Ex Parte Watt

Board of Patent Appeals and Interferences

Dec 4, 2008

10179020 (B.P.A.I. Dec. 4, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte SIMON CHARLES WATT
__________

Appeal 2008-3255
Application 10/179,020
Technology Center 2100
__________

Decided: December 4, 2008
__________

Before JAMES D. THOMAS, JEAN R. HOMERE, and
STEPHEN C. SIU, Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-20, 22-41, 43, and 44. Claims 21 and 42
have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). An oral
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hearing for this appeal was conducted on November 18, 2008. We affirm-
in-part.

The Invention
The disclosed invention relates generally to transferring data values
via a data bus (Spec. 2). Specifically, representations of data values are
transferred on a data bus to control components such as a multiply and shift
circuit or an arithmetic logic unit (Spec. 10). Data values may be converted
between representations prior to being manipulated or written into a register
(id.).
Independent claim 1is illustrative:
1. Apparatus for processing data, said apparatus
comprising:
a data source operable to supply a data value to be processed;
a destination operable to receive said data value; and
a data bus operable to transfer a representation of said data
value between said data source and said destination;
wherein one or more representation specifying bits are
associated with said data value transferred on said data bus, said one
or more representation specifying bits specifying which of a
plurality of different representations of said data value is used to
transfer said data value via said data bus between said data source
and said destination, and
wherein said one or more representation specifying bits
accompany said data value transferred on said data bus, and
wherein said apparatus is one of:
a smart card;
a cryptographic device; and
a secure device.
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The References
The Examiner relies upon the following references as evidence in
support of the obviousness rejection:

Miyazaki US 6,873,706 Mar. 29, 2005
Kaminaga US 7,086,087 Aug. 1, 2006

The Rejection
The Examiner rejects claims 1-20, 22-41, 43, and 44 under 35 U.S.C.
§ 103(a) as being unpatentable over Miyazaki and Kaminaga.

ISSUES
Issue #1
Appellant asserts that “the modification of Miyazaki proposed by the
Examiner does not make technical sense and would not have been made by a
person of ordinary skill in the art” (Reply Br. 2) because “there is no need in
Miyazaki for any representation specifying bits to accompany” any message
since “there is no variance in the representation being used (i.e., the input is
encrypted and the output is decrypted)” (id.). Appellant also asserts that
“the alleged motivation (to combine the teachings of Miyazaki and
Kaminaga) does not make sense based on the teachings relied on in
Miyazaki” (App. Br. 12).
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The Examiner “considers the encrypted message m 1014 as the
claimed data value and since decrypted message m’ 1015 is a different
representation of the message m 1014 examiner equates decrypted message
m’ as the claimed different representation of the data value” (Ans. 13).
The Examiner also finds that “[i]n Kaminaga outputted ‘0’ or ‘1’ from
encryption decision device, are similar to the claimed limitation of ‘one or
more representation specifying bits’” (Ans. 14).
Did Appellant demonstrate that the Examiner erred in finding that it
would have been obvious to one of ordinary skill in the art to modify the
Miyazaki with the Kaminaga reference to achieve the claimed invention?

Issue #2
The Examiner finds that in Kaminaga, “[i]f data is an encrypted data
the encryption decision device 7312 outputs to an AND circuit a ‘1’. If data
is not encrypted . . . the encryption decision device outputs to the AND
circuit a ‘0’ (column 57, lines 15-25)” (Ans. 13-14) and that the “‘0’ or ‘1’
from encryption decision device, are similar to the claimed limitation of ‘one
or more representation specifying bits’” (Ans. 14).
Appellant asserts that “the signal value ‘0’ or ‘1’ from the encryption
decision device 7312 never makes its way on to the n-bit data bus or onto the
data signal line 7057 which the Examiner maps to the claimed data bus”
(Reply Br. 3).
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Did Appellant demonstrate that the Examiner erred in finding that
output bits from the encryption decision device of Kaminaga constitute
representation specifying bits that accompany a data value transferred on a
data bus?

Issue #3
Appellant asserts that Kaminaga “does not describe ‘a complement bit
specifying whether said data value is represented in a true form or a
complement form’” (App. Br. 14).
The Examiner finds that “specifying a data as not encrypted data is
similar to specifying the data as an original or true form of the data and
specifying a data as an encrypted data is similar to specifying as a
complement form” (Ans. 17).
Did Appellant demonstrate that the Examiner erred in finding that
specifying data as encrypted or not encrypted is the same as specifying data
in complement or true form, respectively?

FINDINGS OF FACT
The following Findings of Facts (FF) are shown by a preponderance
of the evidence.
1. Miyazaki discloses “the encrypted message m 1014 given as an input
from the outside of the IC card 1001, decrypting the encrypted
message m 1014, and outputting a result of the decryption as a
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decrypted message m’ 1015 to the outside of the IC card 1001” (Col.
6, ll. 23-28).
2. Kaminaga discloses “[t]he encryption decision device 7312
determines whether or not a decryption is required for the current
transfer of data” (Col. 56, l. 66 – Col. 57, l. 1).
3. Kaminaga discloses “the information memory device 7052 outputs
encrypted data stored at the address to the data signal line 7057”
(Col. 56, ll. 18-20).
4. Kaminaga discloses that “information stored in the information
memory device 7052 and transferred through the data signal line
7057 has a bit pattern different from that of information used in the
information processing apparatus 7051” (Col. 56, ll. 27-30).
5. Kaminaga discloses that “[t]he information memory device 7052 is
divided by address into a plurality of storage areas. The encryption-
area specifying register 7311 is used for storing information on
whether or not encryption has been done for each of the storage
areas” (Col. 56, ll. 62-66).
6. Kaminaga discloses that “[i]f data stored at the address appearing on
the address signal line 7058 is determined to have been encrypted,
the encryption decision device 7312 outputs 1. If data stored at the
address appearing on the address signal line 7058 is determined to be
data not encrypted before . . . the encryption decision device 7312
outputs 0” (Col. 57, ll. 19-25).
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PRINCIPLES OF LAW
35 U.S.C. § 103(a)
Section 103 forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior
art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains.”

KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1734 (2007).

“What matters is the objective reach of the claim. If the claim
extends to what is obvious, it is invalid under § 103.” Id. at 1742.
Appellants have the burden on appeal to the Board to demonstrate error in
the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“On appeal to the Board, an applicant can overcome a rejection
[under § 103] by showing insufficient evidence of prima facie obviousness
or by rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)). Therefore, we look to Appellants’ Briefs to show error in the
proffered prima facie case.
In KSR, the Supreme Court emphasized "the need for caution in
granting a patent based on the combination of elements found in the prior
art," and discussed circumstances in which a patent might be determined to
be obvious. KSR, 127 S. Ct. at 1739 (citing Graham v. John Deere Co., 383
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U.S. 1, 12 (1966)). The Court reaffirmed principles based on its precedent
that "[t]he combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results."
KSR, 127 S. Ct. at 1739. The operative question in this "functional
approach" is thus "whether the improvement is more than the predictable use
of prior art elements according to their established functions." Id. at 1740.
The Federal Circuit recently recognized that "[a]n obviousness
determination is not the result of a rigid formula disassociated from the
consideration of the facts of a case. Indeed, the common sense of those
skilled in the art demonstrates why some combinations would have been
obvious where others would not." Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (citing KSR, 127 S. Ct. 1727,
1739 (2007)). The Federal Circuit relied in part on the fact that Leapfrog
had presented no evidence that the inclusion of a reader in the combined
device was “uniquely challenging or difficult for one of ordinary skill in the
art” or “represented an unobvious step over the prior art." Id. at 1162 (citing
KSR, 127 S. Ct. at 1740-41).

ANALYSIS
Issue #1
Appellant argues claims 1-13, 15-20, 22-34, 36-41, 43, and 44 as a
single group which stands or falls together. We select independent claim 1
as the representative claim for this group. See 37 C.F.R. § 41.37(c)(1)(vii).
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In addition, Appellant’s arguments apply to claims 14 and 35, argued as a
separate group.
Miyazaki discloses a known method of receiving an encrypted
message, decrypting the encrypted message, and outputting the decrypted
message (FF. 1). Kaminaga discloses a known method of determining if
decryption is required for data being transferred (FF. 2). Both Miyazaki and
Kaminaga disclose known functions to achieve the expected results of
receiving data and decrypting the data if decryption is necessary. Appellant
has not demonstrated that the combination of Miyazaki and Kaminaga
would have resulted in anything more than what one of ordinary skill in the
art would have expected – namely, decrypting data if needed (i.e.,
decrypting data that has been encrypted). “The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSR, 127 S. Ct. at 1739. “[W]hen a
patent ‘simply arranges old elements with each performing the same
function it had been known to perform’ and yields no more than one would
expect from such an arrangement, the combination is obvious.” Id. at 1740
(citing Sakraida v. AG Pro, Inc., 425 U.S. 273, 282 (1976)).
For at least the aforementioned reasons, we conclude that Appellant
has not sustained the requisite burden on appeal in providing arguments or
evidence persuasive of error in the Examiner’s rejection of claim 1, and
claims 2-13, 15-20, 22-34, 36-41, 43, and 44, which fall therewith.
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Appellant has also not shown Examiner error in the rejection of claims 14
and 35 with respect to issue #1.

Issue #2
Kaminaga discloses the transfer of data from an information memory
device over a data signal line (i.e., data values transferred on a data bus) (FF
3) and also discloses an encryption decision device that outputs a “1” or “0”
(i.e., a bit) that is associated with the state of encryption of the data output
from the information memory device (FF 6). Therefore, Kaminaga discloses
a memory device outputting data values that are “accompanied” by a
decision device outputting a bit describing if the data values output from the
memory device is encrypted or decrypted. We agree with the Examiner that
Kaminaga discloses that the bit from the encryption decision device
“accompanies” the data output from the information memory device because
output of the data value corresponds to the output of the corresponding bit,
which is output at approximately the same time.
Appellant argues that “the ‘0’ or ‘1’ signal (of Kaminaga) does not
accompany the data value transferred on the data signal line 7057” (Reply
Br. 4). Claim 1 requires that the “bits accompany said data value transferred
on said data bus” (App. Br. A1). In the absence of an explicit definition of
the term “accompany” in the Specification, we construe the term
“accompany” broadly but reasonably to include “to go with as an associate
or companion” or “to be in association with” (Merriam-Webster’s Collegiate
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Dictionary, Eleventh Edition, 2005). Using this broad but reasonable
interpretation, claim 1 requires the data value to be “transferred on said data
bus” but does not require that the bits that accompany the data value are also
“transferred on said data bus.” Rather, claim 1 merely requires that the bits
go with the data value “as an associate or companion” or broadly be “in
association with” the data value. Because the data value that is transferred
on the data bus is transferred “in association with” or “as an associate or
companion” with the bits (but not necessarily on the same data bus), we find
that the bit from the encryption decision device of Kaminaga “accompanies”
the data value. Therefore, we are unpersuaded by Appellant’s argument.
For at least the aforementioned reasons, we conclude that Appellant
has not sustained the requisite burden on appeal in providing arguments or
evidence persuasive of error in the Examiner’s rejection of claim 1, and
claims 2-13, 15-20, 22-34, 36-41, 43, and 44, which fall therewith.
Appellant has also not shown Examiner error in the rejection of claims 14
and 35 with respect to issue #2.

Issue #3
Claims 14 and 35 recite that the “data value is represented in a true
form or a complement form” (App. Br. A4, A8). The Examiner finds that
Kaminaga “clearly specifies different types of data (encrypted or not
encrypted)” and that “data as an encrypted data is similar to specifying as a
complement form” (Ans. 17). While the Examiner asserts that Kaminaga
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discloses data in encrypted form, the Examiner has not demonstrated that the
data in encrypted form of Kaminaga is equivalent or suggestive of data in
complement form of claims 14 and 35.
Accordingly, we conclude that Appellant has met the burden of
showing that the Examiner erred in rejecting claims 14 and 35 with respect
to issue #3. Therefore, we reverse the Examiner’s rejection of dependent
claims 14 and 35 as being unpatentable over Miyazaki and Kaminaga.

CONCLUSIONS OF LAW
Based on the findings of facts and analysis above, we conclude that:
1. Appellant has not demonstrated Examiner error in finding that
it would have been obvious to one of ordinary skill in the art to modify the
Miyazaki with the Kaminaga reference to achieve the claimed invention.
2. Appellant has not demonstrated Examiner error in finding that
output bits from the encryption decision device of Kaminaga constitute
representation specifying bits that accompany a data value transferred on a
data bus.
3. Appellant has demonstrated Examiner error in finding that
specifying data as encrypted or not encrypted is the same as specifying data
in complement or true form, respectively.

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DECISION
We affirm the Examiner’s decision rejecting claims 1-13, 15-20, 22-
34, 36-41, 43, and 44 under 35 U.S.C. § 103(a). We reverse the Examiner’s
decision rejecting claims 14 and 35 under 35 U.S.C. § 103(a).
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).

AFFIRMED-IN-PART

msc

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