IRDETO B.V.

Patent Trials and Appeals Board

May 27, 2021

2020000388 (P.T.A.B. May. 27, 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.
14/388,746 09/26/2014 Harold Johnson 14-30228-US 6636
128144 7590 05/27/2021
Rimon PC
420 West Main Street
Suite 101B
Boise, ID 83702-7358
EXAMINER
TORRES-DIAZ, LIZBETH
ART UNIT PAPER NUMBER
2495
NOTIFICATION DATE DELIVERY MODE
05/27/2021 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):
docketing.rimonlaw@clarivate.com
eofficeaction@appcoll.com
patentdocketing@rimonlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HAROLD JOHNSON, YUAN XIANG GU,
and MICHAEL WIENER
Appeal 2020-000388
Application 14/388,746
Technology Center 2400

Before JUSTIN BUSCH, CARL L. SILVERMAN, and JOYCE CRAIG,
Administrative Patent Judges.

BUSCH, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–14. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Irdeto B.V.
Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The invention generally relates to “to securing software and firmware
on devices and systems which are accessible to attack.” Spec. ¶ 1. The
claimed invention relates to duplicating operations of a computer program
and predetermining, prior to execution, to execute the copy of an operation
instead of executing the original version of the operation. Spec. ¶¶ 48, 164–
177, App. § 5.2.8, Figs. 9–10; see Appeal Br. 2–3 (citing Spec. ¶¶ 42, 44, 48,
53, 123, 159, 162, 164–177, 199–201, 223, 224, 228, App., Figs. 9–10).
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method, implemented by one or more computer processors,
for generating a secured computer program for execution by one
or more additional processors, said generating comprising:
duplicating, in a computer program and prior to execution
of the computer program, a first operation of a plurality of
operations to be executed by a computer system during execution
of the computer program to create a first operation copy, the
plurality of operations comprising a prior operation to be
executed before the first operation and a subsequent operation to
be executed after the first operation; and
modifying the computer program, prior to execution of the
computer program, to execute the first operation copy
subsequent to the prior operation and prior to the subsequent
operation, instead of the first operation;
wherein a result of executing the first operation copy is
equivalent to a result of executing the first operation, without the
modified computer program using a conditional branch which
executes based on an input to execute the first operation copy
instead of the first operation.
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Horning US 2005/0183072 A1 Aug. 18, 2005
Futa US 2009/0228717 A1 Sept. 10, 2009
Eker EP 2 009 572 A1 Dec. 31, 2008

REJECTIONS
Claims 1–14 stand rejected under 35 U.S.C. § 101 as being directed to
a judicial exception without significantly more. Final Act. 5–7.
Claims 1–4, 6–10, and 12–14 stand rejected under 35 U.S.C. § 103(a)
as being obvious over Horning and Eker. Final Act. 7–12.
Claims 5 and 11 stand rejected under 35 U.S.C. § 103(a) as being
obvious over Horning, Eker, and Futa. Final Act. 12–13.

ANALYSIS
REJECTION UNDER 35 U.S.C. § 101
Appellant argues the rejection of all pending claims under 35 U.S.C.
§ 101 as a group. See Appeal Br. 4–18; Reply Br. 1–3. Therefore, we select
independent claim 1 as representative for this ground of rejection.
See 37 C.F.R. § 41.37(c)(1)(iv).
If a claim falls within one of the statutory categories of patent
eligibility, the Supreme Court’s two-step framework guides our analysis of
patent eligibility under 35 U.S.C. § 101—i.e., evaluating whether the claim
is directed to a judicially recognized exception. Alice Corp. v. CLS Bank
Int’l, 573 U.S. 208, 217 (2014). We also follow the United States Patent and
Trademark Office’s revised guidance for applying the Alice framework
when evaluating subject matter eligibility under 35 U.S.C. § 101. See
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Manual of Patent Examining Procedure (“MPEP”) §§ 2106.04, 2106.05 (9th
ed., Rev. 10.2019, June 2020) (incorporating USPTO, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) and
USPTO, October 2019 Update: Subject Matter Eligibility (Oct. 18, 2019),
https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf) (herein, we refer to these eligibility guidance
publications and the sections of the MPEP incorporating this guidance as the
“Guidance”).
As part of our inquiry, we “look at the ‘focus of the claimed advance
over the prior art’ to determine if the claim’s ‘character as a whole’ is
directed to excluded subject matter.” Affinity Labs of Tex., LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016); see Alice, 573 U.S.
at 217 (“First, we determine whether the claims at issue are directed to one
of those patent-ineligible concepts.”). The Guidance breaks this “directed
to” inquiry (“Step 2A”) into two prongs of analysis: (i) does the claim recite
a judicial exception (e.g., an abstract idea) (“Prong 1”), and (ii) if so, is the
judicial exception integrated into a practical application (“Prong 2”). MPEP
§ 2106.04(II)(A).
If we determine the claim is directed to the judicial exception, we then
examine “the elements of each claim both individually and ‘as an ordered
combination’ to determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Alice, 573 U.S. at
217 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S.
66, 78, 79 (2012)). That is, we examine the claims for an “inventive
concept,” “an element or combination of elements that is ‘sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.’” Alice, 573 U.S. at 217–18 (alteration
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in original) (quoting Mayo, 566 U.S. at 72–73); see MPEP § 2106.05(d)
(directing us to consider whether the additional claim elements add “a
specific limitation [or combination of limitations] other than what is well-
understood, routine and conventional in the field” or “is no more than well-
understood, routine, conventional activities previously known to the
industry, which is recited at a high level of generality” (“Step 2B”)).
Guidance Step 2A, Prong 1 (Recite an Abstract Idea)
The Examiner determines the claims are abstract because they are
“merely directed towards duplication and manipulation of data.” Final
Act. 5. In general, we agree with the Examiner that representative claim 1
recites an abstract idea because it sets forth or describes a mental process,
which is a category of abstract ideas. See MPEP §§ 2106.04(a)(2)(II)–(III).
More specifically, representative claim 1 recites duplicating an operation
and modifying a program to execute the copy of the operation instead of the
original version of the operation, which involves a series of mental steps.
This characterization of claim 1 also is consistent with how Appellant
describes the claimed invention. Appellant describes the focus of the claims
as modifying “the control flow and execution of operations in an existing
computer program” that “provides and relates to a transformation of a
particular piece of executable code to render the code more secure.” Appeal
Br. 7. In other words, Appellant characterizes the claims as being directed
to modifying computer program code. The Specification’s disclosures that
Appellant cites as describing the claimed subject matter also support this
characterization of the claimed aspects of Appellant’s invention. Appeal
Br. 2–3; see, e.g., Spec. ¶¶ 42 (describing at a high level duplicating an
operation and modifying the program to execute the copy instead of the
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original), 163–167 (describing data-flow duplication including randomly
selecting either the original or a copy of an operation for execution).
The Examiner determines that both functional limitations recited in
the claims—i.e., duplicating the operation and modifying the computer
program to execute the copy instead of the original operation without using a
conditional branch—are steps setting forth the concept manipulating data
that could be performed mentally or with pen and paper. Final Act. 5–6
(citing Digitech Image Techs., LLC v. Elec. for Imaging, Inc., 758 F.3d 1344
(Fed. Cir. 2014)); Ans. 4 (finding that the duplicating and modifying steps
“cover[] performance of the limitation in the mind except [for] the recitation
of generic computer components” because the limitations encompass “the
user manually duplicating and modifying the program”). As such, and
consistent with the Guidance, the Examiner determines the claims recite an
abstract idea because the recited limitations are mental steps (i.e., analyzing
and modifying data). Final Act. 6; Ans. 5; see Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016).
Appellant asserts the claims do not recite an abstract idea because
only certain methods of organizing human activity are ineligible, while other
methods of organizing human activity may be eligible. Appeal Br. 5. The
Examiner, however, does not find the claims recite methods of organizing
human activity. Rather, the Examiner finds the claims recite ineligible
subject matter because the duplicating and modifying limitations are mental
steps. Appellant’s argument, therefore, is not persuasive as it does not
address the Examiner’s findings or basis for determining that the claims are
ineligible.
Appellant acknowledges that the recited computer elements are
generic but, citing a non-precedential Board opinion, contends the claims are
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eligible because the claims specifically recite performing the operations
using the generic computer components. Appeal Br. 6. Appellant notes that
generic computer elements do not necessarily render a claim eligible, but
Appellant asserts a claim that recites performing a step by such generic
computer elements “removes the claim from one that can be performed
entirely by the human mind or with pen or paper.” Appeal Br. 6–7; see also
Appeal Br. 15 (“The claims are performed by a computer processor(s) and
are not observations, evaluation, judgement or opinion. Accordingly, the
claims are not directed to either mental processes.”); Reply Br. 1. Appellant
also cites four non-precedential ex parte appeals decisions by the Board that
reversed rejections under 35 U.S.C. § 101 because the claims required
computer hardware. Appeal Br. 6.
These arguments are unpersuasive as well. First, we note that the four
Board decisions are appeals of Examiner rejections finding the claims were
directed to non-statutory subject matter—i.e., software per se. Those cases
did not address whether the claims were directed to judicially-excepted
subject matter such as abstract ideas or natural phenomena. To the extent
Appellant contends merely reciting that a generic computer element
performs steps that otherwise could be performed mentally or using pen and
paper renders the claim eligible, we disagree. The Federal Circuit and the
MPEP clearly support the opposite conclusion—a claims’ functional steps
recite an abstract idea in the mental process category when, but for the
recitation of generic technological components, the claims’ steps describe a
concept that practically “can be performed in the human mind, or by a
human using a pen and paper.” CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1372 (Fed. Cir. 2011); see id. at 1375 (“That purely mental
processes can be unpatentable, even when performed by a computer, was
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precisely the holding of the Supreme Court in Gottschalk v. Benson”);
MPEP § 2106.04(a)(2)(III)(C) (“Claims can recite a mental process even if
they are claimed as being performed on a computer.”). As such, and
consistent with the Guidance, representative claim1 recites an abstract idea
because duplicating an operation and modifying a computer program is a
process that could be performed mentally or using pen and paper. MPEP
§ 2106.04(a)(2)(III).
As we noted above, Appellant’s description regarding the subject
matter recited in the claims is consistent with our determination that claim 1
recites mental steps. Appellant’s invention generally claims methods and
systems for duplicating an operation and modifying a call in a computer
program to execute the copy of the operation instead of the original
operation (i.e., analyzing the program content, evaluating portions to
duplicate, and storing the modified program). In other words, claim 1
merely requires evaluating the computer program to determine an operation
to copy, creating a copy of that operation, making a judgment to execute the
copy of the operation instead of the original operation, and rewriting the
computer program to call the copy of the operation instead of the original
operation. In fact, other than the use of generic computer elements to enter
and store the results of decisions, duplicating operations and modifying a
computer program are processes that software developers perform mentally
or using pen and paper (or an editing program equivalent to pen and paper).
Accordingly, we agree with the Examiner that these steps recite an
abstract idea because claim 1 recites mental processes similar to concepts the
Federal Circuit previously identified as abstract. MPEP § 2106.04(a)(2)(III);
Elec. Power, 830 F.3d at 1354 (concluding that “analyzing information by
steps people go through in their minds, or by mathematical algorithms,
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without more, a[re] essentially mental processes within the abstract-idea
category”); see Content Extraction & Transmission v. Wells Fargo Bank,
N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014) (concluding that claims drawn to
collecting data, recognizing certain data within the collected set, and storing
the recognized data were patent ineligible, noting that “humans have always
performed these functions”). For these reasons, we determine representative
claim 1 recites an abstract idea.
Guidance Step 2A, Prong 2 (Integrate Into a Practical Application)
Because claim 1 recites an abstract idea, we next determine whether it
integrates the abstract idea into a practical application. MPEP § 2106.04(d).
To determine whether the judicial exception is integrated into a practical
application, we identify “whether there are any additional elements recited
in the claim beyond the judicial exception(s)” and evaluate those elements in
combination with the limitations that recited an abstract idea to determine
whether they integrate the judicial exception into a recognized practical
application. MPEP § 2106.04(d)(II) (emphasis added); see MPEP
§§ 2106.05(a)–(c), (e)–(h).
As noted above, all of the functional limitations are part of the recited
abstract idea. The Examiner finds the additional limitations beyond the
abstract idea—i.e., the generic computer system (“one or more computer
processors,” “instructions” in a “computer-readable storage medium,” and
“computer systems”)—merely require performing the abstract idea on a
generic computer system such that the computer performs its basic functions
(i.e., executing code on a computer). Final Act. 6; Ans. 5; see MPEP
§ 2106.05(f).
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In addition to arguing that the recited steps could not be performed
mentally, Appellant asserts representative claim 1 integrates the abstract idea
into a practical application for various reasons. See Appeal Br. 7, 10–14;
Reply Br. 2–3. Specifically, Appellant argues the claims (1) “provide[] and
relate[] to a transformation of a particular piece of executable code to render
the code more secure,” (2) “recite[] a technical solution that result[s in]
improved, i.e. more secure, operation of a computer . . . due to a
fundamental transformation of the operation and structure of the computer
program code itself,” (3) are “rooted in computer network technology,”
(4) “recite a specific technique that departs from earlier approaches resulting
in a more secure computing environment,” and (5) provide a technical
advantage by making the program more resistant to attack “because the
computer program contains duplicate, redundant functions obfuscating
which parts of the computer program are actually used during execution.”
Appeal Br. 7, 11, 14; Reply Br. 2–3.
We agree with the Examiner that the additional limitations do not
integrate the judicial exception into a practical application. More
particularly, representative claim 1 does not (i) recite an improvement to the
functionality of a computer or other technology or technical field (see MPEP
§ 2106.05(a)); (ii) use a “particular machine” to apply or use the judicial
exception (see MPEP § 2106.05(b)); (iii) use a particular transformation of
an article to a different thing or state (see MPEP § 2106.05(c)); or (iv) recite
any other meaningful limitation (see MPEP § 2106.05(e)). Accord Final
Act. 3–4.
In particular, we find the only additional elements beyond the abstract
idea recited in representative claim 1 are the “computer processors,” which
are generic computer components recited at a high level of generality
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performing generic computer functions that do not include particular
technological implementations for performing these functions. See also
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed.
Cir. 2016) (“the use of generic computer elements like a microprocessor or
user interface do not alone transform an otherwise abstract idea into patent-
eligible subject matter.”); MPEP § 2106.04(d)(I) (explaining that “[m]erely
reciting the words ‘apply it’ (or an equivalent) with the judicial exception, or
merely including instructions to implement an abstract idea on a computer,
or merely using a computer as a tool to perform an abstract idea” by itself is
insufficient to integrate the abstract idea into a practical application).
Representative claim 1 recites that these processors are used to generate a
secured computer program. However, the recited steps for generating such a
program involve merely the two mental steps discussed above—duplicating
an operation and modifying the computer program.
Appellant’s arguments are unpersuasive because they do not explain
how the claimed subject matter integrates the abstract idea into a practical
application. We look to the additional elements beyond the abstract idea, to
determine whether they, for example, recite an improvement to technology.
As explained above, the additional elements include only the generic
computer processors. The duplicating and modifying steps are part the
abstract idea itself, not additional elements beyond the abstract idea.
Contrary to Appellant’s assertions, representative claim 1, read in
light of the Specification, does not embody an improvement to a computer or
other technology. Instead, the claimed subject matter modifies a computer
program by duplicating an operation and modifying the program to execute
the copy of the operation instead of the original version of the operation.
These steps make up the abstract idea that could be performed mentally.
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The computer processors—i.e., the additional elements—are used merely to
implement the abstract idea on a generic computer.
Appellant’s assertions that the claims recite a technical solution or that
the claims are rooted in or allegedly improve technology are similarly
unpersuasive. The focus of Appellant’s claims is on the duplication and
modification of the program code. No technical solution is recited; in fact,
the claims recite no details regarding how to duplicate and modify the
program to execute the copy of the operation instead of the original
operation. Rather, representative claim 1 merely recites duplicating an
operation and modifying the program to execute the copy. As discussed
above, these are steps that could be performed mentally and software
developers routinely copy and modify program code. Even accepting
Appellant’s contention that the recited subject matter results in more secure
program code, any such improvement results from the improvement to the
abstract idea, not to a technology. Notably, securing information such as
computer programs is not a problem specifically arising in computer
technology. Nor does the claimed solution of obfuscation by adding unused
information represent a technical solution—this solution would have the
same result regardless of its application to computer technology or any other
information or document.
Even setting aside that the alleged transformation of program code
(i.e., the duplicating and modifying steps) is the abstract idea itself, we also
disagree that claim 1 recites the type of “transformation” that may render
claims patent eligible. See Guidance, 84 Fed. Reg. at 55 (citing MPEP
§ 2106.05(c)); accord Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716
(Fed. Cir. 2014) (quoting Bilski, 561 U.S. at 594). Under the “machine-or-
transformation” test, a claimed process may be patent eligible under § 101 if
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it: (1) is tied to a particular machine or apparatus, or (2) transforms a
particular article into a different state or thing. In re Bilski, 545 F.3d 943,
954 (Fed. Cir. 2008), aff’d sub nom. Bilski, 561 U.S. at 593. Although an
underlying article can be intangible, such as electrical signals, and
transformation can include data transformation, the data must represent a
physical object or an article to be patent eligible under § 101. Bilski, 545
F.3d at 962–63 (citing In re Abele, 684 F.2d 902, 908–09 (CCPA 1982)); see
Solutran, Inc. v. Elavon, Inc., 931 F.3d 1161, 1169 (Fed. Cir. 2019)
(“Regardless of whether our Bilski opinion’s analysis of Abele is still sound
in view of recent Supreme Court opinions, Solutran’s check-scanning
argument directly conflicts with Content Extraction [& Transmission LLC v.
Wells Fargo, 776 F.3d 1343 (Fed. Cir. 2014)].”). Appellant’s claims may
encompass changing the program code and may even render the code more
secure. However, such a modification is not a “transformation” of a
physical object or article sufficient to render representative claim 1 eligible.
Additionally, Appellant contends the rejection does not consider the
claims as a whole. Appeal Br. 7–10. To the extent Appellant’s assertion is
that the rejection does not consider the ordered combination of elements, see
BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341
(Fed. Cir. 2016), that does not alter our determination. In BASCOM, the
court found “the patent describes how its particular arrangement of elements
is a technical improvement,” and, when construed in favor of
BASCOM,2 the claims may be read to improve an existing technological
process. BASCOM, 827 F.3d at 1350. As discussed above, the claims do

2 In BASCOM, BASCOM appealed the district court’s granting of a motion
to dismiss under Fed. R. Civ. P. 12(b)(6). BASCOM, 827 F.3d at 1341.
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not improve an existing technological process, but rather use the existing
components to perform the abstract idea. Unlike the arrangement of
elements (i.e., installation of a filtering tool at a specific location) in
BASCOM, 827 F.3d at 1349–50 (or the distributed architecture described
in Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1300 (Fed.
Cir. 2016)), Appellant’s claims do not recite a non-conventional and non-
routine arrangement of known elements. Instead, claim 1 merely recites
generic “computer processors” performing the basic duplicating and
modifying steps.
For these reasons, we determine claim 1 is directed to an abstract idea.
Guidance Step 2B (Inventive Concept/Significantly More)
Because we determine the claims are directed to an abstract idea, we
evaluate whether the claims include an inventive concept. See MPEP
§ 2106.05(II). As stated in the Guidance, many of the considerations to
determine whether the claims amount to “significantly more” under step two
of the Alice framework already are considered as part of determining
whether the judicial exception has been integrated into a practical
application. MPEP § 2106.05(II). Thus, at this point of the analysis, we
determine whether the claims (1) add a specific limitation, or combination of
limitations, that is not well-understood, routine, conventional activity in the
field, or (2) simply append well-understood, routine, conventional activities
at a high level of generality. MPEP § 2106.05(I)(A).
As already explained, the duplicating and modifying steps are part of
the abstract idea. An inventive concept “cannot be furnished by the
unpatentable law of nature (or natural phenomenon or abstract idea) itself.”
Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016);
see also Guidance, 84 Fed. Reg. 50, 56 (Jan. 7, 2019); Alice, 573 U.S. at 217
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(explaining that, after determining a claim is directed to a judicial exception,
“we then ask, ‘[w]hat else is there in the claims before us?’” (emphasis
added, brackets in original) (quoting Mayo, 566 U.S. at 78)). Instead, an
“inventive concept” is furnished by an element or combination of elements
that is recited in the claim in addition to the judicial exception and sufficient
to ensure the claim as a whole amounts to significantly more than the
judicial exception itself. Alice, 573 U.S. at 218–19 (citing Mayo, 566 U.S. at
72–73); see BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed.
Cir. 2018) (explaining that the Supreme Court in Alice “only assessed
whether the claim limitations other than the invention’s use of the ineligible
concept to which it was directed were well-understood, routine and
conventional” (emphasis added)).
On the other hand, “[i]f a claim’s only ‘inventive concept’ is the
application of an abstract idea using conventional and well-understood
techniques, the claim has not been transformed into a patent-eligible
application of an abstract idea.” BSG Tech, 899 F.3d at 1290–91 (citing
Berkheimer v. HP Inc., 881 F.3d 1360, 1370 (Fed. Cir. 2018)). “[I]t is
irrelevant whether [the claimed abstract idea] may have been non-routine or
unconventional as a factual matter . . . narrowing or reformulating an
abstract idea does not add ‘significantly more’ to it.” BSG Tech, 899 F.3d at
1291.
The only additional elements recited in representative claim 1 is the
generic computer processors. As supported by the lack of any detail
regarding these components in Appellant’s Specification, the generic
computer devices were well-understood, routine, and conventional in the
field. Spec. ¶¶ 53, 234, 237, Fig. 32; see also MPEP § 2106.07(a)(III)(A)
(“A specification demonstrates the well-understood, routine, conventional
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nature of additional elements when it describes the additional elements as
well-understood or routine or conventional (or an equivalent term), as a
commercially available product, or in a manner that indicates that the
additional elements are sufficiently well-known that the specification does
not need to describe the particulars of such additional elements to satisfy
35 U.S.C. 112(a).”).
The evidence presented supports a finding that the computer
processors were well-understood, routine, and conventional. For the reasons
discussed herein, we sustain the Examiner’s rejection of representative claim
1 as well as claims 2–14, not argued separately with particularity, under
35 U.S.C. § 101. See 37 C.F.R. § 41.37(c)(1)(iv).
REJECTIONS UNDER 35 U.S.C. § 103
The Examiner finds the combination of Horning and Eker teaches or
suggests every limitation recited in independent claims 1, 8, 13, and 14.
Final Act. 7–12. Of particular relevance to this appeal, the Examiner finds
Eker teaches or suggests executing a computer program without using a
conditional branch. Final Act. 8 (citing Eker ¶¶ 15–16); Ans. 6–8.
Appellant argues that because Eker explicitly discloses selecting between
two instances of a task every time it executes the modified code, Eker does
not teach a modified program “without the modified computer program
using a conditional branch.” Appeal Br. 18–23; Reply Br. 3–5.
We initially construe the last clause in claim 1—“without the
modified computer program using a conditional branch which executes
based on an input to execute the first operation copy instead of the first
operation.” During examination of a patent application, pending claims are
given their broadest reasonable construction consistent with the
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specification. In re Prater, 415 F.2d 1393, 1404–05 (CCPA 1969); In re
Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); see also
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997) (“[T]he PTO applies to
the verbiage of the proposed claims the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in applicant’s specification.”). Notwithstanding the somewhat
unusual phrasing and arrangement, we interpret this clause, in light of
Appellant’s Specification, as refining the construction of the modifying step.
The Specification discloses various steps for creating this modified
program. Spec. ¶¶ 163–177. In part, the process creates a copy of every
original operation that is not a “JUMP . . ., ENTER, or EXIT” instruction
such that the copy immediately follows the original operation such that all
non-branching instructions “have an original and a copy occurrence.” Spec.
¶¶ 164, 168. New unconditional branches— “JUMPA (‘jump arbitrarily’)”
instructions—are added that respectively select at random either the original
or the copy of the instruction. Spec. ¶¶ 170–177. Notably, the JUMPA
instruction “is not actually part of the [virtual machine] instruction set, and
no JUMPA will occur in the final obfuscated implementation.” Spec. ¶ 170
(emphasis added).
Accordingly, we interpret the modifying step as requiring a
modification of the computer program that results in a modified computer
program that has no conditional branch that selects between the operation
copy and the original operation (based on “an input”). Thus, when the
modified computer program runs, the modified program always executes the
first operation copy, not the original. This is in contrast to the original
Appeal 2020-000388
Application 14/388,746
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computer program that, when it runs, always executes the original operation,
not the copy. In other words, the final modified program does not include a
branch instruction that selects between the two operations. Rather, the
modified computer program includes both the original and the copy of the
instruction, but once the modified computer program is created as claimed,
the modified computer program will always execute the copy of the
instruction, not the original instruction.
As Appellant notes, in Eker, “an explicit selection step is performed
selecting which one of [the] instances of a particular task is executed” each
time the program is run. Appeal Br. 18; see Eker ¶ 86; Reply Br. 4. In
contrast, Appellant’s claims require that the modified computer program,
when executed, does not select between the original and copy, but instead
executes the copy of the operation every time the modified computer
program is run. See Appeal Br. 26 (claim 1). Furthermore, the
Specification’s disclosure of randomly choosing which of the two versions
of the operation to execute when generating the modified computer program
does not alter our interpretation of the claim because the claim still requires
that the modified program (i.e., the result of the claim) is a program that
does not include a conditional branch. See Appeal Br. 20; Spec. ¶¶ 11, 16,
26.
For these reasons, we are persuaded that Eker does not teach or
suggest a modified computer program that executes a copy without a
conditional branch. Independent claims 8, 13, and 14 recited commensurate
limitations. Claims 2–7 and 9–12 include these limitations via their
dependency from claims 1 and 8, respectively. The Examiner does not find
Horning and Futa, taken separately or in combination, cure this deficiency.
Therefore, we do not sustain the Examiner’s rejections of claims 1–14 under
Appeal 2020-000388
Application 14/388,746
19
35 U.S.C. § 103 as obvious over Horning and Eker or Horning, Eker, and
Futa.
CONCLUSION
For the above reasons, we sustain the Examiner’s rejection of claims
1–14 under 35 U.S.C. § 101 as being directed to a judicial exception without
significantly more.
However, on this record, we do not sustain the rejections of claims 1–
14 under 35 U.S.C. § 103 as obvious.
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner’s decision is affirmed. See 37 C.F.R.
§ 41.50(a)(1).
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–14 101 Eligibility 1–14
1–4, 6–10,
12–14
103(a) Horning, Eker 1–4, 6–10,
12–14
5, 11 103(a) Horning, Eker,
Futa
5, 11
Overall
Outcome
1–14

RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED