HEWLETT PACKARD ENTERPRISE DEVELOPMENT LP

Patent Trials and Appeals Board

Dec 10, 2021

2020003019 (P.T.A.B. Dec. 10, 2021)

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.
15/420,865 01/31/2017 Mathew M. Kaippallimalil 90329880 2432
56436 7590 12/10/2021
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
EXAMINER
DOAN, TRANG T
ART UNIT PAPER NUMBER
2431
NOTIFICATION DATE DELIVERY MODE
12/10/2021 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):
chris.mania@hpe.com
hpe.ip.mail@hpe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte MATHEW M. KAIPPALLIMALIL,
DAVID C. WILLIAMSON,
BRAD THOMAS KENYON, and LU TIAN1
________________

Appeal 2020-003019
Application 15/420,865
Technology Center 2400
________________

Before JEAN R. HOMERE, BRADLEY W. BAUMEISTER, and
DAVID J. CUTITTA II, Administrative Patent Judges.

Per Curiam.

Opinion Concurring filed by Administrative Patent Judge BAUMEISTER.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–20, which constitute all claims pending in this
application. Appeal Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies Hewlett Packard Enterprise Development LP as the real party in
interest. Appeal Brief 2, filed October 3, 2019 (“Appeal Br.”). Appellant
does not number the Appeal Brief. We treat the Brief’s cover page as being
page 1 and all subsequent pages as being numbered sequentially.
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CLAIMED SUBJECT MATTER
Appellant describes the claimed subject matter as follows:
In one example in accordance with the present disclosure,
a system may comprise a [] combination engine to combine an
encrypted device identification and a routing indicator resulting
in a combined device identification. The system may also
include an encryption engine to encrypt the combined device
identification and a transmission engine to transmit the encrypted
combined device identification.
Spec., Abstr.
Independent claim 1, reproduced below with the disputed claim
language emphasized, illustrates the claimed subject matter of the appealed
claims:
1. A system comprising:
a processor; and
memory coupled to the processor and storing instructions
therein, when executed by the processor causes the system to
execute:
a combination engine to combine an encrypted device
identification associated with identifying a device accessing a
network and a routing indicator, the combination resulting in a
combined device identification, wherein the encrypted device
identification is encrypted using a first encryption key that is
concealed from the one or more additional devices connected to
the network other than an authentication server;
an encryption engine to encrypt the combined device
identification, wherein the combined device identification is
encrypted using a second encryption key that is known to the one
or more additional devices connected to the network; and
a transmission engine to transmit the encrypted combined
device identification when communicating information from the
device via the network.
Appeal Br. 15.
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STATEMENT OF THE REJECTIONS
The Examiner rejects claims 1–20 as follows:
Claims 1–3, 6, 7, 11, 13, and 15–18 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over the combined teachings of Pizano
(US 2008/0086646 A1; published Apr. 10, 2008) and Piqueras Jover
(US 9,667,600 B2; issued May 30, 2017). Final Action 4–8, mailed
March 4, 2019 (“Final Act.”).
Claims 4, 5, 14, and 19 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the combined teachings of Pizano, Piqueras Jover, and
Eriksson (US 2016/0149913 A1; published May 26, 2016). Final Act. 8–11.
Claim 8 stands rejected under 35 U.S.C. § 103 as being unpatentable
over the combined teachings of Pizano, Piqueras Jover, and Ramanujan
(US 2018/0077171 A1; published Mar. 15, 2018). Final Act. 11.
Claims 9, 10, 12, and 20 stand rejected under 35 U.S.C. § 103 as
being unpatentable over the combined teachings of Pizano, Piqueras Jover,
and Kadatch (US 2013/0227303 A1; published Aug. 29, 2013). Final
Act. 12–13.

DETERMINATIONS AND CONTENTIONS
The Examiner finds that Pizano discloses all of the limitations of
claim 1 except for the second limitation’s language, “wherein the combined
device identification is encrypted using a second encryption key that is
known to the one or more additional devices connected to the network.”
Final Act. 4–5. The Examiner finds that Piqueras Jover teaches this
limitation and that motivation existed to combine the teachings of these
references. Id. at 5.
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Appellant argues that Pizano fails to disclose the language of
claim 1’s first limitation, “wherein the encrypted device identification is
encrypted using a first encryption key that is concealed from the one or more
additional devices connected to the network other than an authentication
server.” Appeal Br. 6–13. Appellant contends that Pizano’s main server 40
and/or the key server 42 at most regulate the distribution of the encryption
key to eliminate or reduce the risk of an unauthorized person obtaining the
encryption key. Reply Brief 7, filed Mar. 13, 2020 (“Reply Br.”).
Appellant argues that it is not reasonable to interpret Pizano’s
disclosure of regulating the key distribution to mean that the encryption key
is concealed from the additional devices, as claimed. E.g., Reply Br. 6–7.
Appellant argues that it is insufficient that an encryption key is regulated by
a key server “such that other network servers are not able to access th[e]
encryption key.” Id. at 5. According to Appellant, concealment further
requires that the other servers not even have an awareness of the encryption
key’s existence and location at the key server. Id.

ANALYSIS
The Board conducts a limited de novo review of the appealed
rejections for error based upon the issues identified by Appellant, and in
light of the arguments and evidence produced thereon. Ex parte Frye,
94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
I.
We do not agree with Appellant that the claim term “concealed” must
be interpreted so narrowly as to require that other network devices must be
completely unaware of the encryption key’s existence. Under the broadest
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reasonable interpretation, an encryption key can be concealed even if the
additional components are aware that the key exists, but the additional
components do not know what the value of the key is. See, e.g., Spec. ¶ 12
(indicating that device information is concealed when the value of the first
encryption key is unknown to any other network entities—not when the
existence of the encryption key is concealed); id. ¶ 18 (“[T]he first
encryption key may be private to authentication server and not known to
other network entities.”).2
II.
We next address the meaning of claim 1’s clause, “wherein the
encrypted device identification is encrypted using a first encryption key that
is concealed from the one or more additional devices connected to the
network other than an authentication server.”
As a threshold matter, we note that claim 1 lacks adequate antecedent
basis for the term “the one or more additional devices connected to the
network other than an authentication server” Appeal Br. 15 (emphasis
added). Claim 1 does not previously set forth that the system comprises one
or more additional devices. As such, the metes and bounds of claim
protection being sought are not reasonably clear.
More specifically, it is not reasonably clear whether claim 1 is
intended to set forth that the system has a plurality of additional devices and

2 If the disputed term “concealed,” must be interpreted narrowly to mean that
the mere existence of the first key also is unknown, as Appellant urges, the
claim language would raise questions of whether Appellant’s originally filed
Specification provides adequate written description, as required by
35 U.S.C. § 112(a). Because we do not adopt Appellant’s proffered
interpretation, though, we need not address this question.
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that the claim is satisfied so long as the first encryption key is concealed
from at least one or more (but not necessarily all) of the plurality of
additional devices. Alternatively, claim 1 may be intended to recite that the
system includes one or more additional device, and the first encryption key
is concealed from all of the additional devices, no matter how many
additional devices are present.
We resolve this ambiguity in claim scope by interpreting the claim
according to the former, broader interpretation. During examination, the
claims must be interpreted as broadly as their terms reasonably allow. In re
Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). Also,
arguments that the claim scope is limited to the narrower interpretation
potentially may raise questions of whether claim 1 is reasonable definite
under 35 U.S.C. § 112(b).
Based on this interpretation, we turn to the merits of Appellant’s arguments.
Under this broader interpretation, Appellant does not demonstrate reversible
error in the obviousness rejection of claim 1. As the Examiner finds and
Appellant agrees, Pizano sets forth that “the main server 40 and/or the key
server 42 regulate the distribution of the encryption key to eliminate or
reduce the risk of an unauthorized person obtaining the encryption key.”
Pizano ¶ 62, cited in Final Act. 4; Appeal Br. 8 (“The Examiner is correct in
stating ‘the device information is concealed based on the first encryption key
when transferring device information on a network and the first encryption
key is unknown to any other network entities.’”). The entire point of
encrypting data with an encryption key is to conceal the data from at least
one additional device in the system—or to prevent at least one additional
device from being able to ascertain the data. And the entire point of using
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an encryption key to encrypt the data is to conceal the value of the key from
at least one device in the system. If every device in the system knows the
value of the encryption key, every device would be able decrypt the data and
ascertain the plaintext. As such, Pizano’s express disclosure of the first
encryption key teaches that the first encryption key is concealed from at
least one of the one or more additional devices, as claimed. See In re Bond,
910 F.2d 831, 832 (Fed. Cir. 1990) (There is no ipsissimis verbis test for
determining whether a reference discloses a claim element, i.e., identity of
terminology is not required.).
We, therefore, affirm the obviousness rejection of claim 1. We,
likewise, affirm the obviousness rejections of claims 2 through 20, which
Appellant does not argue separately. Appeal Br. 13; see 37 C.F.R.
§ 41.37(c)(1)(iv) (“When multiple claims subject to the same ground of
rejection are argued as a group or subgroup by appellant, the Board may
select a single claim from the group or subgroup and may decide the appeal
as to the ground of rejection with respect to the group or subgroup on the
basis of the selected claim alone.”).3

3 Because the Examiner finds that Pizano teaches concealing the encryption
key value from at least one additional network device, we do not address the
separate question of whether Pizano’s teachings at least render it obvious to
conceal the encryption key value from every other device in this manner.
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DECISION SUMMARY
In summary:

TIME PERIOD FOR RESPONSE
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED.

Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 6–7, 11,
13, 15–18
103 Pizano, Piqueras
Jover
1–3, 6–7,
11, 13,
15–18

4–5, 14, 19 103 Pizano, Piqueras
Jover, Eriksson
4–5, 14,
19

8 103 Pizano, Piqueras
Jover, Ramanujan
8
9–10, 12, 20 103 Pizano, Piqueras
Jover, Kadatch
9–10, 12,
20

Overall
Outcome
1–20
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte MATHEW M. KAIPPALLIMALIL,
DAVID C. WILLIAMSON,
BRAD THOMAS KENYON, and LU TIAN
________________

Appeal 2020-003019
Application 15/420,865
Technology Center 2400
________________

Before JEAN R. HOMERE, BRADLEY W. BAUMEISTER, and
DAVID J. CUTITTA II, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge, concurring.

I agree with the Board’s ultimate decision affirming the rejections. I
write separately because a clearer, simpler reason exists for affirming the
obviousness rejections.
I.
I agree with the Majority that Appellant’s proposed definition of
“conceal” is unduly narrow. I am undecided whether Appellant is correct
that concealing the value of the first encryption key does require more than
merely regulating the distribution of the key to the extent taught by Pizano.
E.g., Reply Br. 4. More specifically, I question whether claim 1 further
requires that the value of the first encryption key must be unknown to all
other devices in the system. And if so, I question whether the Examiner
sufficiently establishes that Pizano expressly or inherently teaches regulating
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the encryption key’s distribution specifically such that no additional network
devices are aware of its value.
The relied upon portion of Pizano merely states, “the main server 40
and/or the key server 42 regulate the distribution of the encryption key to
eliminate or reduce the risk of an unauthorized person obtaining the
encryption key.” Pizano ¶ 62; see generally all Pizano ¶¶ 61–63, cited in
Examiner’s Answer 3–5, mailed Jan. 15, 2020 (for teaching the disputed
claim language). That is, I question whether regulating the key’s
distribution, as disclosed by Pizano, potentially can entail merely limiting
the distribution to a few additional network devices.
III.
However, these questions do not need to be answered in order to
resolve the present dispute. This is because the language of claim 1
reasonably may be interpreted more broadly than either the Examiner or
Appellant propose. It is well settled that “[b]efore considering the rejections
. . ., we must first [determine the scope of] the claims . . . .” In re Geerdes,
491 F.2d 1260, 1262 (CCPA 1974).
More specifically, claim 1 does not recite that processor causes the
system to execute an affirmative step of concealing a first encryption key
from the one or more additional network devices. Claim 1’s preamble and
disputed first limitation, instead, recite that the memory stores instructions
that when executed, cause the system to execute
a combination engine to combine an encrypted device
identification associated with identifying a device accessing a
network and a routing indicator, the combination resulting in a
combined device identification, wherein the encrypted device
identification is encrypted using a first encryption key that is
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concealed from the one or more additional devices connected to
the network other than an authentication server.
Appeal Br. 15 (emphasis added).
That is, this limitation of claim 1 recites that the combination engine
performs an affirmative step of just combining the two pieces of data (the
encrypted device identification and the routing indicator) to produce further
data (a combined device identification). The limitation’s remaining
language, contained in the wherein clause, merely describes how the
encrypted-device-identification data came into existence before the
combination engine performs the affirmatively recited combining step. As
such, the language of the italicized wherein clause only recites the source of
the encrypted-device-identification data or inferentially recites the process
by which this data came into existence. That is, the first limitation, read as a
whole, only requires that the combination be in possession of the two pieces
of data and combine them.
Restated, the wherein clause recites an intangible property of the
encrypted-device-identification data that cannot be determined by
observation. The record contains insufficient evidence to indicate that one
can determine how the encrypted data came into being, or whether the
encryption key is concealed from other system devices, merely by analyzing
the encrypted-device-identification data that is possessed by the combination
engine. The language of this wherein clause, then, does not further limit or
further patentably distinguish the combining step, which is the only
affirmative step that is recited as being performed by the combination
engine. See, e.g., Biogen MA Inc. v. EMD Serono, Inc., 976 F.3d 1326, 1334
(Fed. Cir. 2020) (holding that in a claim to a method of treatment that uses a
specified composition, recitations of the manner in which the composition
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was produced only patentably distinguish the claim over the prior art to the
extent that the manner of producing the composition tangibly distinguishes
the composition over the prior art).
To summarize, Appellant only argues that the cited art does not
disclose the language of the wherein clause pertaining to how the encrypted-
device-identification data is encrypted. However, this language is directed
to an intangible property of the encrypted-device-identification data that
cannot be ascertained by observation of the data. As such, the language does
not patentably distinguish claim 1 over the prior art. Accordingly, Appellant
does not establish that the Examiner committed reversible error in rejecting
claim 1 as obvious over the cited art.
I, therefore, would affirm the obviousness rejection of claim 1 on the
basis that Appellant only presents arguments in relation to claim language
that does not patentably over the cited art. I, likewise, would affirm the
obviousness rejections of claims 2–20, which Appellant does not argue
separately from claim 1. Final Act. 13; see 37 C.F.R. § 41.37(c)(1)(iv).