Infineon Technologies AG

Patent Trials and Appeals BoardOct 2, 2020

14623529 - (D) (P.T.A.B. Oct. 2, 2020)

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. 14/623,529 02/17/2015 Wieland Fischer P59438US 7507 81722 7590 10/02/2020 Viering, Jentschura & Partner mbB - Inf c/o 444 Brickell Avenue Suite 700 Miami, FL 33131 EXAMINER HAILU, TESHOME ART UNIT PAPER NUMBER 2434 NOTIFICATION DATE DELIVERY MODE 10/02/2020 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): patint@vjp.de vjp-us@vjp.de PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WIELAND FISCHER and BERND MEYER Appeal 2019-004345 Application 14/623,529 Technology Center 2400 Before MAHSHID D. SAADAT, JAMES R. HUGHES, and STEPHEN E. BELISLE, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Claims 1–17 are pending, stand rejected, are appealed by Appellant, and are the subject of our decision under 35 U.S.C. § 134(a).1 See Final Act. 1–2; Appeal Br. 4.2 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 the real party in interest as Infineon Technologies AG. See Appeal Br. 2. 2 We refer to Appellant’s Specification (“Spec.”), filed Feb. 17, 2015 (claiming benefit of DE 102014101936.9, filed Feb. 17, 2014); and Appeal Brief (“Appeal Br.”), filed Aug. 14, 2018. We also refer to the Examiner’s Final Office Action (“Final Act.”), mailed Feb. 22, 2018; and Answer (“Ans.”) mailed Nov. 16, 2018. Appeal 2019-004345 Application 14/623,529 2 CLAIMED SUBJECT MATTER The claimed subject matter, according to Appellant, “relate[s] generally to methods for permuting data elements and to permuting apparatuses.” Spec. ¶ 2. More specifically, Appellant’s claimed subject matter relates to permuting apparatuses and methods for permuting data elements within a chip card module by receiving a sequence of data elements at an input of a permuting apparatus and performing interchange operations within the sequence using a processing device that is part of the permuting apparatus. Each of the interchange operations involves determining a predefined position of a first data element within the received sequence, randomly determining a second position of a second data element within the received sequence, and interchanging the first data element with the second data element. See Spec. ¶¶ 4, 92, 93; Abstract. Claims 1 (directed to a method) and 15 (directed to a permuting apparatus) are independent. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for permuting data elements within a chip card module, the method comprising: receiving a sequence of data elements at an input of a permuting apparatus; and carrying out a plurality of interchange operations within the sequence with a processing device within the permuting apparatus, wherein each interchange operation comprises: determining a predefined position of a first data element within the sequence received within the permuting apparatus of the chip card module; randomly determining a second position of a second data element within the sequence; Appeal 2019-004345 Application 14/623,529 3 interchanging the first data element with the second data element; and applying a predefined permutation to the determined predefined position or to the sequence of data elements. Appeal Br. 19 (Claims App.) (emphasis added). REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Elbwart et al. (“Elbwart”) US 2003/0120990 A1 June 26, 2003 Barry et al. (“Barry”) US 2004/0162863 A1 Aug. 19, 2004 Geist et al. (“Geist”) US 2005/0021474 A1 Jan. 27, 2005 Girault et al. (“Girault”) US 2005/0213769 A1 Sept. 29, 2005 Rawson, Sr. (“Rawson”) US 2010/0054471 A1 Mar. 4, 2010 Roskind et al. (“Roskind”) US 2010/0142005 A1 June 10, 2010 Olson et al. (“Olson”) US 2010/0246814 A1 Sept. 30, 2010 Sinha et al. (“Sinha”) US 2013/0061057 A1 Mar. 7, 2013 REJECTIONS3 1. The Examiner rejects claims 1, 4, 5, 7, 10, 15, and 174 under 35 U.S.C. § 103 as being unpatentable over Sinha, Rawson, and Elbwart. See Final Act. 3–6. 3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125 Stat. 284 (2011), amended 35 U.S.C. § 103. Because the present application has an effective filing date (Feb. 17, 2014) after the AIA’s effective (March 16, 2013), this decision refers to 35 U.S.C. § 103. 4 The Examiner omits claim 17 from the statement of the rejection, but discusses claim 17 in the substantive rejection. See Final Act. 8. We find this typographical error harmless and include claim 17 in the statement of rejection for clarity. Appeal 2019-004345 Application 14/623,529 4 2. The Examiner rejects claims 2, 3, and 11 under 35 U.S.C. § 103 as being unpatentable over Sinha, Rawson, Elbwart, and Olson. See Final Act. 6–8. 3. The Examiner rejects claims 8 and 9 under 35 U.S.C. § 103 as being unpatentable over Sinha, Rawson, Elbwart, and Barry. See Final Act. 8–10. 4. The Examiner rejects claim 6 under 35 U.S.C. § 103 as being unpatentable over Sinha, Rawson, Elbwart, and Roskind. See Final Act. 10. 5. The Examiner rejects claims 12–14 under 35 U.S.C. § 103 as being unpatentable over Sinha, Rawson, Elbwart, and Girault. See Final Act. 11–12. 6. The Examiner rejects claim 16 under 35 U.S.C. § 103 as being unpatentable over Sinha, Rawson, Elbwart, and Geist. See Final Act. 12–13. ANALYSIS Obviousness Rejection of Claims 1, 4, 5, 7, 10, 15, and 17 The Examiner rejects independent claim 1 (as well as independent claim 15, and dependent claims 4, 5, 7, 10, and 17) as obvious over Sinha, Rawson, and Elbwart. See Final Act. 3–6; Ans. 13–17. Appellant contends that Sinha, Rawson, and Elbwart do not teach the disputed limitations of claim 1. See Appeal Br. 10–15. Specifically, Appellant contends, inter alia, that “there is no teaching, suggestion, or motivation to include a permutator circuit as disclosed by Rawson, or an interleaver as disclosed by Elbwart, into the disclosure of Sinha, as suggested by the Examiner” because the combination would be technically incompatible with the Sinha’s Appeal 2019-004345 Application 14/623,529 5 authentication process and would destroy the ability of Sinha to be used for its intended purpose. Appeal Br. 14. Appellant asserts that the Examiner-cited portions of Sinha (see Sinha ¶¶ 12, 27, 30) require substitutions of numbers from two different or distinct sequences (sets of numbers). See Appeal Br. 10–15. Although the Examiner points to Sinha’s Paragraph 27 as an example of interchanging data elements (see Final Act. 3–4), the Examiner is only using the session key of Sinha to meet the “sequence of data elements” recitation of claim 1. Appellant misconstrues the Examiner’s rejection with respect to the teachings of Sinha. Even so, we agree with Appellant that the Examiner has not provided a sufficient, reasonable rationale for combining the disparate Sinha, Rawson, and Elbwart references. See Appeal Br. 12–15. It is true that each reference describes cryptographic functionality and permutations, but Sinha describes device authentication by substituting numbers in a personal identification number (PIN) with numbers from a cryptographic key (Sinha, Abstract), Rawson describes hardware encryption using a permutator circuit (performing permutations) (Rawson, Abstract; ¶ 14), and Elbwart describes using an interleaver to perform permutations in a telecommunications signal. The Examiner provides only a perfunctory rationale for combining the references (see Final Act. 4, 5) and picks only select teachings from the references to piece together Appellant’s claim limitations. Here, the Examiner benefitted from impermissible hindsight in rejecting as obvious claims 1 and 15. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on section 103 clearly must rest on a factual basis, and these facts must be interpreted without hindsight Appeal 2019-004345 Application 14/623,529 6 reconstruction of the invention from the prior art.”). To protect against the improper use of hindsight, the Examiner is required to explain why a person having ordinary skill in the art at the time of the invention would have had reason to combine the prior art’s teachings in the manner proposed by the Examiner. In re Rouffet, 149 F.3d 1350, 1358 (Fed. Cir. 1998) (inferring “hindsight” when the specific understanding or principal leading to modification of prior art has not been explained). Indeed, even if one of ordinary skill in the art may have understood that a reference could be modified as reasoned by the Examiner, this does not imply a motivation to modify the reference. See Belden Inc. v. Berk–Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”) Motivation to combine is a factual inquiry, and “[t]he factual inquiry whether to combine references must be thorough and searching and the need for specificity pervades our authority on the findings on motivation to combine.” In re Nuvasive, 842 F.3d 1376, 1381–82 (Fed. Cir. 2016) (internal quotation marks and citation omitted). The Examiner “must examine the relevant data and articulate a satisfactory explanation for [the combination] including a rational connection between the facts found and the choice made.” Nuvasive, 842 F.3d at 1382. The Examiner did not provide a sufficient, reasonable rationale for combining Sinha, Rawson, and Elbwart. Consequently, we are constrained by the record before us to find that the Examiner erred in finding that the combination of Sinha, Rawson, and Appeal 2019-004345 Application 14/623,529 7 Elbwart renders obvious Appellant’s claim 1. Independent claim 15 includes limitations of commensurate scope. Claims 4, 5, 7, 10, and 17 depend from and stand with claim 1. Obviousness Rejection of Claims 2, 3, 6, 8, 9, 11–14, and 16 The Examiner rejects dependent claims 2, 3, and 11 as obvious over Sinha, Rawson, Elbwart, and Olson. See Final Act. 6–8. The Examiner also rejects claims 8 and 9 as obvious over Sinha, Rawson, Elbwart, and Barry. See Final Act. 8–10. The Examiner further rejects claim 6 as obvious over Sinha, Rawson, Elbwart, and Roskind. See Final Act. 10. The Examiner additionally rejects claims 12–14 as obvious over Sinha, Rawson, Elbwart, and Girault. See Final Act. 11–12. Finally, the Examiner rejects claim 16 as obvious over Sinha, Rawson, Elbwart, and Geist. See Final Act. 12–13. The Examiner does not suggest, and we do not find, that the additional cited references (Olson, Barry, Roskind, Girault, and/or Geist) cure the deficiencies of the Sinha-Rawson-Elbwart combination (supra). Therefore, we reverse the Examiner’s obviousness rejections of dependent claims 2, 3, 6, 8, 9, 11–14, and 16 for the same reasons set forth for claim 1 (supra). CONCLUSION Appellant has shown that the Examiner erred in rejecting claims 1–17 under 35 U.S.C. § 103. We, therefore, do not sustain the Examiner’s rejection of claims 1–17. Appeal 2019-004345 Application 14/623,529 8 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 4, 5, 7, 10, 15, 17 103 Sinha, Rawson, Elbwart 1, 4, 5, 7, 10, 15, 17 2, 3, 11 103 Sinha, Rawson, Elbwart, Olson 2, 3, 11 8, 9 103 Sinha, Rawson, Elbwart, Barry 8, 9 6 Sinha, Rawson, Elbwart, Roskind 6 12–14 Sinha, Rawson, Elbwart, Girault 12–14 16 103 Sinha, Rawson, Elbwart, Geist 16 Overall Outcome 1–17 REVERSED