Jan Hoogerbrugge et al.

Patent Trials and Appeals Board

Sep 5, 2019

14259395 - (D) (P.T.A.B. Sep. 5, 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.
14/259,395 04/23/2014 Jan Hoogerbrugge 81627480US01 7415
65913 7590 09/05/2019
Intellectual Property and Licensing
NXP B.V.
411 East Plumeria Drive, MS41
SAN JOSE, CA 95134
EXAMINER
AVERY, JEREMIAH L
ART UNIT PAPER NUMBER
2431
NOTIFICATION DATE DELIVERY MODE
09/05/2019 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):
ip.department.us@nxp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte JAN HOOGERBRUGGE, PHILLIPPE TEUWEN,
and WIL MICHIELS1
____________________

Appeal 2018-006310
Application 14/259,395
Technology Center 2400
____________________

Before MICHAEL J. STRAUSS, JON M. JURGOVAN, and
MICHAEL M. BARRY, Administrative Patent Judges.

STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1–22. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.2

1 According to USPTO assignment records, the subject application is
assigned to NXP B.V. which is considered the real party in interest.
2 We refer to the Substitute Specification, filed July 16, 2014 as amended
February 5, 2016 (“Spec.”); Final Office Action, mailed April 20, 2017
(“Final Act.”); Appeal Brief, filed December 21, 2017 (“App. Br.”);
Examiner’s Answer, mailed May 2, 2018 (“Ans.”); and Reply Brief, filed
May 31, 2018 filed (“Reply Br.”).
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THE INVENTION
The claims are directed to control flow flattening for code obfuscation
where the next block calculation needs run-time information. Spec., Title.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A method of obscuring software code within a software
application including a plurality of basic blocks wherein the
basic blocks have an associated identifier (ID) and the basic
block is a portion of software code within the software
application, comprising:
determining, by a processor, for a first basic block, first
predecessor basic blocks, wherein each of the first predecessor
basic blocks have a unique ID and first predecessor basic blocks
jump to the first basic block and the first basic block jumps to a
next basic block based upon a next basic block ID;
producing, by the processor, a mask value based upon the
IDs of first predecessor basic blocks, wherein the mask value
identifies common bits of the IDs of the first predecessor basic
blocks; and
inserting, by a processor, an instruction in the first basic
block to determine a next basic block ID based upon the mask
value and an ID of one of the first predecessor basic blocks.

REFERENCES3
The following prior art is relied upon by the Examiner in rejecting the
claims on appeal:
Narad et al. US 6,157,955 Dec. 5, 2000
Byrne et al. US 2012/0005391 Al Jan. 5, 2012
Thichina US 8,422,668 B1 Apr. 16, 2013
Chevallier-Mames et al. US 2014/0165208 Al June 12, 2014

3 All citations herein to these references are by reference to the first named
inventor only.
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REJECTIONS
The Examiner made the following rejections:
Claims 1–22 stand rejected under 35 U.S.C. § 101 as directed to a
judicial exception (i.e., an abstract idea) without significantly more. Final
Act. 5–6.
Claims 1–3, 9–12, 15, 17, 18, and 21 stand rejected under 35 U.S.C.
§ 103 over Thichina and Chevallier-Mames. Final Act. 7–11.
Claims 4, 6–8, 13, 16, 19, and 22 stand rejected under 35 U.S.C. § 103
over Thichina, Chevallier-Mames, and Narad. Final Act. 11–14.
Claims 5, 14, and 20 stand rejected under 35 U.S.C. § 103 over
Thichina, Chevallier-Mames, and Byrne. Final Act. 15–16.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred in rejecting independent claims 1, 11,
and 17 under 35 U.S.C. §§ 101 and 103. We agree with Appellants’
conclusions as to these rejections of the claims.

35 U.S.C. § 101
Appellants’ contentions are persuasive with regard to the rejection of
claims 1–3, 7, and 10–22 under 35 U.S.C. § 101. Section 101 defines
patentable subject matter: “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. The U.S.
Supreme Court, however, has “long held that this provision contains an
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important implicit exception” that “[l]aws of nature, natural phenomena, and
abstract ideas are not patentable.” Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 70 (2012) (quotation omitted). “Eligibility under
35 U.S.C. § 101 is a question of law, based on underlying facts.” SAP Am.,
Inc. v. InvestPic, LLC, 898 F.3d 1161, 1166 (Fed. Cir. 2018).
To determine patentable subject matter, we undertake a two part test.
“First, we determine whether the claims at issue are directed to one of those
patent-ineligible concepts” of “laws of nature, natural phenomena, and
abstract ideas.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014).
“The inquiry often is whether the claims are directed to ‘a specific means or
method’ for improving technology or whether they are simply directed to an
abstract end-result.” RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322,
1326 (Fed. Cir. 2017). A court must be cognizant that “all inventions at
some level embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas” (Mayo, 566 U.S. at 71), and “describing the
claims at . . . a high level of abstraction and untethered from the language of
the claims all but ensures that the exceptions to § 101 swallow the rule.”
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016).
Instead, “the claims are considered in their entirety to ascertain whether their
character as a whole is directed to excluded subject matter.” Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
If the claims are directed to an abstract idea or other ineligible
concept, then we continue to the second step and “consider the elements of
each claim both individually and ‘as an ordered combination’ to determine
whether the additional elements ‘transform the nature of the claim’ into a
patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S.
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at 79, 78). The Court describes the second step as a search for “an
‘inventive concept’– i.e., an element or combination of elements that is
‘sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself.’” Id. (quoting Mayo, 566
U.S. at 72–73).
The Office recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Guidance”). Under that guidance, we look to
whether the claim recites:
(1) a judicial exception, such as a law of nature or any of the
following groupings of abstract ideas:
(a) mathematical concepts, such as mathematical formulas;
(b) certain methods of organizing human activity, such as a
fundamental economic practice; or
(c) mental processes, such as an observation or evaluation
performed in the human mind;
(2) any additional limitations that integrate the judicial exception
into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h));
and
(3) any additional limitations beyond the judicial exception that,
alone or in combination, were not “well-understood, routine,
conventional” in the field (see MPEP § 2106.05(d)).
See Guidance 52, 55, 56. Under the Guidance, if the claim does not recite a
judicial exception, then it is eligible under § 101, and no further analysis is
necessary. Id. at 54. Similarly, under the Guidance, “if the claim as a whole
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integrates the recited judicial exception into a practical application of that
exception,” then no further analysis is necessary. Id. at 53, 54.
USPTO Step 1: Whether the claims are directed to one of the
four statutory categories of invention
Although not clearly delineated in the statement of the rejection (see
Final Act. 5–6), the Examiner’s conclusion that the claims are non-statutory
is based, at least in part, on reasoning applicable to Step 1 of our analysis:
A claim that recites no more than software, logic or a data
structure (i.e., an abstract idea) – with no structural tie or
functional interrelationship to an article of manufacture,
machine, process or composition of matter does not fall within
any statutory category and is not patentable subject matter; data
structures in ethereal, nonphysical form are non-statutory subject
matter. In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir.
1994)[4]; see [In re] Nuijten, 500 F.3d [1346,] 1357 [(Fed. Cir.
2007)5]. Thus the Appellant[s’] claimed invention is held to be
non-statutory.
Ans. 4.
Appellants reply, arguing:
[T]he claims are more than “Data in its ethereal, non-physical
form” as asserted by the [E]xaminer, but rather takes executable
software code and modifies it to obscure its operation. Also, the
claims are not abstract software code, but a method of modifying
software code to obscure its operation. Further, the claim
limitations are not “directed to collecting information, analyzing
it and utilizing certain results of the collection and analysis.”
Reply 2–3.

4 A claim that recites no more than software does not fall within any
statutory category.
5 “[S]ignals, standing alone, are not ‘[articles of] manufacture[]’ under the
meaning of that term in § 101.”
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We disagree with the Examiner’s conclusion that the claims are not
directed to one of the four statutory categories of invention, i.e., a process,
machine, manufacture, or composition of matter as required by § 101.
Independent claims 1 and 17 recite a method and independent claim 11
recites “a non-transitory machine-readable storage medium.” As to claims 1
and 17, unlike machines, manufactures and compositions of matter, methods
or processes need not recite a physical or tangible form. See Digitech Image
Techs., LLC v. Electronics for Imaging, Inc., 758 F.3d 1344, 1348 (Fed. Cir.
2014) (“For all categories except process claims, the eligible subject matter
must exist in some physical or tangible form.”). Claim 11, rather than
directed to software,6 recites media encoded with instructions in the form of
a “Beauregard” claim7. Furthermore, by requiring the medium be non-
transitory, Appellants exclude signals and other transitory embodiments that
are non-statutory. See David J. Kappos, Subject Matter Eligibility of
Computer Readable Media, 1351 OFF. GAZ. PAT. OFFICE 212 (Feb. 23,
2010);8 c.f. Nuijten, 500 F.3d at 1355.9 Thus, under Step 1 of the USPTO’s
eligibility analysis, the claimed subject matter falls within the four statutory
categories of patentable subject matter identified by 35 U.S.C. § 101.

6 We note in passing, rather than reciting a software application, e.g., “a
computer program stored on non-transitory computer-readable medium,”
claim 11 recites the medium itself.
7 In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995)
8 A claim drawn to such a computer readable medium that covers both
transitory and non-transitory embodiments may be amended to narrow the
claim to cover only statutory embodiments to avoid a rejection under
35 U.S.C. § 101 by adding the limitation “non-transitory” to the claim.
9 Transitory embodiments are not directed to statutory subject matter.
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USPTO Step 2A, Prong 1: Whether the Claims Recite Any
Judicial Exceptions
The Examiner determines “[c]laim(s) 1, 11 and 17 are directed to the
abstract idea of code masking,” that is, “mathematical relationships/
formulas.” Final Act. 5–6. According to the Examiner “[t]he claim
limitations are directed to collecting information, analyzing it and utilizing
certain results of the collection and analysis; which has been held to be
directed to an abstract idea and non-statutory; as referred to within Electric
Power Group, LLC v. Alstom S.A., [830 F.3d 1350] (Fed. Cir. 2016).”
Appellants contend the claims are not directed to an abstract idea but
are rooted in computer technology by providing “the ability to obscure the
flow of the operation of the software, to improve the secure operation of the
computer.” App. Br. 6. Appellants argue “like the claims at issue in
DDR[10], the pending claims do not recite an abstract idea and are patent
eligible.” Id. Appellants distinguish the claims over prior decisions, arguing
“Electric Power Group was about data analysis. The present claims are
about taking software and obscuring it. As software is run on a computer
system, the obscuring of that software running on a computer certainly is an
improvement in the operation of the computer and an improvement in
computer technology.” Id. at 8 (emphasis added).
In Electric Power, the Federal Circuit recognized that
“analyzing information by steps people go through in their minds, or
by mathematical algorithms, without more, as essentially mental processes
within the abstract-idea category.” Electric Power, 830 F.3d at 1354. For
example, claim 12 in Electric Power involved analyzing events based on

10 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
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measurements. See id. at 1351–52. In FairWarning, the claims were
“directed to collecting and analyzing information to detect misuse and
notifying a user when misuse is detected.” FairWarning IP, LLC. v. Iatric
Syst., Inc., 839 F.3d 1089, 1094 (Fed. Cir. 2016). That is the type of activity
that can be, and often is, performed in the human mind. See Electric Power,
830 F.3d at 1354; FairWarning, 839 F.3d at 1093.
In contrast to those cases, the Examiner has not provided sufficient
evidence or reasoning explaining how or why the claimed steps of
determining first predecessor basic blocks, producing a mask value, and
inserting an instruction are mental processes. In the absence of such
explanation, we conclude the claimed steps (a) are a particular technological
implementation, and (b) cannot practically be performed by a human being,
either mentally or with pen and paper. Further, our review of claim 1 does
not find a mathematical concept is recited.
In light of the above analysis, and because the recited steps of
obscuring software code are not a mathematical concept, an identified
method of organizing human activity, or a mental process, we conclude the
claimed invention does not recite and, therefore, is not directed to an abstract
idea. See Memorandum at 52; see also id. at 53 (“Claims that do not recite
matter that falls within these enumerated groupings of abstract ideas should
not be treated as reciting abstract ideas, except” in rare circumstances.).
USPTO Step 2A, Prong 2: Whether the Claims Integrate a
Judicial Exception into a Practical Application
Although, for the reasons discussed above, we conclude the Examiner
has failed to explain adequately how and why the claims recite a judicial
exception e.g., an abstract idea such as a mathematical concept or mental
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process, we additionally conclude the claims integrate any recited judicial
exception into a practical application under Prong 2 of our analysis. For this
additional reason and as discussed below, we further conclude the claims are
not directed to an abstract idea.
According to the Examiner:
The claims do not include additional elements that are sufficient
to amount to significantly more than the judicial exception
because the additional element(s) or combination of elements in
the claim(s) other than the abstract idea per se amount(s) to no
more than: mere instructions to implement the idea on a
computer, and/or recitation of generic computer structure (i.e. the
claimed “processor”) that serves to perform generic computer
functions that are well-understood, routine, and conventional
activities previously known to the pertinent industry.
Final Act. 6.
Appellants contend “[t]he claims relate to an improvement in the
technological field of white-box cryptography where the software code is
control flattened” and, as such, include improvements to another technology
or technical field and to the functioning of a computer itself. App. Br. 9.
Appellants conclude “[a]s such, the claims each include significantly more
than an abstract idea and, thus, are also patent eligible under step two of the
Alice test, regardless of whether any abstract idea can be properly found
under the first step.” Id. at 9–10.
The Examiner fails to rebut sufficiently Appellants’ contentions. As
explained by Appellants, “[t]he claimed invention is directed to controlling
the flow of the operation of software that is obscured to make it more
difficult for an attacker to follow the operation of the software.” Reply Br.
2. Therefore, we agree the claims include improvements to the functioning
of a computer itself (i.e., increasing security; see App. Br. 6) thereby
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integrating any judicial exception into a practical application under Prong 2
of our analysis.
Because we agree with at least one of the arguments advanced by
Appellants in connection with the subject rejection, we need not reach the
merits of Appellants’ other arguments. Accordingly, for the reasons
discussed in connection with Prong 1 and for these additional reasons under
Prong 2 of our analysis, we do not sustain the rejection of claim 1 or, for the
same reasons, the rejection of independent claims 11 and 17 under 35 U.S.C.
§ 101 or the rejection of dependent claims 2–10, 12–16, or 18–22.

35 U.S.C. § 103
The Examiner finds Trichina discloses all steps of claim 1 but for each
of the first predecessor basic clocks having a unique ID. Final Act. 7–8.
The Examiner relies on Chevallier-Mames for disclosing the subject matter
recited by the preamble of claim 1 and the noted deficiency of Trichina. Id.
at 8. However, the Examiner does not give the preamble patentable weight,
finding it merely recites the purpose of the claimed process and because the
body of the claim does not depend on the preamble for completeness. Id.
The Examiner concludes it would have been obvious to incorporate the
software obscuration techniques of Chevallier-Mames into the table lookup
operations taught by Thichina “so as ‘to prevent reverse engineering to
uncover secret data used in operations using the program data.’” Id. at 9,
citing Chevallier-Mames, p. 1, ¶ 7.
Appellants contend the rejections of claims under 35 U.S.C. § 103 are
improper because “[n]owhere does Trichina teach obscuring of software
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code as Trichina is directed to a hardware implementation of [the Advanced
Encryption Standard (AES)].” App. Br. 12. Appellants argue:
[C]laim 1 recites “inserting, by a processor, an instruction in the
first basic block to determine a next basic block ID based upon
the mask value and an ID of one of the first predecessor basic
blocks.” Again, the portions of Trichina cited by the [E]xaminer
regarding this element are directed to the operation of the
cascade of multiplexers that is hardware. The claim states that
“the basic block is a portion of software code with the software
application.” Accordingly, Trichina does not teach at least this
feature of claim 1.
Id.
The Examiner responds, reiterating the preamble has not been given
patentable weight and thereby discounting Appellants’ arguments that the
claimed invention is directed to obscuring software code as recited in the
preamble. Ans. 5. Appellants reply, alleging the Examiner fails to address
argument that Trichina does not teach the claimed inserting step wherein, as
recited by the preamble, the basic block is a portion of software code within
the software application. Reply Br. 4.
“Whether a preamble stating the purpose and context of the invention
constitutes a limitation of the claimed process is determined on the facts of
each case in light of the overall form of the claim, and the invention as
described in the specification and illuminated in the prosecution
history.” Applied Materials, Inc. v. Advanced Semiconductor Materials Am.,
Inc., 98 F.3d 1563, 1572–73 (Fed. Cir. 1996). Generally, if the preamble is
“necessary to give life, meaning, and vitality” to the claim, or otherwise
recites essential steps or structure, the preamble is determined to limit the
invention. Pitney Bowes, Inc. v. Hewlett--Packard Co., 182 F.3d 1298, 1305
(Fed. Cir. 1999). Conversely, if the body of the claim defines a structurally
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complete invention and the preamble is used to state an intended use or
purpose, the preamble is not limiting. Rowe v. Dror, 112 F.3d 473, 478
(Fed. Cir. 1997).
The preamble of claim 1, in addition to describing the purpose of the
invention (i.e., obscuring software codes within a software application)
defines structure on which the method steps operate. In particular,
Appellants argue, and we agree, the preamble requirement that the basic
block be a portion of software code within a software application gives life
and meaning to the step of inserting an instruction in the first basic block [of
software code] to determine a next back block [of software code] ID based
upon the mask value of an ID of one the first predecessor basic blocks [of
software code]. Furthermore, Appellants’ reliance on the preamble
transforms it into a claim limitation.11 Accordingly, it was error for the
Examiner not to give patentable weight to the preamble. Because the
Examiner relies solely on Thichina for disclosing the disputed inserting step
yet the reference fails to disclose a basic block that is a portion of software
code, the prior art as applied by the Examiner is deficient in teaching or
suggesting the disputed step. Accordingly, we do not sustain the rejection of
independent claim 1 or, for the same reasons, the rejection of independent
claims 11 and 17 or the rejections of dependent claims 2–10, 12–16, and 18–
22, which stand with their respective base claim.
Because we agree with at least one of the arguments advanced by
Appellants in connection with the subject rejection, we need not reach the
merits of Appellants’ other arguments.

11 See MPEP § 2111.02 citing Catalina Marketing v. Coolsavings.com, 289
F. 3d 801, 808-09 (Fed. Cir. 2002).
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DECISION
We reverse the Examiner’s decision to reject claims 1–22 under
35 U.S.C. § 101.
We reverse the Examiner’s decision to reject claims 1–22 under
35 U.S.C. § 103.
REVERSED