Ex Parte Lee

Patent Trial and Appeal Board

Dec 19, 2016

13905165 (P.T.A.B. Dec. 19, 2016)

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.
13/905,165 05/30/2013 Chiou-Haun Lee 1915
78400 7590 12/19/2016
Chiou-Haun Lee
52 dadun 7th street
Taichung, 60864
TAIWAN
EXAMINER
ZHAO, DON GORDON
ART UNIT PAPER NUMBER
2493
MAIL DATE DELIVERY MODE
12/19/2016 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHIOU-HAUN LEE
____________

Appeal 2016-002005
Application 13/905,165
Technology Center 2400
____________

Before ALLEN R. MacDONALD, JOHN P. PINKERTON, and
GARTH D. BAER, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1–10. Claims 11–18 have been objected to as being dependent upon
a rejected base claim but otherwise containing allowable subject matter. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Exemplary Claim
Exemplary claim 1 under appeal reads as follows (emphasis added):
1. A method of third party identification for
cryptographic communications, the method includes at
least one third party (TP), wherein the third party (TP)
run by a computer comprises steps as below:
(a) generate at least one sand-texture base ,
wherein the sand-texture base is performed by
letting , , … , which complied with
, : a unit matrix; in addition, a combination of
the sand-texture base’s positions , , … , may be
backed up in one database, and further, remarked as a
varying label number (#);
(b) generate at least one authorized image (AI),
wherein the authorized image (AI) is obtained from a
sand-texture generator , wherein , ,…
equally, the sand-texture base run for a number
of times;
(c) send every authorized image (AI) in
cryptographic communications for identification.

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Rejections on Appeal1
1. The Examiner rejected claims 1 and 5–8 under 35 U.S.C. § 101 as
failing to recite patent-eligible subject matter.2
2. The Examiner rejected claims 1–6 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Shu (US 2010/0272312 A1; Oct.
28, 2010), Seurin (US 2012/0321074 A1; Dec. 20, 2012), and Lee
(US 2011/0261954 A1; Oct. 27, 2011).3
3. The Examiner rejected claim 7 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Shu, Seurin, Lee, and Lee82
(US 2009/0257582 A1; Oct. 15, 2009).
4. The Examiner rejected claims 9 and 10 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Shu, Seurin, Lee, Lee82, and
Nagel (US 7,869,591 B1; Jan. 11, 2011).

Appellant’s Contentions
1. Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 101 because:
Appellant has [previously issued patents], wherein every
independent claim with mathematical formulas is run by a
computer or by a computing device. The Examiner cannot say
that a cryptographic formula run by a computer is still an
abstract idea by only using Machine or Transformation test.

1 The Examiner also objected to claim 1 because of informalities. See Final
Act. 4. This objection is not before us.
2 The patent-eligibility of claims 5–8 is not separately argued from that of
claim 1. See Appeal Br. 2–3. Except for our ultimate decision, claims 5–8
are not discussed further herein.
3 The patentability of claims 2–7 and 9–10 is not separately argued from that
of claim 1. See Appeal Br. 3. Except for our ultimate decision, claims 2–7
and 9–10 are not discussed further herein.
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Appellant emphasizes that the formula E=MC2 as the Examiner
mentioned is an abstract idea because it calculates the energy but
does not generate the energy, and in contrast, Appellant’s
cryptographic formula is not an abstract idea because it
calculates the data and also does generate the data for
verification and simple encryption/decryption. The algorithm
itself of cryptographic security is a utility not an abstract idea,
it really acts as a substantial practical safeguard in the network.
The Examiner insistently wants to see the real results or
improvements in the claim of Appellant cryptographic invention
which works on data transformation; Appellant respectfully
requests that the Board of Patent Appeals ask to the Examiner
write down a standard version with substantial practical
application in cryptographic security for further processing in the
future smoothly.
Appeal Br. 2–3, Appellant’s citations omitted, panel’s emphasis added.
2. In the Reply Brief, further as to above contention 1, Appellants also
contend that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 101
because:
Appellant also wants to express an example before PTAB
particularly on the application of encryption and decryption. “In
Private PAIR system, USPTO arrange a box with a lock made by
number, and then, USPTO send a paired key made by number to
Appellant, and thus, Appellant may open the box by using the
paired key to store the files.”
According to Subject Matter Eligibility following the decision
in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, The Examiner now
are trying to tell Appellant seriously that math formula is
abstract and the method run by a computer is also abstract.
However, from the point of view of encryption and decryption,
Appellant under Machine Test asserts that the lock and the
paired key are really created and moreover the paired key can
really unlock the lock in the invention. Believe it or not, [t]he
PTAB may go to the login screen of Private PAIR system in
which, under the new Subject Matter Eligibility, there still has
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no new NOTE: THE LOGIN SCREEN provided by USPTO is
an abstract idea.
Reply Br. 1, Appellant’s citations omitted, panel’s emphasis added.
3. Appellants also contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
Only the Examiner submits that Shu invention has some
teaching, suggestion, or motivation but without further
verification to explain “How to teach” or “How to suggest”.
Referring to the box with bold line in EVIDENCE APPENDIX
. . . the Examiner must tell more concretely the explanation to
the Board of Patent Appeals that how the “choosing one from
the number (m) of images” in Shu invention is able to connect
with the “multiplying a matrix for the number (m) of times” in
Appellant invention; why “multiplying” is obvious and why
“multiplying a matrix” is obvious. Furthermore, if Shu
invention cannot teach something fundamentally to Appellant
invention, how Shu invention combining with the third party of
Seurin invention will cause the obviousness to Appellant
invention.
Appeal Br. 3, Appellant’s citations omitted, panel’s emphasis added.
4. In the Reply Brief, further as to above contention 1, Appellants also
contend that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because:
[T]he Claim 1 of the invention has exactly specified and
confined with math formulas: the base in Step (a)
, , … , which complied with , a unit matrix
(I), the base’s positions , , … , , and then, in Step (b)
, ,… which run for m times to obtain the
authorized images. Pay attention to the above underline text and
the corresponding examples at para. 1, page 8, Specification, the
formula has already been with specifies [sic] and thus the
specific function is different from Shu invention and other
prior arts.
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Reply Br. 2, emphasis added.

Issues on Appeal
1. Did the Examiner err in rejecting claim 1 as failing to recite patent-
eligible subject matter?
2. Did the Examiner err in rejecting claim 1 as being obvious?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We disagree with Appellant’s
conclusions. Except as noted herein, we adopt as our own: (1) the findings
and reasons set forth by the Examiner in the action from which the appeal is
taken (Final Act. 2–22); and, (2) the reasons set forth by the Examiner in the
Examiner’s Answer (Ans. 2–11) in response to the Appellant’s Appeal
Brief. We concur with the conclusions reached by the Examiner. We
highlight the following.
As to Appellant’s above contentions 1 and 2, we are not persuaded the
Examiner erred. In Alice Corp. Pty. Ltd. v. CLS Bank Int’l, the Supreme
Court articulated the required analysis for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas (which are not patent
eligible under 35 U.S.C. § 101) from patents that claim patent-eligible
applications of these concepts. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134
S. Ct. 2347, 2355 (2014). The first step in the analysis is to determine
whether the claims at issue are directed to a patent-ineligible concept, such
as an abstract idea. Id. If the claims are directed to a patent-ineligible
concept, then the second step in the analysis is to consider the elements of
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the claims individually and as an ordered combination to determine whether
the additional elements transform the nature of the claim into a patent-
eligible application. Id.
With respect to the first step in the analysis, we agree with the
Examiner that claim 1 is directed to mathematical formulas for generating an
image, and thus, are directed to abstract ideas. See Final Act. 4–5; see also
Ans. 4–7. Although claim 1 recites that the generated image is used for
identification in cryptographic communications, we conclude that this is a
mere field-of-use restriction that does not impart patent-eligibility to the
claim. Further, we also conclude that the mere recitation of a generic
computer in the preamble also does not impart patent-eligibility to the claim.
With respect to the second step in the analysis, we see nothing in the
claim that would transform the patent-ineligible concept of generating an
image using mathematical formulas to a patent-eligible concept. The claim
recites well-understood, routine, and conventional functions that can be
performed by a generic computer, which the Supreme Court previously held
are not sufficient to transform an abstract idea into a patent-eligible
invention. See, e.g., Alice, 134 S. Ct. at 2360. More specifically, claim 1
recites “generate at least one sand-texture base (F1),” “generate at least one
authorized image (AI),” and “send every authorized image (AI) in
cryptographic communications.”4 Such steps are data processing steps that

4 Claim 1 further recites that the sand-texture base’s positions “may be
backed up in one database, and further, remarked as a varying label number
(#).” Notwithstanding that this claim recitation is optional due to the usage
of the phrase “may be,” the claim recitation also recites no more than
conventional functions that can be performed by a generic computer, and is
also not sufficient to impart patent-eligibility.
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are similar to the data processing steps in Alice that the Supreme Court held
were not sufficient to transform an abstract idea into a patent-eligible
invention. Id.
Further, regarding Appellant’s argument that similar claims from
other patents were found patent-eligible at the time, we agree with the
Examiner that those example patents cannot support patent-eligibility of
claim 1 because those patents contain different claim limitations, and are not
comparable to the current claims at issue. See Ans. 6. We have considered
Appellant’s other arguments regarding patent-eligibility of claim 1, and we
do not find them persuasive. Accordingly, we sustain the rejection of claim
1 under 35 U.S.C. § 101.
As to Appellant’s above contentions 3 and 4, we are not persuaded the
Examiner erred. Regarding Appellant’s argument that there is no motivation
to combine Shu with Lee, we agree with the Examiner that the combination
of Shu, Seurin, and Lee teaches or suggests all of the claimed elements of
claim 1. See Ans. 8–9. We further agree with the Examiner that both Shu
and Lee are analogous to the claimed invention as both references are in a
similar field of improving secured communications between a sender and a
receiver. See Ans. 9. Thus, we agree that it would have been obvious to one
of ordinary skill in the art to combine the operations taught by Lee into the
steps of generating a reference image taught by Shu, for the reason that such
a combination is merely a combination of known elements that would yield
no more than predictable results. See Ans. 10; see also KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.”).
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Regarding Appellant’s argument that Shu fails to teach or suggest the
claimed element (b) because Shu fails to teach or suggest running the sand-
texture base (F1) for a number (m) of times, we agree with the Examiner that
claim 1 does not specify a range for m, and thus, under the broadest
reasonable interpretation, claim 1 recites running the sand-texture base (F1)
only one time (i.e., m equals 1). See Ans. 10. Thus, we conclude Appellant
has not persuasively shown that the Examiner erred in finding that the
combination of Shu, Seurin, and Lee teaches or suggests all of the claimed
elements of claim 1.
We have considered Appellant’s other arguments regarding
patentability of claim 1, and we do not find them persuasive. Accordingly,
we sustain the rejection of claim 1 under 35 U.S.C. § 103(a).

CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1 and 5–8 as being
unpatentable under 35 U.S.C. § 101.
(2) The Examiner has not erred in rejecting claims 1–7 and 9–10 as
being unpatentable under 35 U.S.C. § 103(a).
(3) Claims 1–10 are not patentable.

DECISION
We affirm the Examiner’s rejections of claims 1 and 5–8 as failing to
recite patent-eligible subject matter under 35 U.S.C. § 101.
We affirm the Examiner’s rejections of claims 1–7 and 9–10 as being
unpatentable under 35 U.S.C. § 103(a).

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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