Ex Parte Kocher

Patent Trial and Appeal Board

Aug 9, 2017

11977392 (P.T.A.B. Aug. 9, 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.
11/977,392 10/24/2007 Paul C. Kocher 10314.0052-02000 2478
15695 7590
Rambus/Finnegan
901 New York Ave., NW
Washington, DC 20001
EXAMINER
MANDEL, MONICA A
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
08/11/2017 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 2015-0068781
Application 11/977,3922
Technology Center 3600
Before ANTON W. FETTING, PHILIP J. HOFFMANN, 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—22. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Our Decision references Appellant’s Appeal Brief (“App. Br.,” filed
Dec. 1, 2014) and Reply Brief (“Reply Br.,” filed July 15, 2015), and the
Examiner’s Answer (“Ans.,” mailed June 1, 2015) and Final Office Action
(“Final Act.,” mailed Dec. 4, 2013).
2 Appellant identifies Cryptography Research, Inc. as the real party in
interest. App. Br. 1.
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Application 11/977,392
CLAIMED INVENTION
Appellant’s claimed invention relates to “methods and apparatuses for
securing payment cards against external monitoring attacks.” Spec. 1,
11. 16-17.
Claims 1 and 12 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A cryptographic device comprising:
(a) at least one memory containing a value of a secret
parameter; and
(b) a processor configured to perform a plurality of
cryptographic transactions, each said transaction involving a
cryptographically processed datum, where:
(i) each of said cryptographic transactions is
secured using a secret parameter;
(ii) said processor configured to reduce the
usefulness of information gathered through external
monitoring of said cryptographic device related to said
secret parameter by performing a plurality of
cryptographic update operations to derive an updated
value of said secret parameter at a different level within a
hierarchy of secret parameters, wherein deriving an
updated value of said secret parameter comprises applying
at least one invertible function to the value of said secret
parameter before said plurality of cryptographic
operations; and
(iii) said processor configured to store the updated
value of said secret parameter in said at least one memory
for use in at least one subsequent transaction; and
(c) an interface configured to output said datum to a
cryptographic processing device.
REJECTIONS
Claims 1—22 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
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Claims 1—22 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—7, 12—18, and 21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Schwenk (US 6,222,923 Bl, iss. Apr. 24, 2001) and
Morgan (US 6,185,685 Bl, iss. Feb. 6, 2001).
Claims 8—11, 19, 20, and 22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Schwenk, Morgan, and Hohle (US 6,101,477, iss Aug. 8,
2000).
Claims 1—11 are rejected under 35 U.S.C. § 102(b) as anticipated by
Bjerrum (US 5,311,595, iss. May 10, 1994).
ANALYSIS
Non-Statutory Subject Matter
Claims 1—11
In rejecting claims 1—11 under 35 U.S.C. § 101, the Examiner finds
that the claims are directed to ‘“a plurality of cryptographic update
operations to derive an updated value of said secret parameter[,]’ which is a
mathematical procedure for changing a value, thus an abstract idea.” Ans. 2.
Appellant argues that claims 1—11 are “not directed to generically
changing a value,” but rather to an improved “device for protecting
cryptographic keys[,] and a specific, novel, and nonobvious apparatus for
securing cryptographic transactions.” Reply Br. 5.
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
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F.3d 1327, 1335 (Fed. Cir. 2016) (citing Mayo Collaborative Services v.
Prometheus Labs., Inc., 566 U.S. 66, 70-71 (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 a mathematical procedure for changing a value. Instead, we
conclude that the character of the claims as a whole is directed to an
improved cryptographic device, such as a smartcard; namely, a
cryptographic device that protects cryptographic keys from attackers
gathering information by external monitoring. Our conclusion is supported
by the Specification’s description of the invention as directed to “securing
payment cards against external monitoring attacks” (Spec. 1,11. 15—17) and
“mak[ing] smartcards (and other cryptographic client devices secure even if
attackers are able to use external monitoring (or other) attacks to gather
information correlated to the client device’s internal operations” (id. at 3,
11. 3—5), as well as the description of inadequacies of securing information in
smartcards and other cryptographic devices (id. at 1,1. 22—2,1. 32).
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—11 under
35U.S.C. § 101.
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Claims 12—22
In rejecting claims 12—22 under 35U.S.C. § 101, the Examiner finds
that the claims are directed to ‘“a cryptographic update operation ... by
applying an invertible functionf,]’ which is a mathematical procedure for
changing a value, thus an abstract idea.” Ans. 3. Appellant argues that the
claims are not directed to an abstract idea, but rather an improved “method
of encrypting information to better protect it from external monitoring
attacks.” App. Br. 10; see also id. at 9, 11 (claims “recite a particular
solution to a problem to be solved, such as a threat from external monitoring
attacks[,]” are directed to an “improvement in the field of encryption[,]” and
“improve [] the functioning of the cryptographic operation”).
For reasons similar to those described above with respect to claims 1—
11, we find that the character of claims 12—22, when considered in their
entirety, in light of the Specification, is directed to a method for improving
an existing technology, encryption. See McRO, Inc. v. Bandai Namco
Games Am., Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016) (patent eligible
method claims directed to an improvement in computer animation, not an
abstract idea that merely invokes generic processes and machinery).
In the Answer, the Examiner disputes that the claim is directed to an
improvement in the field of encryption because the claimed steps are “well
understood, routine, conventional activities previously known in the field of
cryptography.” Ans. 5. And the Examiner asserts that “there is no evidence
to support” Appellant’s argument that the invention is directed to an
improvement in cryptography. Id. But the Examiner’s findings are not
adequately supported in light of Appellant’s Specification, which describes
how the claimed invention makes the cryptographic transactions less
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vulnerable to attackers gathering information by external monitoring. See
Reply Br. 9.
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, 134 S. Ct. at
2354. Enfish, 822 F. 3d at 1339. Therefore, we do not sustain the
Examiner’s rejection of claims 12—22 under 35 U.S.C. § 101.
Indefiniteness
In rejecting independent claim 1 under 35 U.S.C. § 112, second
paragraph, the Examiner takes the position that the phrase “usefulness of
information” is indefinite because it requires an exercise of subjective
judgement. Final Act. 3^4. Appellant argues that the Specification provides
objective measures of useful information. App. Br. 12—13 (citing Spec. 3,11.
7-10; 10,11. 19-21; 11,11. 10-22; 14,11. 22-29); see also Reply Br. 10.
We find that a person of ordinary skill in the art would understand
what is claimed when claim 1 is read in light of the Specification. For
example, the Specification describes that Appellant’s invention updates the
secret key value of a cryptographic client device, such as a smartcard,
sufficiently frequently, such as before each transaction. Spec. 3,11. 5—8. In
this way, any information leaked by the cryptographic transaction and
gathered by an attacker through external monitoring “no longer (or less)
usefully describe^] the new updated secret value [of the secret key].” Id.
at 3,11. 8—10. The Specification describes “information” as “useful” when it
“can help or enable an attacker to implement an actual attack.” Id. at 3,
11. 10-11. Unlike traditional cryptographic systems, which repeatedly use
the same secret value, the claimed invention’s process for frequently
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updating the secret key value causes any collected information to quickly
become obsolete. Id. at 3,11. 11—20.
Claim 1 recites that the process is configured to reduce the
“usefulness of information gathered through external monitoring ... by
performing a plurality of cryptographic update operations to derive an
updated value of said secret parameter.” We find that a person of ordinary
skill in the art would understand that the reduced “usefulness of
information” refers to a reduced correlation between information gathered
by external monitoring and the secret parameter value due to the claimed
update operations.
Claims 2—11 recite “[t]he device of claim . . .” in the preamble. The
Examiner takes the position that it is unclear whether the claims refer to the
cryptographic device or the cryptographic processing device. Final Act. 4.
However, we find that a person of ordinary skill in the art would understand
what is claimed when claims 2—11 are read in light of the Specification,
namely, than the claimed “device” refers to the cryptographic device recited
in the preamble of claim 1. See App. Br. 14; see also Reply Br. 10-11.
Claim 8 recites “where said device is a smartcard.” The Examiner
finds that the claim is indefinite because it is unclear whether the
cryptographic device or the cryptographic processing device is the
smartcard. Final Act. 4. However, we agree with Appellant that a person of
ordinary skill in the art would understand that “said device” recited in the
preamble of claim 8 refers to the cryptographic device recited in the
preamble of claim 1. See App. Br. 14; see also Reply Br. 11—12.
With respect to claim 9, the Examiner maintains that it is unclear what
constitutes “said cryptographic processing,” because there are “various
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cryptographic processes taking place in the claim.” Final Act. 4. Appellant
asserts that “cryptographic processing” is a typographical error for
“cryptographic processing device.” App. Br. 14; see also Reply Br. 12. In
our view, a person of ordinary skill in the art would understand what is
claimed when claim 9 is read in light of the Specification; namely, that
“cryptographic processing” is a typographical error and refers to the
cryptographic processing device recited in claim 1. See, e.g., Spec. 19,
claims 8—9.
With respect to claim 12, the Examiner finds that the language “within
a hierarchy” is recited twice in the same claim and it is “unclear if the
second recitation of a hierarchy is the same hierarchy as the first recitation of
a hierarchy.” Final Act. 4. We agree with Appellant that one of ordinary
skill would understand from the language of the claim that the second
recitation of “within a hierarchy” refers to the same hierarchy. See App. Br.
15; see also Reply Br. 13.
In view of the foregoing, we do not sustain the Examiner’s rejection
of claims 1—22 under 35 U.S.C. § 112, second paragraph.
Obviousness
Independent Claim 1, and Dependent Claims 2—7
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting independent claim 1 under 35 U.S.C. § 103(a) because Schwenk
does not disclose or suggest a processor configured to perform a plurality of
cryptographic transaction, where “said processor [is] configured to reduce
the usefulness of information gathered through external monitoring of said
cryptographic update operations to derive an updated value of said secret
parameter at a different level within a hierarchy of secret parameters,” as
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recited in claim 1, limitation (b)(ii). App. Br. 17—19. The Examiner relies
on Schwenk as disclosing the argued limitations. Final Act. 5 (citing
Schwenk col. 3,11. 11—15, 31—62). We have reviewed the cited portions of
Schwenk. Yet, we find nothing that discloses or suggests the argued
limitation.
Schwenk is directed to a method of securing a system protected by a
predefined hierarchy of cryptographic keys for a pay TV system against
unauthorized users. Schwenk col. 1,11.5—8. Schwenk describes a tree-type
key hierarchy for a pay TV system having five customers, each customer
receiving one of five individual cryptographic keys PKi—PK5, and being
situated on the lowest hierarchical level from the pay TV program provider.
Id. at col. 3,11. 24—29. In an example described with reference to Figure 1 of
Schwenk, customers 1^4 are authorized to receive a pay TV program, but
customer 5 is not. Id. at col. 3,11. 35—37. To achieve this distribution of
authorizations, customers 1—4 are grouped in the next higher hierarchical
level, having two subsets, each subset comprising two customers and
receiving an encrypted group key GKi and GK2 that is uniquely associated
with the subset. Id. at col. 3,11. 37-42, Fig. 1. Customers 1 and 2 calculate
encrypted group key GKi using their respective individual cryptographic
keys PKi, PK2; likewise, customers 3 and 4 calculate group key GK2 using
their respective individual keys PK3 and PK4. Id. at col. 3,11. 48—51.
Customer 5, on the other hand, cannot decode either group key GKi or GK2.
Id. at col. 3,11. 51—52. At the next highest hierarchical level is a common
key SK, which contains both subsets of customers. Id. at col. 3,11. 53—55;
Fig. 1. The encrypted common key SK is transmitted to the customers, and
customers 1—4 decode the common key using their respective group key
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GKi or GK2. See id. at col. 2,11. 55—57. The pay TV program broadcast by
the provider is encoded with common key SK, which customers 1—4 can
decode and receive, but customer 5 cannot. Id. at col. 3,11. 58—61.
Schwenk addresses a problem in which a dishonest customer (here,
customer 4) copies and distributes his assigned group key GK2 to a third
party without authorization, and the system operator, upon receiving copied
group key GK2, cannot identify which of the customers assigned to group
key GK2 (here, customers 3 and 4) is the pirate. Id. at col. 3,1. 63—col. 4,1.
8, Fig. 1. In this situation, Schwenk describes storing the suspect subset of
customers (here, customers 3 and 4), and splitting the suspect subset into
new subsets, such as subset 1 assigned to new group key GKi ’ having
customers 1 and 3, and subset 2 assigned new group key GK2’ having
customers 2 and 4. Id. at Fig. 2, col. 4,11. 11—17, Fig. 2. The newly
generated group keys GKi’ and GK2’ are sent to the individual customers,
and customer 4, the dishonest pirate, copies and distributes new group key
GK2’ to the third party. Id. at col. 4,11. 20—24. When the system operator
receives copied group key GK2’ the system operator determines the
intersection of the stored, suspect subset assigned to group key GK2 and the
subset assigned to the group key GK2’ to identify the dishonest customer as
customer 4. Id. at col. 4,11. 24—33.
The Examiner finds that Schwenk’s individual cryptographic key,
e.g., PKi, discloses the claimed “secret parameter.” Final Act. 5 (citing
Schwenk col. 3,11. 28, 31). And the Examiner takes the position that
transmitting a group key to a subset of customers, as disclosed by Schwenk,
discloses the claimed plurality of cryptographic update operations that
“derive an updated value of said secret parameter at a different level within a
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hierarchy of secret parameters,” as recited in claim 1. See Ans. 10—11
(citing Schwenk col. 3,11. 10—23); see also Final Act. 5 (citing Schwenk col.
3,11. 11—15, 31—62). The difficulty with the Examiner’s analysis is that
neither the group keys GKi, GK2 nor the common key SK constitute an
“updated value” of any the individual cryptographic keys PKi—PK5. Rather,
they are different keys. Indeed, Schwenk describes that upon identifying
customer 4 as the pirate, customer 4’s individual cryptographic key PK4,
which was never “updated” during Schwenk’s process for identifying the
dishonest customer, can be blocked from using the system. See Schwenk
col. 4,11. 33-36.
For at least this reason, we do not sustain the Examiner’s rejection of
independent claims 1 and dependent claims 2—7 under 35 U.S.C. § 103(a).
Independent Claim 12, and Dependent Claims 13—18 and 21
Independent claim 12 includes language substantially similar to the
language of claim 1, and stands rejected based on the same rationale applied
with respect to claim 1. Final Act. 9—10. Therefore, we do not sustain the
Examiner’s rejection under 35 U.S.C. § 103(a) of independent claim 12 and
dependent claims 13—18 and 21 for the same reasons set forth above with
respect to claim 1.
Dependent Claims 8—11, 19, 20, and 22
Claims 8—11, 19, 20, and 22 each depend from one of claims 1 and 12,
respectively. The Examiner’s rejection of claims 8—11, 19, 20, and 22 does
not cure the deficiencies in the rejection of independent claims 1 and 12.
Therefore, we do not sustain the Examiner’s rejection under 35 U.S.C.
§ 103(a) of dependent claims 8—11, 19, 20, and 22 for the same reasons
discussed above with respect to the independent claims.
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Anticipation
The Examiner rejects claims 1—11 under 35 U.S.C. § 102(b) as
anticipated by Bjerrum, finding that Bjerrum describes a cryptographic
device (i.e., a Smart Card) that includes at least one memory containing a
value of a secret parameter, a processor (i.e., a central data processing unit)
having a hardware configuration, and an interface (i.e., an input/ouput gate
for communication) having a hardware configuration. See Final Act. 14. In
the Answer, the Examiner explains that “the configuration of the processor
and interface are interpreted as hardware configurations” and “the
cryptographic device of Bjerrum possesses the necessary structure to
perform the functions” recited in claims 1—11. Ans. 13—14. But the
Examiner does not identify, and we do not find, a description in Bjerrum of
any programming rendering Bjerrum’s processor and interface capable of
performing the functions recited in claims 1—11. 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 Instr.,
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—11 under 35
U.S.C. § 102(b). Accordingly, we do not sustain the rejection of claims 1—
11 under 35 U.S.C. § 102(b).
DECISION
The Examiner’s rejection of claims 1—22 under 35 U.S.C. § 101 is
reversed.
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The Examiner’s rejection of claims 1—22 under 35 U.S.C. § 112,
second paragraph, is reversed.
The Examiner’s rejections of claims 1—22 under 35 U.S.C. § 103(a)
are reversed.
The Examiner’s rejection of claims 1—11 under 35 U.S.C. § 102(b) is
reversed.
REVERSED
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