Ex Parte Michiels et al

Patent Trial and Appeal Board

Feb 27, 2017

12514922 (P.T.A.B. Feb. 27, 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.
12/514,922 05/14/2009 Wilhelmus Petrus Adrianus Johannus Michiels 14-30139-US 4928
98804 7590
Reed Smith LLP
P.O. Box 488
Pittsburgh, PA 15230
EXAMINER
ALMEIDA, DEVIN E
ART UNIT PAPER NUMBER
2492
NOTIFICATION DATE DELIVERY MODE
03/01/2017 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):
ptoipinbox @reedsmith.com
gdonovan @reedsmith. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILHELMUS PETRUS ADRIANUS JOHANNUS MICHIELS
and
PAULUS MATHIAS HUBERTUS MECHTILDIS ANTONIUS
GORISSEN
Appeal 2016-001069
Application 12/514,922
Technology Center 2400
Before ST. JOHN COURTENAY III, JOHNNY A. KUMAR, and
NORMAN H. BEAMER, Administrative Patent Judges.
BEAMER, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
On February 20, 2017, Appellants filed a Request for Rehearing
(hereinafter “Request” or “Req. Reh’g”) under 37 C.F.R. § 41.52 from the
Decision on Appeal (Decision) of the Patent Trial and Appeal Board
(Board), mailed December 27, 2016. In the Decision, we affirmed the
Examiner’s 35 U.S.C. § 101 rejection of claims 1—5, 7, 8, 10-14, and 16—23.
We deny the Request for Rehearing.
Appeal 2016-001069
Application 12/514,922
In their Request, Appellants cite cases and guidelines regarding
Section 101 issued after submission of the Briefs on Appeal, and assert the
Board did not properly apply the holding of Alice1 to the claims at issue.
(Req. Reh’g 1.) In particular, Appellants argue the Board did not analyze
the claims as an “ordered combination of claim elements,” but rather relied
on an over-generalized characterization of the claims as “data transformation
through mathematical manipulation.” (Req. Reh’g 1—3.) Appellants further
argue “the claimed invention is a series of operations that enhance operation
of a computer to solve a problem,” similar to the subject matter considered
in Amdocs (Israel) Limited v. Openet Telecom, Inc., No. 15-1180 (Fed. Cir.
Nov. 1, 2016). (Req. Reh’g 5.)
We are not persuaded our Opinion is inconsistent with the authorities
relied on by Appellants. The record does not support the conclusory
assertion that the subject matter of the claims at issue enhance operations of
a computer —the calculations required by the claims are performed
conventionally by a standard computer, processor or the like. (Spec. Fig. 12,
p. 19,11. 11—33.) As stated in our December 27, 2016 Opinion, Appellants’
claimed subject matter incorporates the abstract idea of using a key-
dependent diffusion operator in the conventional techniques disclosed in the
prior art implementations of the AES encryption standard and the cited
Chow articles described in the Specification. (Opinion 9.)
In summary, having fully considered the arguments in the Request, on
this record, we are not persuaded that we have misapprehended or
overlooked any points raised by Appellants. We find none of Appellants’
1 Alice Corp. Pty. Ltd. v. CLSBank Int’l, 134 S.Ct. 2347 (2014).
2
Appeal 2016-001069
Application 12/514,922
arguments are persuasive that our Decision was in error. We have
reconsidered our Decision, but decline to grant the relief requested.
DECISION
In view of the foregoing discussion, we have granted Appellants’
Request to the extent that we have reconsidered the original Decision but
have denied it with respect to making any changes to the Decision.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
REHEARING DENIED
3