Ex Parte Barcarolo et al

Patent Trial and Appeal BoardApr 26, 2016

12808008 (P.T.A.B. Apr. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/808,008 06/14/2010 65913 7590 04/28/2016 Intellectual Property and Licensing NXPB.V. 411 East Plumeria Drive, MS41 SAN JOSE, CA 95134 FIRST NAMED INVENTOR Michele Barcarolo 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 81057350 US05 1021 EXAMINER REHMAN, MOHAMMED H ART UNIT PAPER NUMBER 2118 NOTIFICATION DATE DELIVERY MODE 04/28/2016 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 MICHELE BARCAROLO and HARALD WITSCHNIG Appeal2014-006548 Application 12/808,008 1 Technology Center 2100 Before ROBERT E. NAPPI, JAMES W. DEJMEK, and JOHN D. HAMANN, Administrative Patent Judges. HAMANN, Administrative Patent Judge. DECISION ON APPEAL Appellants file this appeal under 35 U.S.C. Â§ 134(a) from the Examiner's Non-Final Rejection of claims 1, 2, 4---6, and 9-17. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. THE CLAIMED INVENTION Appellants' claimed invention relates to masking current requirements of an electronic circuit. Field of the Invention. Of the claims on appeal, claims 1 and 12 are illustrative of the subject matter of the appeal and are reproduced below. 1 According to Appellants, the real party in interest is NXP B.V. App. Br. 1. Appeal2014-006548 Application 12/808,008 1. A method of masking a current requirement of an electronic circuit, the method comprising: determining a current level required by the electronic circuit for its correct operation and a corresponding point in time when said current level is required by the electronic circuit; choosing a current level which is equal or higher than the determined current level; switching a current level supplied to/consumed by the electronic circuit to the chosen current level at a time instant deviating from the determined point in time, wherein a random number generator (RNG) chooses the time deviation; and initiating supply of a current sufficient to supply the electronic circuit and activating a smart card prior to activation of the electronic circuit. 12. The method according to claim 1, further comprising: sending superfluous heat to a resistor. REJECTIONS ON APPEAL (1) The Examiner rejected claims 12 and 13 under 35 U.S.C. Â§ 112, first paragraph, for failing to comply with the written description requirement. (2) The Examiner rejected claims 12 and 13 under 35 U.S.C. Â§ 112, second paragraph, for being indefinite. (3) The Examiner rejected claims 1, 2, 4---6, 9, 10, and 14--17 under 35 U.S.C. Â§ 103(a) as being unpatentable over the combination of Noh et al. (US 2006/0117383 Al; June 1, 2006) (hereinafter "Noh"), Carter et al. (US 2010/0071031 Al; Mar. 18, 2010) (hereinafter "Carter"), and Soleimani et al. (US 2007 /0229226; Oct. 4, 2007) (hereinafter "Soleimani"), collectively referred to as the "combination." 2 Appeal2014-006548 Application 12/808,008 (4) The Examiner rejected claim 11under35 U.S.C. Â§ 103(a) as being unpatentable over the combination of Noh, Carter, Soleimani, and Admitted Prior Art. (5) The Examiner rejected claims 12 and 13 under 35 U.S.C. Â§ 103(a) as being unpatentable over the combination of Noh, Carter, Soleimani, and Bridgewater et al. (US 6,124,727; Sept. 26, 2000) (hereinafter "Bridgewater"). ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' contentions that the Examiner erred. In reaching our Decision, we consider all evidence presented and all arguments made by Appellants. We disagree with Appellants' arguments and we incorporate herein and adopt as our own: (1) the findings and reasons set forth by the Examiner in the June 3, 2013 Non-Final Office Action (Final Act. 2-7) and (2) the reasons and rebuttals set forth in the Examiner's Answer (Ans. 2-5). We incorporate such findings, reasons, and rebuttals herein by reference unless otherwise noted. We, however, highlight and address specific findings and arguments below for emphasis. (1) Written description for sending superfluous heat to a resistor Appellants contend the Specification complies with the written description requirement of 35 U.S.C. Â§ 112, first paragraph, with respect to claims 12 and 13.2 See App. Br. 4; Reply Br. 2. Appellants argue "the specification discloses that a resistor can transform superfluous power to 2 Claim 13 recites "sending superfluous heat to a transistor," rather than a resistor. App. Br. 17 (emphasis added). 3 Appeal2014-006548 Application 12/808,008 heat," and "discloses both resistor and transistor embodiments." See App. Br. 4 (citing Spec. 3, 1. 33; 4, 11. 1-3). Appellants further argue the claim language recites "sending superfluous heat" and does not recite how heat is being transferred. Reply Br. 2. The Examiner finds the Specification only recites that "the superfluous current or power, which currently is not being used for a correct operation of the electric circuit, is fed to a resistor, ... which transforms said superfluous power to heat." Ans. 2 (citing Spec. 3, 11. 30- 34). The Examiner concludes the Specification describes feeding "current or power" to a resistor "but does not positively define how 'heat' is being transferred to a [resistor]." Ans. 2. We find Appellants' arguments persuasive. We find that one of ordinary skill in the art would understand an electrical component, such as a resistor, drawing current or power dissipates heat, and one skilled in the art would reasonably conclude that Appellants had possession of this aspect of the claimed invention at the time the Specification was filed. See In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989); Spec. 3, 1. 30 to 4, 11. 1-3. Accordingly, we do not sustain this rejection. (2) Indefiniteness (or sending superfluous heat to a resistor Appellants contend the Examiner erred in rejecting claims 12 and 13 for being indefinite. See App. Br. 5; Reply Br. 3. Appellants argue "the claim language is clear because superfluous power is transformed into heat. See App. Br. 5 (citing Spec. 3, 1. 33). Appellants also argue "either 'superfluous current or power,' ... once transformed into heat, is 'wasted' at a component such as the claimed resistor and transistor." App. Br. 5. 4 Appeal2014-006548 Application 12/808,008 Appellants, thus, contend the claim language is not ambiguous. Id.; see also Reply Br. 3 (arguing "wasted power becomes heat," as one of ordinary skill in the art would readily understand). The Examiner finds the claim language "sending superfluous heat to a resistor" and the cited portion of the Specification do not disclose clearly how "heat" is transferred to a resistor. See Ans. 2-3 (emphasis added). The Examiner also finds it is unclear to one of ordinary skill in the art how "heat" is transferred to a resistor in the context of the claim language. Ans. 3. The test for definiteness under 35 U.S.C. Â§ 112, second paragraph, is whether "those skilled in the art would understand what is claimed when the claim is read in light of the specification." Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted);seealsoExparteMiyazaki, 89USPQ2d 1207, 1210-13 (BPAI 2008) (precedential) (applying the Orthokinetics standard). We agree with the Examiner that one of ordinary skill in the art would not understand the scope of what is being claimed in claims 12 and 13. For example, we agree that it is unclear how "heat" is sent to a resistor or transistor, including whether the claimed sent heat relates to current or power, or some other source. Although we agree electrical components can get hot when drawing current, it remains unclear in the context of the claim language in light of the Specification how the heat is sent. Accordingly, we sustain this rejection. (3) Determining a current level and a corresponding point in time Appellants argue the first combination, and Noh in particular, fails to teach or suggest "determining a current level required by the electronic 5 Appeal2014-006548 Application 12/808,008 circuit for its correct operation and a corresponding point in time when said current level is required by the electronic circuit," as recited in claim 1 and similarly recited in claim 6. App. Br. 7. Appellants argue Noh instead only teaches "peak current consumption," such as when a smart card or CPU is activated, and does not teach "a corresponding point in time when said current level is required by the electronic circuit." See id. (citing Noh i-f 39); Reply Br. 4. Furthermore, according to Appellants, Noh's Figure 4, which is cited by the Examiner, shows that "the period between A and B corresponds to 'peak patterns different from other parts of the waveform, which may otherwise provide some information to an external attacker as to the value of a key."' See Reply Br. 4 (citing Noh i-f 40). Appellants, thus, contend Noh does not disclose that point A in Noh's Figure 4 "corresponds to a particular current level required by an electronic circuit." See Reply Br. 4. The Examiner finds Noh teaches this disputed limitation. See Ans. 3. Specifically, the Examiner finds Noh teaches a "controller 75 increases or decreases the current amount" for smart card 100 operation over time based on a determined required current level. See Ans. 3 (citing Noh i-f 39) (emphasis omitted). The Examiner further finds Noh's Figure 4 also teaches this limitation and illustrates a smart card's current consumption over time, including points A and B which can correspond to certain operations of the smart card. See Ans. 3. (citing Noh i-f 40, Fig. 4). 3 3 The Examiner also notes a similarity between the Specification's Figure 2B and Noh's Figure 4 as illustrating a required current level and corresponding point in time, such as when a smart card or CPU is activated. See Ans. 3 (citing Spec. 7, 11. 3-20, Fig. 2B). 6 Appeal2014-006548 Application 12/808,008 We find Appellants' arguments unpersuasive. We agree with the Examiner Noh teaches or suggests this disputed limitation. See, e.g., Noh i-f 39. Furthermore, Appellants' argument that Noh does not disclose point A corresponds to a particular current level required by an electronic circuit is misplaced, as Figure 4 illustrates the current waveform of the smart card. See Noh i-f 40, Fig. 4 (teaching the current waveform required for smart card operation as a function of time). (4) Time instant deviating from the determined point in time, wherein a random number generator chooses the time deviation Appellants argue the first combination fails to teach or suggest "switching a current level supplied to/consumed by the electronic circuit to the chosen current level at a time instant deviating from the determined point in time, wherein a random number generator (RNG) chooses the time deviation," as recited in claim 1 and similarly recited in claim 6. App. Br. 7. Specifically, Appellants argue although Soleimani teaches a RNG is used to select a time slot, the time slots are fixed and do not deviate relative to the single, determined point in time of the first step of claim 1. See App. Br. 8 (citing Soleimani i-f 106, Fig. 1 O); Reply Br. 5-6. Appellants argue these cited portions of Soleimani teach away from this disputed limitation. See App. Br. 8. Furthermore, Appellants argue Soleimani's time slots are fixed in length rather than having a random time deviation. See id.; see also Reply Br. 6 (arguing although the Examiner finds Noh does not limit its dummy current to a fixed time deviation, Soleimani' s time slots are fixed). The Examiner finds the combination, Noh and Soleimani in particular, teaches this disputed limitation. See Ans. 4--5. The Examiner first finds Noh teaches, in addition to determining a current level required for a 7 Appeal2014-006548 Application 12/808,008 corresponding point in time, generating a dummy current before, during, or after the point in time. See Ans. 4 (citing Noh i-f 13 ("generating the amounts of dummy current before ... [or] after an amount of current consumed by a corresponding ... operation[]"), 41 (teaching dummy current can be generated before, after, or during an operation). As to Soleimani, the Examiner finds it teaches a time deviation (e.g., time slot) can be chosen by a RNG. See Ans. 4 (citing Soleimani i-fi-1103, 106 ("Random number generator 1104 may be used to select a time slot in a random manner."); Figs. 9, 11. Thus, the Examiner concludes the combined teachings of Noh and Soleimani teach the disputed limitation. See Ans. 4. We agree with the Examiner's findings. We find Noh teaches, inter alia, generating a dummy current before, during, or after current consumed by an operation, which can be a determined point in time. See Noh i-fi-113, 41. We also find Soleimani teaches using a RNG to provide for a random period of time before operating. See Soleimani i-f 103 (teaching waiting a random period of time, which for some embodiments can be time slots), 106 (teaching using a RNG to select in a random manner). We also consider Appellants' arguments to incorrectly attack Noh and Soleimani separately rather than addressing fully their combined teachings. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (finding each reference "must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole."). Furthermore, we find the cited portions of Soleimani do not teach away from the disputed limitation - time slots merely relate to an embodiment of generating a random period of time. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (finding a reference does not teach away by merely disclosing an alternative invention without criticizing, 8 Appeal2014-006548 Application 12/808,008 discrediting, or otherwise discouraging investigation into the claimed invention). Accordingly, we agree with the Examiner the first combination teaches this disputed limitation. (5) Randomly choosing the chosen current level Appellants argue the first combination, and Noh in particular, fails to teach or suggest "randomly choosing said chosen current level," as recited in claim 4. Appellants argue Noh instead teaches generating an additional peak pattern and "is silent regarding randomly choosing a chosen current level." See App. Br. 9 (citing Noh i-f 41, Fig. 5A); Reply Br. 6-7. Appellants also argue Noh' s teaching that consumed current can be "varied to mask" the operations of the smart card does not teach that a randomization procedure is involved. See Reply Br. 6-7. The Examiner finds "Noh teaches to hide the pattern of current dissipation of the smart card a dummy current is added and [the] pattern of the current consumed by the smart card [is] 'varied to mask' the operation of the smart card." See Ans. 5 (citing Noh i-f 34). The Examiner also finds Noh's Figure 5A also teaches that the current level has no fixed level (i.e., is a random current level). See Ans. 5 (citing Noh Fig. 5A). We find Appellants' arguments unpersuasive. We agree with the Examiner that Noh does not limit its teachings to a fixed varying of consumed current to mask the operation of the smart card. See Noh i-f 34 ("[T]he patterns of current consumed by the circuits in the smart card may be varied to mask the operations of the smart card and thereby allow improved protection from external attacks."). Rather, Noh teaches varying the consumed current to mask smart card operations for improved protection from external attacks. See id. One of ordinary skill in the art would 9 Appeal2014-006548 Application 12/808,008 understand Noh's teachings include randomly varying the consumed current to mask operations and better protect from attacks - a fixed varying of consumed current could be discernible and weaken the protections sought. One of ordinary skill can use his or her ordinary skill, creativity, and common sense to make the necessary adjustments and further modifications to result in a properly functioning device. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) ("[T]he [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ."). (6) Randomly choosing a current offset Appellants argue the first combination, and Noh in particular, fails to teach or suggest "randomly choosing a current offset," as recited in claim 17. See App. Br. 10. Appellants argue the word random is not present in Noh. See Reply Br. 7. Appellants further argue the Examiner fails to show that Noh necessarily uses a "random choice," and that the Examiner is making an inherency rejection improperly. See Reply Br. 7. The Examiner's findings for this disputed limitation are in accord with the findings above for "randomly choosing said chosen current level." See supra; Ans. 5. As above, the Examiner finds Noh teaches masking operations by increasing the amount of current consumption. See Ans. 5 (citing Noh i-f 41 ). The Examiner also repeats the finding that Noh does not limit its teachings to a fixed varying of consumed current to mask operations. See id. The Examiner concludes Noh's choosing of the current offset is clearly done randomly. See id. 10 Appeal2014-006548 Application 12/808,008 As above, we find Appellants' arguments unpersuasive. We agree with the Examiner's findings based on our reasoning above concerning "randomly choosing said chosen current level" - this reasoning also applies to this disputed limitation. Accordingly, we find that the first combination teaches this disputed limitation. See, e.g., Noh i-fi-134, 41, Fig. 5B. CONCLUSION Based on the above findings and reasoning, we sustain the Examiner's rejection of claims 1 and 6, as well as claims 4 and 17. Appellants did not provide separate arguments for the patentability of the remaining claims on appeal - claims 2, 5, 9, 15, and 16, which depend from claim 1; and claims 10, 11, and 14, which depend from claim 6- except as to claims 12 and 13 for which Appellants only addressed the Â§ 112 rejections and not the Â§ 103 rejection directed to them. According, we sustain the Examiner'sÂ§ 103 rejections of all of the claims on appeal, as well as the Examiner'sÂ§ 112, second paragraph rejection of claims 12 and 13. We do not sustain the Examiner'sÂ§ 112, first paragraph rejection of claims 12 and 13. DECISION We affirm the Examiner's decision rejecting claims 1, 2, 4---6, and 9-17. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 11