Ex Parte MacKenzie et al

Board of Patent Appeals and Interferences

Dec 17, 2010

10183900 (B.P.A.I. Dec. 17, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte PHILIP D. MACKENZIE, and
MICHAEL KENDRICK REITER
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Appeal 2009-007332
Application 10/183,900
Technology Center 2400
________________

Before LANCE LEONARD BARRY, JOHN A. JEFFERY, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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STATEMENT OF THE CASE
Appellants filed a Request for Rehearing under 37 C.F.R.
§ 41.52(a)(1) (hereinafter “Request”) for reconsideration of our Decision
mailed October 5, 2010 (hereinafter “Decision”).
Our Decision vacated the Examiner’s rejections under 35 U.S.C.
§§ 102 and 103. We also set forth a new ground of rejection under 35
U.S.C. § 101 for all claims on appeal (claims 1-5, 7-12, and 14-18) within
the provisions of 37 C.F.R. § 41.50(b).
We have reconsidered our Decision, in light of Appellants’ arguments
in the Request for Rehearing, and we find no errors therein. We decline to
change our prior Decision for the reasons discussed infra.
Appellants request reconsideration of the following issue:

1. Whether claims 1-5, 7-12, and 14-18 are directed to non-
statutory subject matter under 35 U.S.C. § 101?

ILLUSTRATIVE CLAIM
Claim 1 is illustrative:
1. A method for use in a device associated with a first party
for performing a signature operation on a message substantially
based on the digital signature algorithm (DSA), the method
comprising the steps of:
generating in the first party device a first component
associated with the signature operation based on assistance
from a device associated with a second party, wherein the
assistance from the second party device is received as a first
message from the second party device;
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transmitting the first component to the second party
device;
generating in the first party device a second component
associated with the signature operation based on further
assistance from the second party device, wherein the further
assistance from the second party device is received as a second
message from the second party device, wherein the second
message comprises results generated using the transmitted first
component; and
outputting a form of the first component and the second
component as a result of the DSA signature operation.

Appellants contend that they are not attempting to claim the DSA
algorithm itself but are instead claiming a specific method for performing a
DSA signature operation on a message. (Request 2, ¶ 2).
At the outset, we observe that the Digital Signature Algorithm is a
United States Federal Government Federal Information Processing Standard
(FIPS) for digital signatures. See e.g., FIPS 186-3.2 FIPS are publicly
announced standards developed by the United States Federal government for
use in computer systems. The Digital Signature Algorithm is also covered by
U.S. Patent 5,231,668 (Title: “Digital Signature Algorithm,” issued Jul. 27,
1993) which is assigned to the United States of America, as represented by
the Secretary of Commerce. In the Specification, Appellants acknowledge
that the general concepts and definitions associated with DSA signatures are

2 See http://www.itl.nist.gov/fipspubs/by-num.htm

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“well known in the field of cryptography,” and have incorporated U.S.
Patent 5,231,668 into their Specification by reference:
It is to be appreciated that the general concepts and
definitions associated with DSA signatures are well
known in the field of cryptography. By way of example,
U.S. Patent No. 5,231,668 issued to D. W. Kravitz on
July 27, 1993 and entitled "Digital Signature Algorithm,"
the disclosure of which is incorporated by reference
herein, describes details on DSA signatures and
associated keys.
(Spec. 5, ll. 1-5).
Of import here, we note that the abstract of U.S. Patent 5,231,668
describes a method for “providing for generating and verifying a digital
signature of a message m.” (emphasis added). Thus, the DSA algorithm is
specifically directed to performing operations on messages, e.g., “verifying a
digital signature for a message or data file.” 3
Appellants point to their Specification in support of the contention
they are claiming a specific method for performing a DSA signature
operation on a message: “the invention provides efficient and provably
secure protocols for two-party DSA signature generation.” (Request 2, ¶ 2;
see also Spec. 6, ll. 1-2). However, Appellants omit the subsequent sentence
that we consider a representative embodiment of the abstract idea(s)
encompassed by the claims on appeal: “As building blocks, the invention
uses a public key encryption scheme [e.g., the well known DSA algorithm]

3 See U.S. Patent 5,231,668, col. 1, ll. 8-9.
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with certain useful properties (for which several examples exist) and
efficient special-purpose zero-knowledge proofs.” (Spec. 6, ll. 2-4)
(emphasis added). See also claims 8 and 16: “wherein the proofs are zero-
knowledge proofs.”
See also a further description of the claimed zero-knowledge proof:
In addition, in the protocol of the invention, a party may
be required to generate a noninteractive zero knowledge
proof of a certain predicate P involving decryptions of
elements of Cpk , among other things. We denote such a
proof as zkp [P]. Below, it will be illustrated how these
proofs can be accomplished if the Paillier cryptosystem is
in use. However, it is to be understood that use of the
Paillier cryptosystem is only exemplary and, thus, the
cryptosystems cited above, as well as others with similar
properties, could equally well be used with the inventive
protocol.

(Spec. 8, ll. 17-23)(emphasis added).
See also the detailed mathematical description of noninteractive zero-
knowledge proofs II and II’ as described in the Specification at page 12, line
6, et seq.
Given this context, we conclude that the claimed DSA algorithm and
special-purpose zero-knowledge proofs are each examples of abstract ideas,
e.g., mathematical algorithms. Moreover, the claims on appeal are sweeping
in scope and are not limited by the specific embodiments found in the
Specification. 4

4 Our reviewing court has repeatedly warned against confining the claims to
specific embodiments described in the specification. Phillips v. AWH Corp.,
415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc).
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We particularly note that Appellants acknowledge in the Request that
“[i]ndependent claims 1 and 9 do not recite any post-solution activity, but
rather recite only steps defining the solution itself.” (Request 2, last
paragraph) (underline added). We find this admission buttresses our
conclusion that the claims on appeal are directed to one or more abstract
ideas, i.e., an encompassing mathematical algorithm or paradigm that
incorporates the well known DSA algorithm as an integral part.
While Appellants cite to Flook and Diehr multiple times (Request 2-
5), Flook also stands for the proposition that the prohibition against
patenting abstract ideas “cannot be circumvented by attempting to limit the
use of the formula to a particular technological environment” or adding
“insignificant postsolution activity.” (Diamond v. Diehr, 450 U.S. 175, 191-
192 (1981) (citing Parker v. Flook, 437 U.S. 584 (1978)).
As discussed above, Appellants have admitted that “[i]ndependent
claims 1 and 9 do not recite any post-solution activity, but rather recite only
steps defining the solution itself.” (Request 2, last paragraph) (underlined
added). We find Appellants must rely on their Specification to limit the use
of the mathematical algorithm or paradigm to a particular technological
environment or real world use. (See e.g., Request page 2, ¶ 2, last line and
page 7, ¶ 1, last line).5
Indeed, claim 1 on appeal expressly recites as the last step in the
method: “outputting a form of the first component and the second component

5 “[T]he invention provides efficient and provably secure protocols for two-
party DSA signature generation.” (Spec. 6, ll. 1-2).
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as a result of the DSA signature operation.” (emphasis added). As we
concluded on page 6 of our Decision, the scope of the recited “components”
broadly encompasses mathematical variables per se. See also Spec. 3, ll.
3-15.
Appellants further contend that the nominal recitation of a generic
“device” satisfies at least the machine branch of the machine-or-
transformation test enunciated by the Federal Circuit in In re Bilski, 545
F.3d 943 (Fed. Cir. 2008), and that a claim drawn to subject matter
otherwise statutory does not become nonstatutory simply because it uses a
mathematical formula. (Request 4).
However, we observe that the “devices” described by Appellants are
expressly not limited to a particular device or machine. Instead Appellants’
claimed “devices” clearly encompass generic machines or devices and also
software programs per se, among other things:
The devices may be, for example, personal computers
(including desktops and laptops), personal digital
assistants (PDA), smartcards, cellular phones, servers,
hardware tokens, software programs, etc. However, the
invention is not limited to any particular device.
(Spec. 16, ll. 14-17) (emphasis added).
Regarding independent claims 17 and 18, Appellants contend that
programming creates a new (special purpose) machine and that the “so-
called statements of intended use are in fact substantive limitations
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describing particular functions which the claimed special purpose computer
is programmed to perform.” (Request 6).
However, we observe that the question of exactly what constitutes a
“particular machine” has not been squarely addressed by the Court of
Appeals for the Federal Circuit or the U.S. Supreme Court. It is unclear
whether a special purpose computer that is programmed to perform one or
more particular functions becomes a “particular machine” under the
machine-or-transformation test enunciated by the Federal Circuit in In re
Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en banc).6
Even if we arguendo answer that question in the affirmative, we note
that the Supreme Court has held that the machine-or-transformation test is
not the exclusive test for deciding whether an invention is a patent-eligible
process. Bilski, 130 S.Ct. 3218, 3227 (2010). In particular, the Supreme
Court has guided that an inquiry into whether a process is merely an abstract
idea provides a useful tool in determining subject matter eligibility under
35 U.S.C. § 101. Id. at 3229.

6 “The machine-or-transformation test is a two-branched inquiry; an
applicant may show that a process claim satisfies § 101 either by showing
that his claim is tied to a particular machine, or by showing that his claim
transforms an article.” In re Bilski, 545 F.3d at 961-62 (Fed. Cir. 2008) (en
banc). The machine-or-transformation test is a useful and important clue, an
investigative tool, for determining whether some claimed inventions are
processes under § 101. See Bilski v. Kappos, 130 S.Ct. 3at 3227 (2010).

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As stated in our Decision, this form of analysis is most descriptive of
the subject matter of method independent claims 1 and 9 on appeal.
However, “[c]orresponding features from these claims are recited in the
body of independent apparatus claims 17 and 18 which we conclude also
embody a mathematical algorithm (digital signature algorithm) in
combination with a nominal claim to generic structures, such as the claimed
generic apparatus, processor, and memory that are each modified by a
statement of intended use.” (Decision 8, ¶ 4).
Regarding claims 17 and 18, we disagree with Appellants that the “so-
called statements of intended use are in fact substantive limitations
describing particular functions which the claimed special purpose computer
is programmed to perform.” (Request. 6). We observe that each of
independent claims 17 and 18 recites commensurate statements of intended
use: “Apparatus for use in a device . . . .” As stated in our Decision, “even
when a claim appears to apply an idea or concept in combination with a
nominal claim to generic structure(s), one must ensure that it does not in
reality seek patent protection for that idea in the abstract. Cf. Diehr, 450
U.S. at 191.” (Decision 8, ¶ 1).
Appellants’ arguments notwithstanding, we retain the view stated in
our Decision that “claims 17 and 18 are not limited to a tangible practical
application in which the mathematical algorithm is applied that results in a
real-world use. See Ex parte Gutta, 93 USPQ2d 1025, 1031 (BPAI 2009)
(precedential) (holding that system claim 14 was non-statutory under § 101

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despite reciting a memory and processor). Nor are claims 17 and 18 limited
so as to not encompass substantially all practical applications of the
mathematical algorithm even in one field of use. See id.” (Decision 8, ¶ 2).
While Appellants aver that “claims 17 and 18 are limited to a tangible
practical application, in which the DSA algorithm is applied, that results in a
real-world use; namely a specific technique for performing a DSA signature
operation on a message,” we note that Appellants again rely on their
Specification for an example of a real world use. (Request 7, ¶ 1).
We also note that Ex parte Gutta is a precedential BPAI decision that
is binding upon all members of the Board.7 We applied the controlling
holding of Gutta in considering Appellants’ claims 17 and 18 on appeal as
being directed to non-statutory subject matter under 35 U.S.C. § 101. (See
Decision 8).
For at least the aforementioned reasons, we find Appellants’
arguments unpersuasive regarding the claims on appeal. Accordingly, we
decline to modify our original Decision.

7 See “STANDARD OPERATING PROCEDURE 2 (REVISION 7), p. 6,
available at http://www.uspto.gov/web/offices/dcom/bpai/sop2.pdf:
((VI.)(D.) “All judges, including the Chief Judge, are bound by a published
or otherwise disseminated Precedential opinion of the Board unless the
decision supported by the opinion is (1) modified by the Court of Appeals
for the Federal Circuit, (2) inconsistent with a decision of the Supreme Court
or the Court of Appeals for the Federal Circuit, (3) overruled by a
subsequent expanded panel, or (4) overturned by statute.”).

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CONCLUSION
We have considered the arguments raised by Appellants in the
Request for Rehearing, but find none of these arguments persuasive that our
original Decision was in error. It is our view that Appellants have not
identified any points that the Board has misapprehended or overlooked. We
are still of the view that the invention set forth in claims 1-5, 7-12, and 14-18
is directed to non-statutory subject matter under 35 U.S.C. § 101 based on
the record before us in the original appeal. We have reconsidered our
Decision but decline to grant the relief requested.
This Decision on Appellants’ Request for Rehearing is deemed to
incorporate our earlier Decision by reference. See 37 C.F.R. § 41.52(a)(1).

ORDER
We have granted Appellants’ Request to the extent that we have
reconsidered our Decision, but we deny the Request with respect to making
any changes therein. It is our view that Appellants have not identified any
points that the Board has misapprehended or overlooked.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See also 37
C.F.R. § 41.52(b).

REHEARING DENIED

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