclusion that the claims are
directed to an abstract idea of formulating mathematical relationships
between values. Rather, we conclude that the character of the claims as a
3 The Answer identifies each page as “Page 1.” We refer to the pages in the
Answer sequentially, beginning with the page entitled “EXAMINER’S
ANSWER” as page 1.
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whole is directed to improving an existing technology, encryption security.
Our conclusion is supported by the Specification’s description of the
invention as directed to “securing payment cards against external monitoring
attacks,” as well as the description of problems inadequacies in conventional
technology resulting in attackers gaining access to cryptographic keys.
Spec. 1-3.
Because we find that the claims are not directed to ineligible subject
matter, we do not reach step two of the test set forth in Alice Corp. Pty Ltd.
v. CLSBankInt 7, 134 S. Ct. 2347, 2354 (2014). Enfish, 822 F. 3d at 1339.
Therefore, we do not sustain the Examiner’s rejection of claims 1—7 and 27—
40 under 35 U.S.C. § 101.
Written Description
Whether a specification complies with the written description
requirement of 35 U.S.C. § 112, first paragraph, is a question of fact, and is
assessed on a case-by-case basis. See, e.g., Purdue Pharma L.P. v.
Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (citing Vas-Cath, Inc.
v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)). The disclosure, as
originally filed, need not literally describe the claimed subject matter (i.e.,
using the same terms or in haec verba) in order to satisfy the written
description requirement. But the Specification must convey with reasonable
clarity to those skilled in the art that, as of the filing date, Appellant was in
possession of the claimed invention. See id.
Claim 5 depends from claim 1, and further recites that the server is
configured to authenticate the token by “(e) using a value derived from said
server-side lowest-level key value during an attempt to authenticate said
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token;” and “(f) if said attempt to authenticate said token fails, repeating (c)
through (e) with another candidate key index value.” Claims 31 and 35
recite similar language. In rejecting claims 5—7, 31—33, 35, 39, and 40 under
35 U.S.C. § 112, first paragraph, the Examiner identifies limitations (e) and
(f), as recited in claim 5, and similarly recited in claims 31 and 35, as
lacking written description support. Final Act. 5—6. Appellant argues that
pages 14—15 of the Specification provide the requisite written description
support. In the Answer, the Examiner maintains the rejection, explaining
that the cited portions do not describe implementing authentication as part of
the invention. See Ans. 4—5. We agree with Appellant that pages 14—15 of
the Specification provide the requisite written description support. See, e.g.,
Spec. 15,11. 21—23 (describing “additional cryptographic authentication” for
large jumps in the value C).
In addition to the disclosure cited by Appellant, we note that claim 5,
as originally filed, recited “(e) using a value derived from said re-derived
lowest-level key value to attempt to authenticate said token;” and “(f) if said
authentication attempt fails, repeating (c) through (e) with another candidate
key index value close to said key index value obtained in (a).” Spec. 20,
11. 19—22. This originally-filed claim language is nearly identical to the
claimed subject matter at issue, and also conveys with reasonable clarity to
those skilled in the art that, as of the filing date, Appellant was in possession
of the claimed invention.
In view of the foregoing, we do not sustain the Examiner’s rejection
of dependent claims 5, 6, 7, 31—33, 35, 39, and 40 under 35 U.S.C. § 112,
first paragraph.
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Indefiniteness
In rejecting independent claim 1 under 35 U.S.C. § 112, second
paragraph, the Examiner takes the position that claim 1 is “unclear how the
token limits the number of times secret keys are used because it is unclear
what constitutes usage of the keys;” “it is unclear what constitutes limiting
the usage;” it is “unclear if the limiting and the usage recited in the preamble
is an additional function to the functions recited in the body of the claim;”
and it is “unclear what constitutes an ‘external monitoring attack.’” Final
Act. 7.
But we find that a person of ordinary skill in the art would understand
what is claimed when the claim is read in light of the Specification.
Namely, that “use” and “limits” in the preamble do not recite additional
functionality but rather describe the functionality achieved by the ordered
combination of elements recited in claims. See Reply Br. 9.
With respect to the phrase “external monitoring attack,” as recited in
claim 1 and similarly recited in claim 27, the Examiner finds that “the
determination of an attack is subjective” (Final Act. 7), and explains, in
response to Appellant’s arguments in the Appeal Brief, that “understanding
what an abstract or subjective thing is, such as beauty, does not preclude it
from being abstract or subjective” (Ans. 6). We disagree that an external
monitoring attack is an abstract or subjective thing, like beauty. Moreover,
the Examiner’s reply implicitly acknowledges that a person of ordinary skill
in the art would understand what is claimed when the claims are read in light
of the Specification. See Orthokinetics, Inc. v. Safety Travel Chairs, Inc.,
806 F.2d 1565, 1576 (Fed. Cir. 1986) (The test for definiteness under 35
U.S.C. § 112, second paragraph is whether “those skilled in the art would
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understand what is claimed when the claim is read in light of the
specification.”). We find that a person of ordinary skill in the art would
understand what is claimed when claims 1 and 27 are read in light of the
Specification, namely, than an external monitoring attack is an attack using
external monitoring to gather information correlated to a client device’s
internal operations. See, e.g., Spec. 3,11. 5—7.
The Examiner finds that claim 1 is indefinite because the term “stored
values of keys,” i.e., limitation (b), lacks antecedent basis. Final Act. 7.
However, in our view a person of ordinary skill in the art would understand
what is claimed when the claim is read in light of the Specification.
Specifically, we agree with Appellant that one of ordinary skill would
understand that the stored value refers to a value stored in memory of one of
the keys recited in limitation (a). See App. Br. 20—21.
With respect to claims 5, 31, and 35 the Examiner maintains that it is
unclear whether authentication occurs in the claim, because the claim
“positively recites an attempt to authenticate the token and also recites the
possibility that the attempt is not carried out.” Final Act. 8—9. But we agree
with Appellant that one of ordinary skill would understand that the server is
configured to use the value to attempt to authenticate the token, and steps (c)
through (e) are repeated if the token is not authenticated during the attempt
to authenticate. App. Br. 21—22.
With respect to claims 7 and 33, the Examiner finds that the language
“said server is further configured to obtain said candidate key index value
indirectly” is “unclear what comprises being configured to obtain something
indirectly since it is not clear with reference to what the obtaining is
indirectly.” Final Act. 8. The Examiner makes similar findings regarding
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similar language recited in claim 40. Id. at 9. We agree with Appellant that
the inquiry into the particular implementation for indirectly obtaining goes
to breadth, not indefmiteness. See App. Br. 22—11; see also In re Miller, 441
F.2d 689, 693 (CCPA 1971) (“[BJreadth is not to be equated with
indefmiteness.”). In the Answer, the Examiner does not dispute the
Appellant’s argument (App. Br. 22) that “indirectly” means “not directly,”
or that the Specification provides exemplary embodiments. Instead, the
Examiner reasons that a word having a definition nonetheless can be
indefinite, citing the word “beauty” as an example. Ans. 7—8. But the word
“indirectly,” unlike the term “beauty,” is not based on a subjective
determination of a person. We fail to see why, and the Examiner does not
adequately explain why, a person of ordinary skill in the art would be unable
to determine the metes and bounds of the claim, which is the test for
indefmiteness. See In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989) (During
examination, after applying the broadest reasonable interpretation to the
claim, if the metes and bounds of the claimed invention are not clear, the
claim is indefinite and should be rejected).
Regarding claim 34, the Examiner finds that the phrase “only the key
values affected by a change in said key index value are updated” is “unclear
[as to] “what key values are affected . . . because it is unclear if being
affected by a change in the key index value is actually the same thing as
being updated.” Final Act. 9. The Examiner also determines that “[t]he
phrase ‘each key update in said at least one key update operation’ does not
make grammatical sense.” Id. at 8. However, we agree with Appellant
(App. Br. 23—24) that the meaning is clear from the plain language of the
claim. For example, the language preceding steps (a) through (c) specifies
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that each step is performed “in said token.” And the language “each key
update” refers to an operation that occurs if there is more than one key
update operation performed.
In view of the foregoing, we do not sustain the Examiner’s rejection
of claims 1—7 and 27^40 under 35 U.S.C. § 112, second paragraph.
Obviousness
Independent Claims 1, 27, and 34, and Dependent Claims 2, 3, 28, 29, 36,
and 37
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting independent claims 1, 27, and 34 under 35 U.S.C. § 103(a) because
Richards does not disclose or suggest
wherein said processor is further configured to use said
key update operation and said timer to periodically derive new
key values comprising:
(i) at least one new value for said lowest-level key,
where said stored value of said second-to-lowest level key
is an input to said key update operation;
(ii) at least one new value for said second-to-lowest
level key, where said stored value of said third-to-lowest
level key is an input to said key update operation, and
where said at least one new value for said second-to-
lowest level key is derived after deriving said at least one
new value for said lowest-level key; and
(iii) at least one new value for said third-to-lowest
level key, where said stored value of said fourth-to-lowest
level key is an input to said key update operation, and
where said at least one new value for said third-to-lowest
level key is derived after deriving said at least one new
value for said second-to-lowest level key[,]
as recited in claim 1, and similarly recited in claims 27 and 34. App. Br. 26—
29. The Examiner relies on Richards as disclosing the argued limitations.
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Final Act. 11 (citing Richards, col. 11,11. 34—36, col. 11,1. 1—col. 12,1. 41,
Fig. 14).
Richards is directed to encryption and decryption systems for
communication systems, such as cable television networks and video
conferencing systems. Richards, col. 1,11. 6—8. With reference to Figure 14,
Richards describes delivering a group of decryption keys via an in-band
channel. Id. at col. 11,11. 23—26. The keys are transmitted as a hierarchy,
wherein one key unlocks another key, and the last key unlocked is used to
decrypt program material. Id. at col. 1,11. 27—29. Specifically, a user
encryption variable key is used to decrypt a channel access key (CAK), the
CAK decrypts a control channel key (CCK), the CCK is used to decrypt the
program key (PK), the PK is used to decrypt the segment key (SK), and the
SK is used to decrypt content. Id. at col. 11,11. 15—22, Fig. 14; see also id.
at Fig. 19, col. 12,11. 11—17 (describing decrypting new key from old
decryption key).
The Examiner takes the position that decrypting a key, as described by
Richards, discloses the claimed “deriving,” as recited in claim 1, because
“decryption obviously derives data.” Ans. 8. More specifically, the
Examiner reasons that because Richards describes “the decryption of new
keys utilizing] other keys in the hierarchy,” Richards meets the argued
claim language.
But encrypting and decrypting a key does not change a value of a key;
instead, it locks and unlocks a value of the key so that it is not otherwise
readily discemable. Richards describes updating its key values over time.
Richards col. 11,11. 34—36. But Richards achieves its update via encryption
hardware, which generates and sends, over the in-band channel, a new
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hierarchy of keys to the customer’s decryption hardware. See id. at col. 12,
11. 45—60. The customer’s decryption hardware then decrypts the keys
(using one key to unlock another, as described above) to learn “the value of
these keys.” Id. at col. 12,11. 59-64. Decrypting a hierarchy of keys, as
described by Richards, fails to describe or suggest the claimed key update
operation that periodically derives “new key values,” as required by the
claim language.
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claims 1, 27, and 34, and dependent claims 2, 3, 28, 29, 36,
and 37 under 35 U.S.C. § 103(a).
Dependent Claims 4—7, 30—33, 35, and 38—40
Claims 4—7, 30-33, 35, 38, and 39 each depend from one of claims 1,
27, and 34, respectively. The Examiner’s rejections of claims 4—7, 30—35,
and 3 8 40 do not cure the deficiencies in the rejection of independent claims
1, 27, and 34. Therefore, we do not sustain the Examiner’s rejections under
35 U.S.C. § 103(a) of dependent claims 4—7, 30-33, 35, and 38-40 for the
same reasons discussed above with respect to the independent claims.
Anticipation
The Examiner alternatively rejects claims 1—7 under 35 U.S.C.
§ 102(a) as anticipated by Akiyama, finding that Akiyama describes
hardware configurations that include a memory 19, a processor 16, and a
timer 17. See Final Act. 23. In the Answer, the Examiner explains that “the
structures of the claim were . . . interpreted as hardware configurations,” and
under this interpretation “the processor, memory[,] and timer disclosed by
Akiyama are in fact ‘configured to’ perform the functions of [cjlaims 1—7.”
But the Examiner does not identify, and we do not find, a description in
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Akiyama of any programming rendering Akiyama’s processor, memory, and
timer capable of performing the functions recited in claims 1—7. See
Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1380—81 (Fed. Cir.
2011) (the apparatus as provided must be programmed so that it is “capable”
of performing the recited function) (citing Microprocessor Enhancement
Corp. v. Texas Instruments, Inc., 520 F.3d 1367, 1375 (Fed. Cir. 2008). On
this record, the Examiner’s findings fail to adequately support a rejection of
claims 1—7 under 35 U.S.C. § 102(e). Accordingly, we do not sustain the
rejection of claims 1—7 under 35 U.S.C. § 102(e).
DECISION
The Examiner’s rejection of claims 1—7 and 27 40 under 35 U.S.C.
§ 101 is reversed.
The Examiner’s rejection of claims 5—7, 31—33, 35, 39, and 40 under
35 U.S.C. § 112, first paragraph, is reversed.
The Examiner’s rejection of claims 1—7 and 27 40 under 35 U.S.C.
§112, second paragraph, is reversed.
The Examiner’s rejections of claims 1—7 and 27-40 under 35 U.S.C.
§ 103(a) are reversed.
The Examiner’s rejection of claims 1—7 under 35 U.S.C. § 102(e) is
reversed.
REVERSED
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