Ex Parte Solinas

Board of Patent Appeals and Interferences

Sep 23, 2008

10184892 (B.P.A.I. Sep. 23, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JEROME A. SOLINAS
____________

Appeal 2008-0712
Application 10/184,892
Technology Center 2100
____________

Decided: September 23, 2008
____________

Before HOWARD B. BLANKENSHIP, JAY P. LUCAS,
and ST. JOHN COURTENAY III, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-11. We have jurisdiction under 35 U.S.C. § 6(b). An
oral hearing for this appeal was conducted on Sept. 11, 2008.
We affirm.
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The invention relates, according to Appellant, to cryptography and a
discrete logarithm based key exchange on an elliptic curve using expansion
in joint sparse form. (Spec. 1.) Claim 1 is illustrative.
1. A method of generating a cryptographic key in a computing device
between a first user and a second user, comprising the steps of:

a) selecting, between the first user and the second user, an elliptic
curve;

b) selecting, between the first user and the second user, a point P on
the elliptic curve;

c) selecting, by the first user, integers r a and wa;

d) selecting, by the second user, integers r b and w b;

e) generating, by the first user, points R a =r a P and Wa =w a P;

f) generating, by the second user, points R b =r b P and W b =w b P;

g) transmitting R a and W a from the first user to the second user;

h) transmitting R b and W b from the second user to the first user;

i) generating, by the first user, c a, where c a is a user-definable
function of w a, r a, W b , and R b ;

j) generating, by the second user, c b, where c b is a user-definable
function of w b, r b, W a, and R a, and where the user-definable functions of
step (i) and step (j) are equivalent after accounting for differing subscripts;

k) generating, by the first user, g a , where g a is a user-definable
function of w a, r a, W b, and R b;

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l) generating, by the second user, g b, where g b is a user-definable
function of w b, r b, W a , and R a , and where the user-definable functions of
step (k) and step (l) are equivalent after accounting for differing subscripts:

m) generating, by the first user, a binary expansion of c a and a binary
expansion of g a , where the binary expansions have its number of nonzero
columns minimized;

n) generating, by the second user, a binary expansion of c b and a
binary expansion of g b, where the binary expansions have its number of
nonzero columns minimized;

o) generating, by the first user, a point K by computing c a W b + g a R b
via twin multiplication using a double-add-subtract method with the binary
expansions of c a and g a generated in step (m);

p) generating, by the second user, the point K by computing c b W a +
g b R a via twin multiplication using the double-add-subtract method with the
binary expansions of c b and g b generated the step (n); and

q) deriving the cryptographic key from the point K by the first user
and the second user in a same user-definable manner.

Claims 1-11 stand rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
Claim 12, dependent upon rejected base claim 1, has been indicated as
allowable if rewritten in independent form.

Section 101
“Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.” 35 U.S.C. § 101. “[N]o patent is available for a
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discovery, however useful, novel, and nonobvious, unless it falls within one
of the express categories of patentable subject matter of 35 U.S.C. § 101.”
Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 483 (1974).

I
The Examiner contends that claims 1 through 11 are directed to non-
statutory subject matter. The Examiner finds that the claims are directed to
processes that do nothing more than solve mathematical problems or
manipulate abstract ideas.
In response to the rejection, Appellant does not rely on the limitations
of any particular claim. Accordingly, we will decide the appeal on the basis
of claim 1, the sole independent claim. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellant appears to quote, at pages 5 and 6 of the Brief, from a text
that Appellant has not provided as evidence in this appeal. Moreover,
Appellant does not tell us the reason for providing the quotations, or
otherwise provide us with what may be thought the point of the quotations.
Appellant next submits that processes (e.g., methods) are patentable
subject matter, citing § 101. (Br. 6.) We agree to the extent that statutory
processes are statutory. However, drafting a claim in a method or process
format does not make the subject matter of the claim patent eligible. See
Parker v. Flook, 437 U.S. 584, 589 (1978) (“The holding that the discovery
of [Benson’s] method could not be patented as a ‘process’ forecloses a
purely literal reading of § 101.”).
Appellant submits, further, that various types of cryptographic
methods relating to key generation, management, and distribution appear in
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the USPTO Manual of Classification. From this, Appellant seems to
conclude that all the named “methods” are “patentable subject matter.” (Br.
6-7.)
However, the purpose of the Manual of Classification is for
organizing patent and other technical documents into a classification system.
The Manual is not for determining or indicating that a claimed invention is
directed to statutory subject matter. How a disclosure may be classified
simply does not speak to whether a claimed method is directed to statutory
subject matter. That a method may be described as a “cryptographic
method” is neutral with respect to whether or not the underlying invention
falls within the § 101 “process” category of invention.
Appellant next refers to 17 U.S. patents by number, submitting that
the instant claims are “stylistically similar” to allowed claims in the patents.
(Br. 7.) However, we do not consider the Examiner’s rejection to be based
on the form or “style” of the instant claims.
We have not considered the patents, or the claims of any of the
patents, alleged to have “stylistically similar” claims. Cf. 37 C.F.R.
§ 41.37(c)(1)(ix):
Evidence appendix. An appendix containing copies of
any evidence submitted pursuant to §§ 1.130, 1.131, or 1.132 of
this title or of any other evidence entered by the examiner and
relied upon by appellant in the appeal, along with a statement
setting forth where in the record that evidence was entered in
the record by the examiner. Reference to unentered evidence is
not permitted in the brief.

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Appellant’s “similarity” allegation amounts to an invitation for the
Board to review the patents not in evidence to see if we can come up with
some argument by which the Board may be able to conclude that the instant
claims are directed to statutory subject matter. We respectfully decline the
invitation. See Halliburton Energy Services, Inc. v. M-I LLC, 514 F.3d
1244, 1250 n.2 (Fed. Cir. 2008) (a skeletal argument, really nothing more
than an assertion, does not preserve a claim; Judges are not like pigs, hunting
for truffles buried in briefs) (quoting United States v. Dunkel, 927 F.2d 955,
956 (7th Cir. 1991)); Ernst Haas Studio, Inc. v. Palm Press, Inc., 164 F.3d
110, 112 (2d Cir. 1999) (“Appellant’s Brief is at best an invitation to the
court to scour the record, research any legal theory that comes to mind, and
serve generally as an advocate for appellant. We decline the invitation.”).
While it is Appellant’s burden, not the Examiner’s or the Board’s, to
demonstrate the relevance of Appellant’s rebuttal evidence (and provide the
evidence in accordance with the rules governing appeal documents), we
make the following observations. The Examiner submits that the claims
have been examined and determined not statutory under the Interim
Guidelines for Examination of Patent Applications for Patent Subject Matter
Eligibility, published 22 November 2005. (Ans. 4.) Of the 17 patents listed
in the Brief, all received substantive examination and were allowed before
22 November 2005. Even were we to assume some identifiable
inconsistency between the instant rejection and some claim in some earlier
patent, that would not demonstrate error in the instant rejection as applied to
the instant claims.

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Appellant has not shown error in the Examiner’s § 101 rejection of the
claims. We can sustain the rejection on that basis alone.

II
Claim 1, if statutory, falls within the statutory class of “process.” “A
process is . . . an act, or a series of acts, performed upon the subject matter to
be transformed and reduced to a different state or thing.” Cochrane v.
Deener, 94 U.S. 780, 788 (1877). “‘Transformation and reduction of an
article “to a different state or thing” is the clue to the patentability of a
process claim that does not include particular machines.’” Diamond v.
Diehr, 450 U.S. 175, 184 (1981) (quoting Gottschalk v. Benson, 409 U.S.
63, 70 (1972)).
There is no transformation of an article to a different state or thing in
claim 1. The steps of claim 1 appear to be directed to mathematical
operations, or the paradigmatic “abstract idea.” Compare the invention of
Warmerdam:
[C]laim 1 recites the steps of “locating” a medial axis, and
“creating” a bubble hierarchy. These steps describe nothing
more than the manipulation of basic mathematical constructs,
the paradigmatic “abstract idea.” As the Supreme Court has
made clear, “ [a]n idea of itself is not patentable,” Rubber-Tip
Pencil Co. v. Howard, 87 U. S. (20 wall.) 498, 507 (1874);
taking several abstract ideas and manipulating them together
adds nothing to the basic equation.

In re Warmerdam, 33 F.3d 1354, 1360. That instant claim 1 may require a
second person, or “user,” to perform some of the mathematical operations
adds nothing to the basic equation.
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III
Recent cases of our reviewing court suggest that a “lack of
transformation” is not determinative with respect to whether a claimed
process is statutory. Those cases, however, involved inventions that at least
used machines to transform data. The cases could be read as consistent with
the statement in Diehr and Benson, supra, which indicates that process
claims that do not transform an article “to a different state or thing,” but
include “particular machines,” may be statutory.
For example, our reviewing court in AT&T Corp. v. Excel
Communications, Inc., 172 F.3d 1352, 1357 (Fed. Cir. 1999), set forth
(citing In re Alappat, 33 F.3d 1526, 1544 (Fed. Cir. 1994) (en banc)) that a
§ 101 inquiry is directed to the determination of whether the claimed subject
matter as a whole is a disembodied mathematical concept representing
nothing more than a “law of nature” or an “abstract idea,” or if the
mathematical concept has been reduced to some practical application
rendering it “useful.” A claimed process that produces a useful, concrete,
tangible result without pre-empting other uses of the mathematical principle
falls within the scope of § 101. AT&T Corp. at 1358. The process held to
be statutory in AT&T Corp., however, required the use of switches and
computers. See, e.g., id. at 1358 (AT&T's claimed process used “switching
and recording mechanisms” to create a “signal” useful for billing purposes).

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IV
The Examiner has indicated that the instant claims are interpreted as
being implemented on a computer. Instant claim 1 recites, in the preamble,
the words “in a computing device.”
However, it is not clear to us that the recitation in the preamble of
claim 1 has any limiting effect. We find nothing in the steps of the claim
that are specific to a computer. Nor do we find that the recitation of a
“computing device” in the preamble serves as antecedent for anything in the
body of the claim. “The preamble of a claim does not limit the scope of the
claim when it merely states a purpose or intended use of the invention.” In
re Paulsen, 30 F.3d 1475, 1479 (Fed. Cir. 1994).
Even if the nominal recitation of the “computing device” in the
preamble were to limit the process to being performed in a computing
device, the § 101 inquiry does not end.
In Gottschalk v. Benson, 409 U.S. 63 (1972), the claims were directed
to a method for converting binary-coded-decimal (BCD) numerals into pure
binary numerals for use with a general-purpose digital computer of any type.
Benson, 409 U.S. at 64. The method steps in the body of the claim
incorporated portions of a computer (a reentrant shift register) into the steps.
The question before the Court was “whether the method described and
claimed is a ‘process’ within the meaning of the Patent Act.” Id. The Court
characterized the claimed invention as “a generalized formulation for
programs to solve mathematical problems of converting one form of
numerical representation to another.” Id. at 65.
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The Court held that the claimed method was directed to non-statutory
subject matter because “[t]he mathematical formula involved here has no
substantial practical application except in connection with a digital
computer, which means that if the judgment below is affirmed, the patent
would wholly pre-empt the mathematical formula and in practical effect
would be a patent on the algorithm itself.” Id. at 71-72.
In the instant case, assuming that the method requires the steps to be
performed “in a computing device,” claim 1 would wholly pre-empt the
mathematical formula and would be, in practical effect, a patent on the
algorithm itself.
The Examiner cited Gottschalk v. Benson as support for the § 101
rejection, in both the Final Rejection and the Answer. Appellant did not
respond in the Brief, or in a reply brief.
When asked at the oral hearing how one might distinguish the instant
invention from that in Benson, counsel indicated that the Court found the
invention in that case non-statutory because the algorithm involved was
known (i.e., lacked novelty).
We find nothing in Benson to support that view. “The ‘novelty’ of
any element or steps in a process, or even of the process itself, is of no
relevance in determining whether the subject matter of a claim falls within
the § 101 categories of possibly patentable subject matter.” Diamond v.
Diehr, 450 U.S. 175, 188-89 (1981). “The question . . . of whether a
particular invention is novel is ‘wholly apart from whether the invention
falls into a category of statutory subject matter.’” Id. at 189 (quoting In re
Bergey, 596 F.2d 952, 961 (CCPA 1979)). “The obligation to determine
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what type of discovery is sought to be patented [so as to determine whether
it is “the kind of ‘discoveries’ that the statute was enacted to protect”] must
precede the determination of whether that discovery is, in fact, new or
obvious.” Parker v. Flook, 437 U.S. 584, 593 (1978).

V
If we assume that claim 1 is directed to statutory subject matter
because the claimed process produces a useful, concrete, tangible result
without pre-empting other uses of the mathematical principle (AT&T Corp.
at 1358), that result is, according to Appellant, a cryptographically secure
key that “may be used” to securely encrypt or decrypt a message. (Br. 7.)
The Examiner has not rejected dependent claim 12. Claim 12 appears
consistent with a way that Appellant submits the result of claim 1 “may” be
used. The Examiner has further indicated (e.g., Ans. 5) that the subject
matter of claim 1 is not limited to some practical application -- the
mathematical concept has not been reduced to some practical application
rendering it “useful” (AT&T Corp. at 1358).
We do not consider the requirement that a claim be limited to a
practical application of mathematical principles or “ideas” to be
unreasonable, especially when the claim is in the USPTO and can be
amended. “The four categories [of § 101] together describe the exclusive
reach of patentable subject matter. If a claim covers material not found in
any of the four statutory categories, that claim falls outside the plainly
expressed scope of § 101 even if the subject matter is otherwise new and
useful.” In re Nuijten, 500 F.3d 1346, 1354 (Fed. Cir. 2007). “An essential
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purpose of patent examination is to fashion claims that are precise, clear,
correct, and unambiguous. Only in this way can uncertainties of claim scope
be removed, as much as possible, during the administrative process.” In re
Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989).

CONCLUSION
For the foregoing reasons, we sustain the rejection of claims 1-11
under 35 U.S.C. § 101 as being directed to non-statutory subject matter.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

pgc

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