Matthew Pauker et al.

Patent Trials and Appeals Board

Oct 1, 2021

2021001730 (P.T.A.B. Oct. 1, 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.
13/517,513 06/13/2012 Matthew J. Pauker 90068877 7636
146568 7590 10/01/2021
MICRO FOCUS LLC
500 Westover Drive
#12603
Sanford, NC 27330
EXAMINER
WINTER, JOHN M
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
10/01/2021 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):
software.ip.mail@microfocus.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW J. PAUKER and TERENCE SPIES

Appeal 2021-001730
Application 13/517,513
Technology Center 3600

Before HUBERT C. LORIN, ANTON W. FETTING, and
BRADLEY B. BAYAT, Administrative Patent Judges.

LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s Final decision to reject claims 1–6, 9–13, 21–25, and 28–31.1
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies Micro Focus LLC as the real party in interest.
Appeal Br. 2.
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Application 13/517,513

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CLAIMED SUBJECT MATTER
The claimed subject matter relates “to cryptography and more
particularly, to preserving data formats during encryption and decryption
operations” (Spec. 1:9–11). Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A method for performing encryption at computing
equipment, the method comprising:
obtaining, by an encryption engine on the computing
equipment, an unencrypted string in a string format;
encoding, by the encryption engine, the unencrypted string
using an index mapping, to generate an encoded value;
applying, by the encryption engine, a block cipher to the
encoded value to generate a first block cipher output, wherein the
first block cipher output is a first encrypted version of the
encoded value;
determining, by the encryption engine, whether the first
block cipher output matches the string format of the unencrypted
string obtained by the encryption engine;
in response to a determination that the first block cipher
output does not match the string format of the unencrypted string,
applying, by the encryption engine, the block cipher to the first
block cipher output to generate a second block cypher output,
wherein the second block cipher output is a second encrypted
version of the encoded value.
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Hopkins US 2005/0149739 A1 July 7, 2005
Somers US 2007/0262138 A1 Nov. 15, 2007
Mattsson US 7,418,098 B1 Aug. 26, 2008
Schneider US 2008/0292096 A1 Nov. 27, 2008
REJECTIONS
Claims 1–6, 9–13, 21–25, and 28–31 are rejected under 35 U.S.C.
§ 101 as being directed to judicially-excepted subject matter.
Claims 1–6, 9–13, 21–25, and 28–31 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Somers, Mattsson, Schneider, and
Hopkins.
OPINION
The rejection of claims 1–6, 9–13, 21–25 and 28–31 under 35 U.S.C. § 101
as being directed to judicially-excepted subject matter.
35 U.S.C. § 101 provides that “[w]hoever 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.”
In that regard, claim 1 covers a “process” and is thus statutory subject
matter for which a patent may be obtained.2 This is not in dispute.

2 This corresponds to Step 1 of the 2019 Revised Patent Subject Matter
Eligibility Guidance, which requires determining whether “the claim is to a
statutory category.” 84 Fed. Reg. 50, 53 (Jan. 7, 2019). See also id. at 53–54
(“consider[] whether the claimed subject matter falls within the four
statutory categories of patentable subject matter identified by 35 U.S.C.
101”).
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However, the 35 U.S.C. § 101 provision “contains an important
implicit exception: Laws of nature, natural phenomena, and abstract ideas
are not patentable.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014)
(quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013)).
In that regard, notwithstanding claim 1 covers statutory subject
matter, the Examiner has raised a question of patent eligibility on the ground
that claim 1 is directed to an abstract idea.
Alice identifies a two-step framework for determining whether
claimed subject matter is directed to an abstract idea. Alice, 573 U.S. at 217.
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept.” Alice, 573 U.S.
at 218 (emphasis added).
The Examiner determined that claim 1 is directed to “encrypting
transaction data while preserving a data format.” Final Act. 5. Specifically,
The limitation of applying a block cipher, determining if the
encoded data is in a specific format, and producing an encrypted
version of the unencrypted string, as drafted, is a process that,
under its broadest reasonable interpretation, covers performance
of the limitation in the mind but for the recitation of generic
computer components. That is, other than reciting “at computing
equipment” nothing in the claim element precludes the step from
practically being performed in the mind. If a claim limitation,
under its broadest reasonable interpretation, covers performance
of the limitation in the mind but for the recitation of generic
computer components, then it falls within the “Mental
Processes” grouping of abstract ideas. Accordingly, the claim
recites an abstract idea.
Id.
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Appellant argues, inter alia, that “[i]n the present case, the claims are
directed to improving a particular computer-related technology, namely
legacy computer databases and applications that need to store encrypted
data.” Appeal Br. 13 (emphasis omitted).
We have reviewed the record and find that it weighs in favor of
Appellant’s position. The Examiner’s position is well-taken but in our view
the record supports the view that the claimed subject matter yields an
improvement in computer technology.
TecSec, Inc. v. Adobe Inc., 978 F.3d 1278 (Fed. Cir. 2020), is
instructive. TecSec, which also involved an encryption method, states:
The Step 1 “directed to” analysis called for by our cases depends
on an accurate characterization of what the claims require and of
what the patent asserts to be the claimed advance. The accuracy
of those characterizations is crucial to the sound conduct of the
inquiries into the problem being addressed and whether the line
of specificity of solution has been crossed.
TecSec, 978 F.2d at 1294.
In that regard, we find that there is more going on here than
“encrypting transaction data [to] preserv[e] a data format” (Final Act. 5).
According to the claimed method, an encryption engine generates a second
block cypher output if it is determined that a first block cipher output (also
generated by an encryption engine) does not match the string format of an
unencrypted string, the block cipher outputs being encrypted versions of an
encoded value of the unencrypted string. While this facilitates preserving the
format of the string, the invention is not format-preservation per se but the
technique itself for achieving it; that technique being generating a second
block cypher output once it is determined that a first block cipher output
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does not match the string format of the unencrypted string. “To disregard
those express claim elements is to proceed at ‘a high level of abstraction’
that is ‘untethered from the claim language’ and that ‘overgeneraliz[es] the
claim.’ Enfish, [LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir.
2016)]; see id. at 1338.” TecSec, 978 F.2d at 1295.
Turning to the Specification, we find ample evidence that said
technique yields a technological improvement. The Background of the
invention explains the difficulties that can arise when encryption changes the
format of a string. See, e.g., Spec. 3:5–20:
Conventional encryption techniques can, however,
significantly alter the format of a data item. For example,
encryption of a numeric string such as a credit card number may
produce a string that contains non-numeric characters or a string
with a different number of characters. Because the format of the
string is altered by the encryption process, it may not be possible
to store the encrypted string in the same type of database table
that is used to store unencrypted versions of the string. The
altered format of the encrypted string may therefore disrupt
software applications that need to access the string from a
database. The altered format may also create problems when
passing the encrypted string between applications. Because of
these compatibility problems, organizations may be unable to
incorporate cryptographic capabilities into legacy data
processing systems.
The claimed technique overcomes that problem. See, for example, Spec.
27:7–9, where after discussing the claimed technique, it states that “[l]egacy
applications and databases that require a specific string format may be able
to accept the encrypted string” via said technique. In this way, the
Specification shows that the claims at issue are directed at solving a problem
specific to legacy computer systems.
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Based on the claim language which provides a specific technique and
in light of the discussion in the Specification about solving a problem with
legacy computer systems via said specific technique, we find the claimed
subject matter is directed to an improvement in compute technology rather
than an abstract idea. See Ancora Techs., Inc. v. HTC Am., Inc., 908 F.3d
1343, 1347 (Fed. Cir. 2018) (“We have several times held claims to pass
muster under Alice step one when sufficiently focused on such
improvements.”). Accordingly, the record supports a determination under
step one of the Alice framework that the claimed subject matter is not
directed to an abstract idea.
We do not reach step two of the Alice framework.
The rejection is not sustained.

The rejection of claims 1–6, 9–13, 21–25 and 28–31 under 35 U.S.C.
§ 103(a) as being unpatentable over Somers, Mattsson, Schneider, and
Hopkins.
The issue is whether the claim limitation
in response to a determination that the first block cipher output
does not match the string format of the unencrypted string,
applying, by the encryption engine, the block cipher to the first
block cipher output to generate a second block cypher output,
wherein the second block cipher output is a second encrypted
version of the encoded value
(claim 1; similar limitations are present in the other independent claims 9
and 28) is disclosed in the cited prior art.
In the Final Rejection, the Examiner’s position was that Somers does
“not specifically disclose” said limitation. Final Act. 8. Instead, the
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Examiner relied on the Abstract, Figure 4, paragraphs 8, 18, 33, 47, and
claim 2 of Hopkins.
We have reviewed the cited Hopkins disclosures but we have been
unable to find said limitation disclosed there. We agree with Appellant that
“Hopkins includes that a second encryption block is always performed after
a first encryption block, and therefore clearly fails to teach that the second
encryption block is conditionally performed in response to any
determination.” Appeal Br. 9 (emphasis added). This is reflected in Figure 2
of Hopkins where no determination of a match (or not) of a block cipher
output and the string format of an unencrypted string is depicted. See also
Hopkins para. 33 (“In a Cipher Block Chain (CBC), results from an
encryption block are fed back to the input block of the next encryption
block.”).
In the Answer, the Examiner points to Somers as suggesting making
said claimed determination. Paragraph 40 of Somers is relied upon:
Next at step 122, the personally identifying information in the
PAN (e.g. the cardholder account number) is encrypted, using for
example, encryption process 310. An encryption key (not shown)
assigned by issuer 106 to card 100 is used for encryption. Certain
non-sensitive portions of the PAN (e.g., BIN) are not encrypted
and left untouched. However, the Luhn check digit may be
recomputed. At step 124, a magstripe compatible data structure
is populated with the encrypted PAN.
Answer 3. However, we do not see there a suggestion to determine that a
block cipher output and the string format of an unencrypted string do not
match. The Examiner “submits that the re-computation of a Luhn check digit
occurs when it is determined that the encrypted data does not match the
format of the unencrypted data.” Answer 3–4. But the passage does not
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provide any insight into why one of ordinary skill would want to recompute
the Luhn check digit. Doing so because it has been determined that
encrypted data does not match the format of an unencrypted data would not
be apparent to a person of ordinary skill in the art given no more than the
fact that “Luhn check digit may be recomputed” (Somers, para. 40).
Accordingly, we are unpersuaded that one of ordinary skill in the art
would be led to the claimed subject matter given the combined disclosures
of the cited prior art.
The rejection is not sustained.
CONCLUSION
The decision of the Examiner to reject claims 1–6, 9–13, 21–25, and
28–31 is reversed.
More specifically:
The rejection of claims 1–6, 9–13, 21–25, and 28–31 under 35 U.S.C.
§ 101 as being directed to judicially-excepted subject matter is reversed.
The rejection of claims 1–6, 9–13, 21–25, and 28–31 under 35 U.S.C.
§ 103(a) as being unpatentable over Somers, Mattsson, Schneider, and
Hopkins is reversed.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–6, 9–13,
21–25, 28–
31
101 Eligibility 1–6, 9–13,
21–25, 28–
31
1–6, 9–13,
21–25, 28–
31
103 Somers, Mattsson,
Schneider,
Hopkins
1–6, 9–13,
21–25, 28–
31
Overall
Outcome
1–6, 9–13,
21–25, 28–
31

REVERSED