DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on July 28, 2026, has been entered.
Priority
Acknowledgment is made of applicant' s claim for foreign priority under 35 U.S.C. 119 (a)-(d).
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claim 19 is objected to because of the following informality:
Last line: Add an additional indent to have the “suppressing” step to be in-line with the “concatenating” and “rotating” step.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 1-3, 5-14, and 16-21 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, the claim recites “wherein the rotation of the concatenated word comprises: a first rotation of the concatenated word by a determined number M of bits, M being different from 0 and from a multiple of a word size; and a second rotation of the concatenated word by a number of bits based on the selection bit; and suppressing an unselected value of the two values in the concatenated word”. In lines 11-16. In paragraph [0059], the paragraph refers to performing a second rotation on the “shifted concatenated word”, which indicates that the second rotation does not refer to the original concatenated word, but rather, a shifted version of the concatenated word as a result of the first rotation, and further evidenced by table 1 and table 2 in pages 9 and 11, respectively. However, in claim 1, the first rotation refers to the concatenated word and the second rotation also refers to the concatenated word, not the result of the first rotation. Additionally, the suppression is to be performed on the concatenated word, not the result of the second rotation as described in table 1 and table 2 in the specification. Therefore, there exists an inconsistency between the claimed subject matter and the specification, resulting in claim 1 being indefinite (MPEP 2173.03, paragraph 2).
Examiner proposes the following recommendation for claim 1:
“wherein the rotation of the concatenated word comprises:
a first rotation of the concatenated word by a determined number M of bits, M being different from 0 and from a multiple of a word size, to generate a first result in the register; and
a second rotation of the first result, by a number of bits based on the selection bit, to generate a second result in the register; and
suppressing an unselected value of the two values in the second result;”
Claims 8, 12, and 19 are rejected for the same reasons as claim 1 and the claims should follow the recommendation given by Examiner for claim 1.
Claims 2-3, 5-7, 9-11, 13-14, 16-18, and 20-21 are rejected for inheriting the rejection of the claims in which they depend on.
Note that the recommendations requires Applicant to amend the dependent claims that refer to the suppressing of the concatenated value. Examiner notes the following claims that may be affected by the recommendations above:
Claim 2, lines 2-3: “concatenated word”, suggest changing to “second result”.
Claim 9, lines 2-3: “concatenated word”, suggest changing to “second result”.
Claim 13, lines 2-3: “concatenated word”, suggest changing to “second result”.
Claim 20, lines 2-3: “concatenated word”, suggest changing to “second result”.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-3, 5-14, and 16-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1: Claims 1, 8, 12, and 19 recite a method, a non-transitory computer-readable medium, a system, and a device. Thus, each of the claims fall under one of the four statutory categories.
Under Prong One of Step 2A of the 2019 Revised Patent Subject Matter Eligibility Guidance (“2019 PEG”), claim 1 recites “performing a cryptographic operation… by selecting a value amongst two values based on a selection bit”, “concatenating the two values… to generate a concatenated word including the two values in two distinct portions of the concatenated word”, “rotating the concatenated word according to a value of the selection bit to position the selected value in a determined portion of the concatenated word… amongst said two portions”, “a first rotation of the concatenated word by a determined number M of bits, M being different from 0 and from a multiple of 16” and “a second rotation of the concatenated word by a number of bits based on the selection bit”, “suppressing an unselected value of the two values in the concatenated word”, and “performing one or more processing operations based on a result of the cryptographic operation”. Such limitations cover mental processes that are concepts performed in the human mind or with pen and paper (including an observation, evaluation, judgement, or opinion). The process can be done mentally by concatenating two values together, rotating the concatenated values in a certain way depending on if the bit is “1” or “0”, then suppressing the unselected value by writing out the selected value as the result of the operation. Therefore, the claim includes limitations that fall within the “mental processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Under Prong Two of Step 2A, this judicial exception is not integrated into a practical application. The elements “register” and “computer system, the computer system including a memory and processing circuitry” are recited at a high level of generality, i.e., reciting generic computer components, which amount to no more than mere instructions to apply the exception using generic computer elements (see MPEP 2106.05(f)), which does not integrate the judicial exception into a practical application (see MPEP 2106.04(d)(I)). The element “protecting the performing of the cryptographic operation against side channel attacks” does no more than generally link the use of the judicial exception to a particular technological environment or field of use (e.g., cryptography technological environment) (see MPEP 2106.05(h)), which does not integrate the judicial exception into a practical application (see MPEP 2106.04(d)(I)). Thus, the elements fail to integrate the judicial exception into a practical application.
Under Step 2B, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed previously with respect to Step 2A Prong Two, the elements amount to no more than mere instructions to apply the exception using generic computer elements (see MPEP 2106.05(f)) or does no more than generally link the use of the judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)). Accordingly, this claim is not patent-eligible under 35 U.S.C. 101.
Regarding claim 2, the claim recites “suppressing of the unselected value of the two values in the concatenated word comprises shifting the concatenated word”. Such limitation further covers mental processes that are concepts performed in the human mind or with pen and paper (including an observation, evaluation, judgement, or opinion). The claim fails to provide an element that would integrate the judicial exception into a practical application under Step 2A Prong Two and does not amount to anything significantly more under Step 2B. Accordingly, the claim is not patent-eligible.
Regarding claim 3, the claim recites “wherein the word size is 16 bits, a first value of the two values is represented by a 16-bit word…”, “a second value of the two values is represented by a 16-bit word…”, “the concatenated word is a 32-bit word…”. Such limitations further cover mental processes that are concepts performed in the human mind or with pen and paper (including an observation, evaluation, judgement, or opinion). The claim additionally recites “a first value… stored in a first 32-bit register”, “a second value… stored in a second register”, and “the concatenated word… stored in the first register”. Such elements are considered to be an insignificant step of storing data in memory (see MPEP 2106.05(d)(II)(iv), Storing and retrieving information in memory), and is deemed to be considered well-understood, conventional, and routine by the courts (MPEP 2106.05(d); See Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93), which does not integrate the judicial exception into a practical application (see MPEP 2106.04(d)(I)). The claim fails to provide an element that would integrate the judicial exception into a practical application under Step 2A Prong Two and does not amount to anything significantly more under Step 2B. Accordingly, the claim is not patent-eligible.
Regarding claim 5, the claim recites “performing an OR logic function between the value of the selection bit and a value equal to 0xN0000000 where N is between 1 and F in a hexadecimal system and is defined with respect to the determined number M of bits for the first rotation” and “rotating a result of the OR logic function by 28 bits”. Such limitations further covers mental processes that are concepts performed in the human mind or with pen and paper (including an observation, evaluation, judgement, or opinion). The claim fails to provide an element that would integrate the judicial exception into a practical application under Step 2A Prong Two and does not amount to anything significantly more under Step 2B. Accordingly, the claim is not patent-eligible.
Regarding claim 6, the claim recites “the one or more processing operations comprises generating one or more control signals based on the result of the cryptographic operation”. The element amounts to no more than mere instructions to apply the exception using generic computer elements (see MPEP 2106.05(f)), which does not integrate the judicial exception into a practical application (see MPEP 2106.04(d)(I)). For example, after a completion of an operation, at least one control signal will be produced to indicate the completion. The claim fails to provide an element that would integrate the judicial exception into a practical application under Step 2A Prong Two and does not amount to anything significantly more under Step 2B. Accordingly, the claim is not patent-eligible.
Regarding claim 7, the claim recites “the one or more operations comprises an authentication operation”. Such limitation further covers mental processes that are concepts performed in the human mind or with pen and paper (including an observation, evaluation, judgement, or opinion). Given that the one or more operations are related to hiding a cryptographic key (see [003]), one of those operations would be to authenticate the given cryptographic key. The operation to authenticate can be seen as a mental process. The claim fails to provide an element that would integrate the judicial exception into a practical application under Step 2A Prong Two and does not amount to anything significantly more under Step 2B. Accordingly, the claim is not patent-eligible.
Regarding claim 8-10, the claims are mostly rejected for the same reasons as claims 1-3, respectively. Claim 8 additionally recites “a non-transitory computer-readable medium having contents which cause processing circuitry to perform a method”. Such element amounts to no more than mere instructions to apply the exception using generic computer elements and elements recited at a high level (see MPEP 2106.05(f)), which does not integrate the judicial exception into a practical application (see MPEP 2106.04(d)(I)). The claims fail to provide an element that would integrate the judicial exception into a practical application under Step 2A Prong Two and does not amount to anything significantly more under Step 2B. Accordingly, the claims are not patent-eligible.
Regarding claim 11, the claim recites “the contents comprise instructions executable by the computer system”. Such element amounts to no more than mere instructions to apply the exception using generic computer elements (see MPEP 2106.05(f)), which does not integrate the judicial exception into a practical application (see MPEP 2106.04(d)(I)). The claim fails to provide an element that would integrate the judicial exception into a practical application under Step 2A Prong Two and does not amount to anything significantly more under Step 2B. Accordingly, the claim is not patent-eligible.
Regarding claims 12-14 and 16-17, the claims are mostly rejected for the same reasons as claims 1-3, and 5-6, respectively. The claims additionally recite “a system”, “a plurality of registers” and “processing circuitry coupled to the plurality of registers”. Such elements amount to no more than mere instructions to apply the exception using generic computer elements (see MPEP 2106.05(f)), which do not integrate the judicial exception into a practical application (see MPEP 2106.04(d)(I)). The claims fail to provide an element that would integrate the judicial exception into a practical application under Step 2A Prong Two and does not amount to anything significantly more under Step 2B. Accordingly, the claims are not patent-eligible.
Regarding claim 18, the claim recites “cryptographic circuitry, which, in operation, performs the cryptographic operation” and “control circuitry, which, in operation, generates one or more control signals based on a result of the cryptographic operation”. Such element amounts to no more than mere instructions to apply the exception using generic computer elements (see MPEP 2106.05(f)), which does not integrate the judicial exception into a practical application (see MPEP 2106.04(d)(I)). The claims fail to provide an element that would integrate the judicial exception into a practical application under Step 2A Prong Two and does not amount to anything significantly more under Step 2B. Accordingly, the claims are not patent-eligible.
Regarding claims 19-21, the claims are mostly rejected for the same reasons as claims 1-3, respectively. The claims additionally recite “a device”, “a plurality of registers” and “cryptographic circuitry coupled to the plurality of registers”. Such elements amount to no more than mere instructions to apply the exception using generic computer elements (see MPEP 2106.05(f)), which do not integrate the judicial exception into a practical application (see MPEP 2106.04(d)(I)). The claims fail to provide an element that would integrate the judicial exception into a practical application under Step 2A Prong Two and does not amount to anything significantly more under Step 2B. Accordingly, the claims are not patent-eligible.
Allowable Subject Matter
Claims 1-3, 5-14, and 16-21 are allowed, over the prior art.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claims 1, 8, 12, and 19, the prior art of record has not taught, either individually or in combination, and together with all other claimed features, a first rotation of the concatenated word by a determined number M of bits, M being different from 0 and from a multiple of a word size, and a second rotation of the concatenated word by a number of bits based on the selection bit.
Response to Arguments
Applicant's arguments, on page 10, paragraph 2, to page 15, paragraph 4, filed July 28 2026, with respect to claims 1-22 rejected under 35 U.S.C. 101 have been fully considered but they are not persuasive.
Regarding arguments on page 14, paragraph 2, Applicant argues that rotating a word in a register using a specific procedure is not something that can be performed in the human mind.
Examiner respectfully disagrees with this argument. Examiner has explained their position in the Advisory Action mailed July 16, 2026, and will not repeat those arguments for the sake of brevity. Also see MPEP 2106.04(a)(2)(III)(C). Therefore, the argument regarding that rotating a word in a register using a specific procedure is not something that can be performed in the human mind is considered not persuasive.
Regarding arguments on page 14, paragraph 3, Applicant argues that the claimed subject matter is not directed to an abstract idea.
Examiner respectfully disagrees with this argument. See MPEP 2106.04(a)(2)(III) regarding the mental abstract. The courts has indicated that “methods which can be performed mentally, or which are the equivalent of human mental work, are unpatentable abstract ideas the ‘basic tools of scientific and technological work’ that are open to all” (654 F.3d at 1371, 99 USPQ2d at 1694 (citing Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1972))). The steps of concatenating, rotating, and suppressing values are the identified mental concepts that can, at least, be done on pen and paper by a human. Note that a claim using a computer may still recite a mental process (MPEP 2106.04(a)(2)(III)(C)). With respect to the quote from the MPEP regarding the improvement, Examiner uses the quote as to give the Applicant the general idea of how the improvement is to be provided by the claim elements, The example provided by the quote (referring to a recited fundamental economic concept) was merely used as an example to what the abstract idea may refer to and would also include other abstract ideas, such as mathematical concepts or mental processes. Therefore, the argument regarding that the claimed subject matter is not directed to an abstract idea is considered not persuasive.
Regarding arguments on page 15, paragraph 1, Applicant indicates that Examiner conceded to the fact that protecting cryptographic operations against side channel attacks is not the abstract idea at issue.
Examiner indicated that “protecting the performing of the cryptographic operation against side channel attacks” is an element that is generally linking the use of the judicial exception to a particular technological environment or field of use (MPEP 2106.05(h)), which is used alongside the abstract idea as an additional element, but it is not the abstract idea.
Regarding arguments on page 15, paragraph 3, Applicant argues that performing of cryptographic operations cannot be replaced with paper and pencil.
As previously stated, Examiner indicated “protecting the performing of the cryptographic operation against side channel attacks” as generally linking the use of the judicial exception to a particular technological environment or field of use (MPEP 2106.05(h)), not as part of the mental process. As previously stated, the steps of concatenating, rotating, and suppressing values are the identified mental concepts that can, at least, be done on pen and paper by a human.
Regarding arguments on page 15, paragraph 3, Applicant argues the claimed embodiments provide an improvement.
Examiner respectfully disagrees with this argument. Examiner has explained their position in the Advisory Action mailed July 16, 2026, and in the Final Office Action mailed April 28, 2026, and will not repeat those arguments for the sake of brevity. Therefore, the argument regarding that the claimed embodiments provide an improvement is considered not persuasive.
With respect to claims 4, 15, and 22 being canceled, the rejection of claims 1-3, 5-14, and 16-21 under 35 U.S.C. 101 will be maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EMILIO ALCANTARA-RAMOS whose telephone number is (571)272-4211. The examiner can normally be reached Mon-Fri 8:30-5:00 PST.
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/E.A./Examiner, Art Unit 2183
/David J. Huisman/Primary Examiner, Art Unit 2183
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