ARM LIMITED

Patent Trials and Appeals Board

Dec 24, 2021

2020004296 (P.T.A.B. Dec. 24, 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.
15/073,807 03/18/2016 Michele RIGA JRL-550-1967 4693
73459 7590 12/24/2021
NIXON & VANDERHYE, P.C.
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
GANDHI, DIPAKKUMAR B
ART UNIT PAPER NUMBER
2111
NOTIFICATION DATE DELIVERY MODE
12/24/2021 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):
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 MICHELE RIGA and KAUSER YAKUB JOHAR
____________________

Appeal 2020-004296
Application 15/073,807
Technology Center 2100
____________________

Before MAHSHID D. SAADAT, MARC S. HOFF, and ERIC S. FRAHM,
Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the
Examiner’s final rejection of claims 1 and 5–20. Claims 2–4 have
been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm in part.
DISCLOSED AND CLAIMED INVENTION
Appellant’s disclosed invention, entitled “Error Protection Key
Generation Method and System” (see Title), “relates to a method and system
for generating a key for user in computing an error protection code for an

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. “The word ‘applicant’ when used in this title refers to the
inventor or all of the joint inventors, or to the person applying for a patent as
provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a) (2017). According
to Appellant, ARM Limited is the real party in interest (Appeal Br. 3).
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input data value, and to a data processing system incorporating error
protection circuits for performing computations using the key” (Spec. 1:2–
5). Appellant recognizes that “[f]or any particular error protection scheme,
the size of the key (also referred to herein as a mask) is typically dependent
on the size of the data value to be protected” (Spec. 1:29–30). Appellant’s
disclosed invention reduces design and verification costs in generating error
protection circuits (see Spec. 2:3–10) by iteratively generating sub-keys (see
Spec. 2:12–3:11; claims 1, 11, 19), and “where each sub-key is associated
with one of the input data value sizes and conforms to a key requirement for
the chosen error protection scheme” (Spec. 4:24–26), and “each of the sub-
keys contains a matrix of values arranged in rows and columns” (Spec.
6:14–15).
Independent claim 1 is illustrative of the invention and is reproduced
below with bracketed lettering added in correspondence with Appellant’s
arguments (see Appeal Br. 11–16) disputing limitations a through f:
1. A computer-implemented method performed in a data
processing system, comprising:
[a] inputting a plurality of data value sizes;
[b] generating a key for computing an error protection
code for a maximum data value size amongst said plurality of
data value sizes, wherein the key comprises a plurality of sub-
keys, each sub-key being associated with one of the input data
value sizes and conforming to a key requirement for an error
protection scheme,
[c] wherein generating the key comprises performing a
plurality of iterations of a sub-key generation process in order to
generate a sequence of sub-keys providing a sub-key for each of
the plurality of data value sizes, the sub-key generation process
comprising:
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[d] during a first iteration of the plurality of iterations,
generating a first sub-key forming the key to be used in
computing the error protection code for a minimum data value
size amongst the plurality of data value sizes, and
[f] during the remaining plurality of iterations, processing
the plurality of data value sizes in increasing size order in order
to generate corresponding sub-keys, with the sub-key generated
in a final iteration of the plurality of iterations forming the key to
be used in computing the error protection code for the maximum
data value size,
[e] wherein for each sub-key in the sequence other than the
first sub-key, the sub-key generation process includes computing
that sub-key by incorporating therein the immediately preceding
sub-key in the sequence, determining the remaining portion of
the sub-key having regard to the associated data value size, and
computing values for the remaining portion of the sub-key such
that the key requirement is conformed to; and
wherein the plurality of sub-keys enable a data value
having any of said plurality of data value sizes to be protected
against errors when transmitted within a data processing system
by employing the sub-key generated for the data value size of
that data value.
Appeal Br. 18, Claims Appendix (emphasis added).

EXAMINER’S REJECTIONS
(1) The Examiner rejected claims 1, 5, and 7–10 under 35 U.S.C.
§ 102(a)(2) as being anticipated by Lee et al. (US 2011/0043391 A1;
published Feb. 24, 2011) (hereinafter, “Lee”). Final Act. 6–9. In the
rejection of claims 1, 9, and 17, the Examiner cites Figure 9, Table 25
(matrix G), and paragraphs 168, 170–172, 178, 179, and of Lee (see Final
Act. 3–4; Suppl. Ans. 3–4; see also Advisory Act. 2).
(2) The Examiner rejected claim 6 under 35 U.S.C. § 103 as being
unpatentable over Lee and Watson (US 2005/0180459 A1; published Aug.
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18, 2005). Final Act. 10.
(3) The Examiner rejected claims 11–17 under 35 U.S.C. § 103 as
being unpatentable over Lee and Ozaki et al. (US 5,642,242; issued June 24,
1997) (hereinafter, “Ozaki”). Final Act. 11–15.
(4) The Examiner rejected claim 18 under 35 U.S.C. § 103 as being
unpatentable over Lee, Ozaki, and Imai et al. (US 2013/0061115 A1;
published Mar. 7, 2013) (hereinafter, “Imai”). Final Act. 15–16.
(5) The Examiner rejected claim 19 under 35 U.S.C. § 103 as being
unpatentable over Lee and Ozaki. Final Act. 16–18.
(6) The Examiner rejected claim 20 under 35 U.S.C. § 103 as being
unpatentable over Lee and Ozaki. Final Act. 18–20.

ISSUES
With regard to Rejection 1, Appellant argues only claim 1, and
specifically, that limitations a through f of claim 1 have not been shown by
the Examiner as disclosed, or anticipated, by Lee (see Appeal Br. 8–16;
Reply Br. 2–4). Rejection 2 will stand or fall with the outcome of claims 1
and 5, as claim 6 depends from claim 1 which depends from claim 1. See
37 C.F.R. § 41.37(c)(1)(iv).
With regard to Rejections 3 through 6, Appellant does not separately
argue with particularity the limitations of claims 11–20 (rejected for
obviousness over base the combination of Lee and Ozaki) apart from merely
asserting that claims 11 and 19 are patentable for the same reasons as argued
for claim 1 relating to limitations b through f (see Appeal Br. 16). However,
we note that claims 11 and 19 differ in scope from claim 1, in that claims 11
and 19 (i) do not recite limitations a through f as set forth in claim 1; and (ii)
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additionally recite first and second error protection circuits/means and
computation circuitry/means. Additionally, Appellant argues “[t]he
anticipation rejection of companion independent claims 11 and 19” (Appeal
Br. 16), when claims 11 and 19 are rejected for obviousness over the
combination of Lee and Ozaki, and not as being anticipated by Lee (as claim
1 was rejected).
Therefore, Appellant has addressed neither (i) the correct statutory
basis; nor (ii) the findings and reasoning based on the combination of Lee
and Ozaki of the Examiner, as to claims 11 and 19. And, no arguments are
presented as to claims 12–18 and 20. Such conclusory assertions without
supporting explanation or analysis particularly pointing out errors in the
Examiner’s reasoning fall well short of persuasively rebutting the
Examiner’s prima facie case of obviousness. See In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). We therefore sustain the Examiner’s rejections
of claims 11 and 19 over the base combination of Lee and Ozaki.
Based on Appellant’s arguments in the Appeal Brief (Appeal Br. 8–
16) and the Reply Brief (Reply Br. 2–4), the following principal issue is
presented on appeal:
Did the Examiner err in rejecting (i) claims 1, 5, and 7–10 under
35 U.S.C. § 102(a)(2) as being anticipated by Lee; and (ii) claim 6 as being
unpatentable over the combination of Lee and Watson, because Lee fails to
disclose generating sub-keys as defined in limitations b through f, as recited
in claim 1?

ANALYSIS
We have reviewed Appellant’s arguments in the Appeal Brief (Appeal
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Br. 8–16) and the Reply Brief (Reply Br. 2–4), the Examiner’s rejections
(Final Act. 6–20), and the Examiner’s response to Appellant’s arguments
(Ans. 3–6). With regard to claim 1, Appellant’s arguments have persuaded
us of error in the Examiner’s rejection of claim 1 under 35 U.S.C.
§ 102(a)(2) based on Lee’s failure to disclose iteratively generating a key
having sub-keys as recited in claim 1 (see Appeal Br. 8–11; Reply Br. 2–4),
and the Examiner’s failure to address or map the features of limitations d
through f as recited in claim 1 (see Final Act. 7; Ans. 4–5).
The USPTO “must examine the relevant data and articulate a
satisfactory explanation for its action including a ‘rational connection
between the facts found and the choice made.”’ Motor Vehicle Mfrs. Ass’n
v. State Farm Mut. Auto. Ins. Co., 463 U.S. 29, 43 (1983) (internal
quotation marks and citation omitted); see Synopsys, Inc. v. Mentor
Graphics Corp., 814 F.3d 1309, 1322 (Fed. Cir. 2016) (stating that, as an
administrative agency, the PTAB “must articulate logical and rational
reasons for [its] decisions” (internal quotation marks and citation omitted)).
This is done by presenting, for anticipation, a prima facie case.
The Examiner has the initial burden to set forth the basis for any
rejection so as to put the patent applicant on notice of the reasons why the
applicant is not entitled to a patent on the claim scope that he seeks — the
so-called “prima facie case.” In re Oetiker, 977 F.2d 1443, 1445 (Fed.
Cir. 1992); In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (the initial
“burden of proof [is] on the [USPTO] to produce the factual basis for its
rejection of an application under sections 102 and 103”) (quoting In re
Warner, 379 F.2d 1011, 1016 (CCPA 1967)); see also Ex Parte Frye, 94
USPQ2d 1072 (BPAI 2010) (precedential) (Examiner has initial burden to
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set forth basis for any rejection so as to put Appellant on notice of reasons
why Appellant is not entitled to patent on claim scope sought, i.e., a prima
facie case).
In anticipation, “the Board must compare the construed claim to a
prior art reference and make factual findings that ‘each and every limitation
is found either expressly or inherently in [that] single prior art reference.’”
In re Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004) (citation omitted). In case
of doubt as to whether claims of an application are anticipated, the scales
should be inclined toward the applicant. See In re Coley, 40 F.2d 982, 986
(CCPA 1930) (“Where there is such doubt, the scales should be inclined
toward the applicant.”).
In the instant case, the Examiner’s notification to Appellant of the
determination of the anticipation of independent claim 1 is found at page 7
of the Final Action, pages 4 through 5 of the Examiner’s Answer. With
regard to claim 1, and specifically limitations d through f therein, the
Examiner relies on paragraphs 168 and 170–172 as anticipating the claimed
subject matter set forth in those limitations (see Final Act. 7; Ans. 4–5)
without adequately mapping the limitations to the reference.2 Appellant is
correct that the Examiner’s Answer fails to address Appellant’s arguments
that Lee’s generator matrices A–E do not disclose the claimed sub-keys (see
Appeal Br. 11; Reply Br. 3).

2 See 37 C.F.R. § 1.104(c)(2) (“When a reference is complex or shows or
describes inventions other than that claimed by the applicant, the particular
part relied on must be designated as nearly as practicable. The pertinence
of each reference, if not apparent, must be clearly explained and each
rejected claim specified.” (emphasis added)).

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The Examiner’s findings that Lee discloses the disputed limitations
are in error because they are not supported by a preponderance of the
evidence. See In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985)
(Examiner’s burden of proving non-patentability is by a preponderance of
the evidence); see also In re Warner, 379 F.2d 1011, 1017 (CCPA 1967)
(“The Patent Office has the initial duty of supplying the factual basis for its
rejection. It may not, because it may doubt that the invention is patentable,
resort to speculation, unfounded assumptions or hindsight reconstruction to
supply deficiencies in its factual basis.”).
For example, limitations d and f require iteratively generating sub-
keys for each of a plurality of data value sizes, while Lee is silent as to using
any iterative process. Lee simply generates a matrix G composed of
matrices A and B (see Fig. 9, matrix A510 and matrix B520; see also ¶¶
171–173). The Examiner has not properly articulated a key is generated by
iteratively generated a plurality of sub-keys as set forth in limitations b
through f of claim 1, and leaves us to speculate as to how Lee discloses all
the claimed features, in the order presented and as arranged in the claim.
In finding a claim anticipated under 35 U.S.C. § 102, the Board
cannot “fill in missing limitations” simply because a skilled artisan would
immediately envision them from the prior art. Nidec Motor Corp. v.
Zhongshan Broad Ocean Motor Co., 851 F.3d 1270, 1274 (Fed. Cir. 2017)
(citing Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376,
1381 (Fed. Cir. 2015)); see Microsoft Corp. v. Biscotti, Inc., 878 F.3d 1052,
1069 (Fed. Cir. 2017) (citation omitted) (holding “anticipation is not proven
by ‘multiple, distinct teachings that the artisan might somehow combine to
achieve the claimed invention”’). We will not resort to speculation or
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assumptions to cure the deficiencies in the Examiner’s fact finding. See In
re Warner, 379 F.2d 1011, 1017 (CCPA 1967); see also In re Coley, 40 F.2d
at 986.
In this light, there are several differences between what is recited in
claim 1 and what is disclosed by Lee, such that Lee cannot anticipate claims
1 and 6–10. In view of the foregoing, Appellant’s arguments (Appeal Br. 8–
11; Reply Br. 2–4) that Lee fails to anticipate claims 1, 5, and 7–10 are
persuasive, and Appellant has shown the Examiner’s anticipation rejection
of claims 1, 5, and 7–10 to be in error. Based on Lee’s disclosure discussed
above, we find the Examiner improperly relies upon Lee to disclose and
anticipate the disputed claim limitations (see In re Warner, 379 F.2d at
1017), and thus failed to present a prima facie case of anticipation. As a
result, and for similar reasons, we also find the Examiner has therefore failed
to present a prima facie case of obviousness for claim 6.
As to Appellant’s arguments as to claims 11 and 19 rejected under
35 U.S.C. §103 and not 35 U.S.C. § 102, and relying on the arguments
presented as to claim 1, merely restating with respect to a second claim an
argument, previously presented with respect to a first claim, is not an
argument for separate patentability of the two claims.

CONCLUSIONS
(1) Appellant has shown the anticipation rejection of claims 1, 5, and
7–10, as well as the obviousness rejection of claim 6 (depending from claims
1 and 5), over the base reference of Lee to be in error. Accordingly, we do
not sustain the Examiner’s obviousness rejections of claims 1 and 5–10.
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(2) Appellant has not shown the obviousness rejections of claims 11–
20 over the base combination of Lee and Ozaki to be in error. Accordingly,
we sustain the Examiner’s obviousness rejections of claims 11–20.
In view of the foregoing, we (i) reverse the Examiner’s (a)
anticipation rejection of claims 1, 5, and 7–10 over Lee, and (b) obviousness
rejection of claim 6 over Lee in view of Watson; and (ii) affirm the
Examiner’s obviousness rejections of claims 11–20 over the base
combination of Lee in view of Ozaki.
In summary:
Claims
Rejected
35 U.S.C.
§ 
Reference(s)/Basis Affirmed Reversed
1–5, 7–10 102 Lee 1, 5, 7–10
6 103 Lee, Watson 6
11–17 103 Lee, Ozaki 11–17
18 103 Lee, Ozaki, Imai 18
19 103 Lee, Ozaki 19
20 103 Lee, Ozaki 20
Overall
Outcome
11–20 1, 5–10

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