Hugo John Martin. Vincent et al.

Patent Trials and Appeals Board

Dec 26, 2019

13968733 - (D) (P.T.A.B. Dec. 26, 2019)

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.
13/968,733 08/16/2013 Hugo John Martin VINCENT JRL-6157-3 1010
23117 7590 12/26/2019
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
MERCADO, GABRIEL S
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
12/26/2019 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HUGO JOHN MARTIN VINCENT, KRISZTIAN FLAUTNER,
and AMYAS EDWARD WYKES PHILLIPS

Appeal 2018-005233
Application 13/968,733
Technology Center 3600
____________

Before ERIC B. CHEN, JAMES B. ARPIN, and MICHAEL M. BARRY,
Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1, 3–25, and 28, which are all of the
claims pending. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We refer herein to the Appeal Brief filed Oct. 26, 2017 (“Appeal Br.”), the
Answer mailed Feb. 21, 2018 (“Ans.”), the Non-Final Office Action mailed
May 1, 2017 (“Non-Final Act.”), and the Specification and Figures from the
Drawings filed Aug. 16, 2013 (“Spec.” and “Figs.”).
2 We use “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies the real party in interest as ARM IP Limited. Appeal
Br. 3.
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Introduction
Appellant’s Specification describes an “invention relate[d] to the field
of electronic transactions between parties.” Spec. 2:6–7; see also Figs. 1–6.
Appellant discusses several issues impacting transactions performed
between two parties over a network, including the use of “a trusted third
party” and authentication technology. See Spec. 2:10–4:9. Appellant
describes techniques for authenticating electronic messages that use a trusted
third party along with differently cryptographically signed first and second
messages sent between devices of two parties to a transaction. See Spec.
11:9–16:27; Fig. 1.
Claims 1, 25, and 28 are independent; claim 1 is representative of the
claims on appeal:
1. A machine-implemented method for authenticating
electronic messages exchanged between a first electronic device
and a second electronic device, the method comprising:
a first signing step in which a first cryptographic signature
is applied to a first electronic message comprising a request and
a message identifier by said first electronic device to form a first
cryptographically signed message;
a first transmitting step in which said first cryptograph-
ically signed message is transmitted as a signal from said first
electronic device to said second electronic device;
a second signing step in which said second electronic de-
vice:
forms a second electronic message that comprises
the first cryptographically signed message, and
applies a second cryptographic signature to the sec-
ond electronic message to form a second cryptographically
signed message;
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a second transmitting step in which said second crypto-
graphically signed message is transmitted as a signal from said
second electronic device to said first electronic device;
a third transmitting step in which said second cryptograph-
ically signed message is transmitted as a signal from the first
electronic device and from the second electronic device to a
trusted third electronic device for authentication, wherein the
first electronic device does not locally verify that the second
cryptographically signed message was signed by the second elec-
tronic device, and wherein the second electronic device does not
locally verify that the first cryptographically signed message was
signed by the first electronic device;
a first verification step in which said trusted third elec-
tronic device verifies that said second cryptographically signed
message received as a signal from the first electronic device, and
said second cryptographically signed message received as a sig-
nal from the second electronic device, was cryptographically
signed by said second electronic device;
an extracting step in which the trusted third electronic de-
vice extracts the first cryptographically signed message from the
second cryptographically signed message;
a second verification step in which said trusted third elec-
tronic device verifies that said first cryptographically signed
message extracted from said second cryptographically signed
message received as a signal from the first electronic device, and
said first cryptographically signed message extracted from said
second cryptographically signed message received as a signal
from the second electronic device, was cryptographically signed
by said first electronic device; and
a request execution step in which, in response to positive
verifications from said first verification step and said second ver-
ification step, said trusted third electronic device manages exe-
cution of said request specified within said second cryptograph-
ically signed message.
Appeal Br. 28–29 (Claims App’x).
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The References and Rejections
The Examiner relies on the following references:
Name3 Number Published
Kuroda US 6,470,448 B1 Oct. 22, 2002
Iwamura US 2004/0107348 A1 June 3, 2004
Soto US 2004/0059924 A1 Mar. 25, 2004
Nagamine US 2004/0068465 A1 Apr. 8, 2004
Samid US 2008/0262969 A1 Oct. 23, 2008
Tie US 2010/0262832 A1 Oct. 14, 2010
Baptist US 2011/0161754 A1 June 30, 2011
Lucco US 2012/0297360 A1 Nov. 22, 2012
Ronca US 2013/0080270 A1 Mar. 28, 2013
The Examiner rejected claims 1, 3–25, and 28 under 35 U.S.C. § 101
as directed to a judicial exception, without reciting significantly more. Non-
Final Act. 8–13.
The Examiner rejected claims 1, 3–25, and 28 under 35 U.S.C.
§ 112(a), as failing to comply with the written description requirement.4
Non-Final Act. 13–14.
The Examiner rejected claims 1, 5–7, 11–13, 16, 18, and 20–25 under
35 U.S.C. § 103 as obvious over Kuroda, Iwamura, and Tie. Non-Final Act.
15–38; see also id. at 49.

3 All reference citations are to the first listed inventor’s surname.
4 The Examiner also rejected claims 1, 3–25, and 28 under 35 U.S.C.
§ 112(b) as indefinite, but withdrew that rejection in the Answer. Non-Final
Act. 14–15; Ans. 16.
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The Examiner rejected each of claims 3, 4, 8–10, 14, 15, 17, and 19 as
obvious in view of Kuroda, Iwamura, Tie, and either Soto, Nagamine,
Lucco, Samid, Baptist, or Ronca. Non-Final Act. 38–44.
The Examiner rejected claim 28 as obvious in view of Kuroda and
Iwamura. Non-Final Act. 44–49.
ANALYSIS
A. The Lack of Written Description Rejection
Compliance with the written description requirement is a question of
fact that is context sensitive. Ariad Pharms., Inc. v. Eli Lilly & Co., 598
F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (“[T]he level of detail required to
satisfy the written description requirement varies depending on the nature
and scope of the claims and on the complexity and predictability of the
relevant technology.”). The test is whether the disclosure “conveys to those
skilled in the art that the inventor had possession of the claimed subject
matter as of the filing date.” Id. The Specification must adequately describe
the claimed subject matter, but “the exact terms need not be used in haec
verba.” Lockwood v. Am. Airlines Inc., 107 F.3d 1565, 1572 (Fed. Cir.
1997).
The Examiner determines the Specification fails to provide written
description support for extracting a first cryptographically signed message
from a second cryptographically signed message, as recited in independent
claims 1, 25, and 28. Non-Final Act. 13–14 (citing Spec. ¶ 535) (explaining
“the [S]pecification doesn’t sufficiently disclose such step and circuitry for
performing this step”). Appellant contends the Examiner errs, because

5 Citations are to the Specification as published in US 2015/0052066 A1
(Feb. 19, 2015).
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artisans of ordinary skill would have understood the Specification’s
disclosure of processing a first cryptographically signed message 50 that
contains a second cryptographically signed message 90, as illustrated in
Figure 2 and discussed in paragraphs 16, 22, 44, and 62, demonstrates
Appellant was in possession of the limitations at issue. Appeal Br. 18–21.
The Examiner responds that paragraph 52 of the Specification, which
discusses that the trusted third party can verify whether a doubly-encrypted
message has been altered by using digests, without decrypting the first
encrypted message that is within the second encrypted message,
demonstrates that Appellant was not in possession of the disputed limitation.
Ans. 11–12.
Appellant’s argument is persuasive. Although the Examiner is correct
that the Specification’s discussion of the trusted third party’s use of digests
for determining whether a doubly-encrypted message has been altered does
not discuss decrypting the first encrypted message that is contained within
the second encrypted message, the limitation at issue does not require
decryption of the first encrypted message. There is no dispute that the
Specification discloses that the trusted third party decrypts the second
encrypted message that contains the first encrypted message in order to use
the contents of the second encrypted message for verification. Id. This
demonstrates there is written description support for the limitation at issue,
because ordinarily skilled artisans understand that using the contents of the
decrypted second message discloses extracting the contents of the second
encrypted message, i.e., including “extract[ing] the first cryptographically
signed message from the second cryptographically signed message,” as
claims 1, 25, and 28 recite.
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Accordingly, we do not sustain the Examiner’s rejection under 35
U.S.C. § 112(a) of claims 1, 3–25, and 28.
B. The Patent Eligibility Rejection
1. Patent Eligibility Law and Guidance
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The
U.S. Supreme Court, however, has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-step framework, described in Mayo and Alice.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 71–73 (2012)). In accordance with that framework, we first
determine what concept the claim is “directed to.” See Alice, 573 U.S. at
219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical concepts (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). In
Diamond v. Diehr, the claim at issue recited a judicial exception in the
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category of mathematical concepts, but the Court held that “[a] claim drawn
to subject matter otherwise statutory does not become nonstatutory simply
because it uses a mathematical formula.” 450 U.S. 175, 176 (1981).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (internal quotation marks
omitted). “A claim that recites an abstract idea must include ‘additional
features’ to ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
The Office has published revised guidance on the application of
§ 101. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50–57 (Jan. 7, 2019) (“Guidance”); October 2019 Update: Subject
Matter Eligibility, 84 Fed. Reg. 55942 (Oct. 17, 2019). Under the Guidance,
we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing human
activity such as a fundamental economic practice, or mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see Manual of Patent Examining Procedure (MPEP)
§ 2106.05(a)–(c), (e)–(h)).
See Guidance, 84 Fed. Reg. at 52–55. Only if a claim (1) recites a judicial
exception and (2) does not integrate that exception into a practical
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application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that are not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception.
See Guidance, 84 Fed. Reg. at 56.
2. Patent Eligibility Analysis
For the § 101 rejection, Appellant argues the independent claims
(which recite commensurate limitations) together as a group. Appeal Br.
11–18. We select claim 1 as representative. 37 C.F.R. § 41.37(c)(1)(iv).
In following the Guidance, we first consider under prong one of Step
2A whether claim 1 recites a judicial exception. Guidance, 84 Fed. Reg. at
54. For this analysis, we remain mindful that we must not express the
claim’s basic concept in a way that is “untethered from the language of the
claims” and, accordingly, we assess what claim 1 recites at the same level of
generality or abstraction expressed in the claim. Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016).
The nine recited steps are for a method of authenticating electronic
messages. The first step applies a cryptographic signature to a message to
form “a first cryptographically signed message.” The second step transmits
that cryptographically signed message from a first device to a second device.
The third step creates (“forms”) a second message that includes the first
cryptographically signed message and then applies a second cryptographic
signature to create a “second cryptographically signed message.” The fourth
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step transmits that second cryptographically signed message from the second
device to the first device. The fifth step requires both the first and second
devices to transmit the second cryptographically signed message to “a
trusted third electronic device for authentication.” In the sixth step, the
trusted third device verifies the second device’s cryptographic signing of the
second cryptographically signed message. In the seventh and eighth steps,
the trusted third device extracts the first cryptographically signed message
from the second cryptographically signed message and then verifies the first
device’s signing of the first cryptographically signed message. Finally, in
the ninth step, the trusted third device executes a “request specified within
said second cryptographically signed message.”
The focus of claim 1 is on using cryptographically signed messages
for verification, which is a technological idea. As the Specification explains,
the use of computer technology is a fundamental aspect of cryptographic
signing. See Spec. ¶ 41 (explaining that “[i]n general, the process of
cryptographically signing a message involves generating a digest or hash of
the message using a one-way hashing algorithm” and that “[a] key feature of
such a hashing algorithm is that it is computationally intractable to find a
different input that produces the same output”). Although cryptographic
signing involves mathematical algorithms, such as hashing algorithms, the
limitations of claim 1 do not recite a mathematical algorithm. There is no
evidence before us that humans can implement cryptographic signing in
their minds or with the assistance of pen and paper. Nor is there persuasive
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evidence before us that the recited steps involving cryptographic signature
technology a method of organizing human activity.6
Thus, putting aside the novelty and obviousness issues, we agree with
Appellant that claim 1 recites “a technological improvement” (Appeal Br.
17). Accordingly, because the basic focus of claim 1, as recited, is on a
digital computer technology, which is neither a mathematical concept, nor a
method of organizing human activity, nor a mental process, under the
Guidance, and consistent with relevant precedent, we determine that claim 1
does not recite an abstract idea. See 84 Fed. Reg. at 52.
We further note claim 1 is analogous to the claims at issue in DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). The
common key aspect of both Appellant’s claim 1 and the claim at issue in
DDR Holdings is that these claims focus on a challenge particular to
computers and computer networks. See 773 F.3d at 1257 (determining
claims “necessarily rooted in computer technology in order to overcome a
problem specifically arising in the realm of computer networks” are patent
eligible).

6 To the extent claim 1 recites steps that encompass certain methods of
organizing human activity that constitute an abstract idea, such as an idea
based on the exchange of signed documents between people, claim 1 recites
a practical application of such an idea. In particular, claim 1’s limitations
for forming a second cryptographically signed message that includes within
it a first cryptographically signed message, along with the limitations for
performing two verification steps related to the two levels of encryption,
which includes a first level of decryption of the doubly-encrypted message,
integrate any such “human activity” limitations into a practical application
of such an idea.
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Thus, at prong one of step 2A of the Guidance, we determine claim 1
does not recite a judicial exception, and we do not sustain the § 101 rejection
of claims 1, 3–25, and 28.
C. The Obviousness Rejections
In rejecting claim 1 as obvious, the Examiner finds that Iwamura
teaches “form[ing] a second electronic message that comprises the first
cryptographically signed message; and apply[ing] a second cryptographic
signature to the second electronic message” as recited. See Non-Final Act.
20–21 (citing Iwamura ¶ 115). Appellant contends, inter alia,7 the
Examiner errs in this finding. Appeal Br. 23–24 (citing Iwamura ¶¶ 43, 56,
58, 112, 114–15). In particular, Appellant argues that, in contrast with the
disputed limitations’ requirement for forming a second cryptographically
signed message that contains (“comprises”) a first cryptographically signed
message, which “provide[s] two layers of authentication over the first
original message,” Iwamura teaches two different signatures that are for two
different things. Id.
Appellant’s argument is persuasive. The Examiner responds that
“even if the signatures are placed in the document of Iwamura for different
reasons than in the claimed invention, this does not change the fact that both
inventions (instant and Iwamura) pertain to a digital data signed by multiple
users.” Ans. 13; see also id. at 14. This response is unpersuasive. Iwamura
describes its two signatures as applied to separate data, i.e., one for the data
for an “original image 12” and one for the data of the separate “history

7 Because we reverse the Examiner’s § 103 rejection based on a dispositive
issue, we do not address Appellant’s other contentions.
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information 13” that stores modification data for the image. Iwamura ¶¶ 56,
58 (discussing Figs. 1A and 1B).
We agree with the Examiner that it is unnecessary for Iwamura’s
invention to be for the same purpose as Appellant’s claim. But because the
two cryptographic signatures in Iwamura apply to two separate sets of data
(the original image and the modification history information), Iwamura’s
signature for the history information (which maps to claim 1’s “second
cryptographic signature”) does not include the signed original image (which
maps to claim 1’s “first cryptographically signed message”), as required by
the disputed limitations. Thus, Appellant persuades us that the Examiner
errs in relying on Iwamura for teaching or suggesting the disputed
limitations.
Thus, we do not sustain the Examiner’s obviousness rejection of
independent claim 1. Because independent claims 25 and 28 include
commensurate limitations for which the Examiner’s rejections rely on the
same findings from Iwamura (see Appeal Br. 34–37; Non-Final Act. 36, 48),
we also do not sustain the obviousness rejections of claims 25 and 28. We
also, accordingly, do not sustain the obviousness rejections of the dependent
claims 3–24.
CONCLUSION
In summary:
Claim(s)
Rejected 35 U.S.C. §
Reference(s)
Basis Affirmed Reversed
1, 3–25, 28 112(a) Written Description 1, 3–25, 28
1, 3–25, 28 112(b) Indefiniteness 1, 3–25, 28
1, 3–25, 28 101 Eligibility 1, 3–25, 28
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Claim(s)
Rejected 35 U.S.C. §
Reference(s)
Basis Affirmed Reversed
1, 5–7, 11–13,
16, 18, 20–25 103
Kuroda,
Iwamura, Tie
1, 5–7, 11–
13, 16, 18,
20–25
3, 4 103
Kuroda,
Iwamura, Tie,
Soto
3, 4
8 103
Kuroda,
Iwamura, Tie,
Nagamine
8
9, 10 103
Kuroda,
Iwamura, Tie,
Lucco
9, 10
14 103
Kuroda,
Iwamura, Tie,
Samid
14
15 103
Kuroda,
Iwamura, Tie,
Baptist
15
17, 19 103
Kuroda,
Iwamura, Tie,
Ronca
17, 19
28 103 Kuroda, Iwamura 28
Overall
Outcome 1, 3–25, 28

REVERSED