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 .
Priority
This application is a continuation of U.S. application Ser. No. 17/830,985 filed on Jun. 2, 2022 which claims the benefit under 35 USC 119 (a) of Korean Patent Application Nos. 10-2021-0154972 filed on Nov. 11, 2021 and 10-2022-0014246 filed on Feb. 3, 2022 in the Korean Intellectual Property Office, the entire disclosures of each of which are incorporated herein by reference for all purposes.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 02/28/2025 was filed along with the mailing date of the Non-Provisional Patent Application on 02/28/2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
DETAILED ACTION
This Office Action is in response to a Non-Provisional Patent Application received on 02/28/2025. In the application, claims 1-20 have been received for consideration and have been examined.
Specification
Applicant’s submitted specification has been reviewed and found to be in compliance.
Drawings
Applicant’s submitted drawings have been reviewed and found to be in compliance.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more analyzed according to MPEP 2106.
Step 1: The independent claims 1, 7, and 14 do fall into one of the four statutory categories of “An operating method of a ciphertext operation”, “A system”, and “An operating method of a homomorphic encryption system” claims.
Step 2A: Prong 1: The limitations of the independent claim 1 recite language of the abstract idea which falls into the category of Mathematical concepts - “mathematical relationships, mathematical formulas or equations, mathematical calculations”.
It describes a generic mathematical concept of data conversion and computation, specifically changing data sizes and performing homomorphic math operations without tying it to a specific, unconventional technical improvement in how a computer works.
Additionally, the limitations of independent claims 7, and 14 also recites language of the abstract idea which falls into the category of Mathematical concepts - “mathematical relationships, mathematical formulas or equations, mathematical calculations”.
The claims describe a generic method of mathematical manipulation, data conversion, and parameter adjustment without tying it to a specific, unconventional technological improvement in how a computer functions.
These associations define the judicial descriptors in a manner that stays within the confines of the judicial precedent, with the understanding that these associations are not mutually exclusive, i.e., some concepts may be associated with more than one judicial descriptor.
Although claim 1 recites broad limitations compare to claims 7, and 14, however all the independent claims disclose the Abstract Idea of implementing Homomorphic encryption algorithms to allow mathematical operations to be performed on encrypted data. The limitations recite the steps of converting first encrypted text into a second encrypted text and further converting the second encrypted text into a third encrypted text. While converting the encrypted texts, Homomorphic encryption algorithm is applied to the second encrypted text. These steps are the actions that can be performed in a human mind.
This type of abstract idea is related to performing mathematical operations as defined by the claimed steps listed above. As such, the claims fall under at least the category of “an idea of itself” and “mathematical relations / formulas”. The phrase “an idea of itself is used to describe an idea standing alone such as an instantiated concept, plan or scheme, as well as a mental process (thinking) that can be performed in the human mind, or by a human using a pen and paper." Looking at the steps of the claims, for each of the claims, data is simply being generated/manipulated by using mathematical operations which was ruled abstract in:
a. Organizing and manipulating information through mathematical correlations (Digitech);
b. A mathematical formula for calculating parameters indicating an abnormal condition (Grams).
Furthermore, the invention is nothing more than converting first encrypted text into a second encrypted text and further converting the second encrypted text into a third encrypted text. While converting the encrypted texts, Homomorphic encryption algorithm is applied to the second encrypted text as described in the claims that can be performed mentally.
The steps are similar to concepts and ideas that have been identified as abstract by the courts. For example, a mathematical formula for calculating parameters indicating an abnormal condition (Grams). While the specific facts of the case differ from these cases, the claims are still directed to receiving data and determining if the data is in plaintext format or not and if it is, then encrypt the data which is a mental process. Further, each and every step can be performed mentally and with pen and paper. The process of encrypting data is old and well-known and a computer is not necessary to implement homomorphic encryption operation.
Step 2A (prong 2) Identifying an integrated practical application
Under step 2A (prong 1) of the 101 analyses, claims recite abstract idea of converting first encrypted text into a second encrypted text and further converting the second encrypted text into a third encrypted text. While converting the encrypted texts, Homomorphic encryption algorithm is applied to the second encrypted text is an abstract idea of mental process of performing homomorphic encryption.
Instant disclosure repeatedly mentions that the steps merely perform the process of Homomorphic encryption, which may be a fourth-generation encryption technology, may obtain the same result as an encrypted value obtained after performing an operation in plaintext, even when the operation is performed on a ciphertext and is obtained without decrypting encrypted information (instant disclosure [0028-0030]).
The use of a processor/computer as a tool to implement the abstract idea does not integrate the abstract idea into a practical application because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), the claims do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition (Vanda Memo), the claims do not apply the abstract idea with, or by use of, a particular machine (MPEP 2106.05(b)), the claims do not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e) and Vanda Memo). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea. Therefore, the Claims do not integrate a practical application of the abstract idea in the claims.
Finding the claims to be directed toward an abstract idea, however, is not the end of the inquiry. See Mayo Collaborative Servs. v. Prometheus Labs. Inc., 132 S. Ct. 1289, 1297 (2012). Rather, the second step requires determining whether additional substantive limitations narrow, confine, or otherwise tie down the claim so that, in practical terms, it does not cover the full abstract idea itself. Another way of stating the test is whether the claim language provides “significantly more” than the abstract idea itself.
Step 2B: Considering Additional Elements
The considerations are whether the claim includes:
• Improvements to another technology or technical field;
• Improvements to the functioning of the computer itself;
• Applying the judicial exception with, or by use of, a particular machine;
• Effecting a transformation or reduction of a particular article to a different state or thing;
• Adding a specific limitation other than what is well-understood, routine and conventional in the field, or adding unconventional steps that confine the claim to a particular useful application;
• Other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment.
Applying the test to the claims in the application, the structural elements of the claims, which include a generic device, modules when taken in combination with the functional elements claims are directed to system and method for performing mathematical calculations, together do not offer “significantly more” than the abstract idea itself because the claims do not recite an improvement to another technology or technical field, an improvement to the functioning of any computer itself, or provide meaningful limitations beyond generally linking an abstract idea to a particular technological environment (a general purpose device). When considered as an ordered combination, the Examiner does not find any combination of the additional elements that amounts to more than the sum of the parts. The Examiner finds that the Individual elements of the claims are performing their intended roles and functions which is encryption of data items. In most cases, the additional elements are applied merely to carry out data processing, as discussed above, which fall under well-understood, routine, and conventional functions of generic computers – in our common day-to-day interactions. Note: Applicant’s disclosure states a generic computer circuit is used to implement the security method of example embodiments (instant disclosure ¶0028-0030).
Therefore, the claimed interactions of the various generically recited methods / devices lack an unconventional step that confines the claim to a particular useful application in the sense that the result is equivalent to purely mental activity, e.g., performing homomorphic encryption.
Dependent claims 2-6, 8-13, and 15-20 have been analyzed to determine if they recite any element or action which results in integrating the model into a practical application however, dependent claims are rejected based on the aforementioned rationale discussed in the rejection of the independent claims because the claims merely recite performing homomorphic encryption without integrating the model into a practical application.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Gentry et al., (US20160164676A1).
Regarding claim 1, Gentry discloses:
An operating method of a ciphertext operation device supporting a ciphertext operation ([0028-0031] discloses that system 100 may be implemented as server 2 and may perform homomorphic evaluation using processors, circuitry and memory; [0090] & [0095] discloses system 100 that performs the operation of performing homomorphic evaluation of a function on one or more input ciphertexts), the method comprising:
receiving, from an encryption device, a request for the ciphertext operation ([0033-0034] discloses a two-party system in which requestor 1 sends an encrypted query to server 2, and server 2 evaluates a circuit C representing the requested search function. It further discloses that the requestor sends a query to server 2, which expresses the query as circuit C and evaluates that circuit over encrypted files. The transmitted query and associated circuit operation correspond to the claimed request for a ciphertext operation)
and first ciphertexts encrypted based on a homomorphic encryption algorithm and corresponding to a first operation size ([0033-0034] further discloses that requestor 1 generates public key pk, secret keys sk, and ciphertexts c1,…,ct encrypting a query under a homomorphic-encryption scheme. It further discloses stored files represented by bits π1,…,πt, which are encrypted as ciphertexts c1,…,ct. It explains that homomorphic evaluation allows operations to be performed on ciphertexts without access to the secret key);
receiving a parameter from the encryption device ([0065-0066] discloses that requestor 1 generates public key pk and that server 2 performs Evaluate(pk,Ci,c1,…,ct) using that key. Thus, the server receives or is supplied with the public-key information required to evaluate the ciphertexts. Gentry further explains that the public key includes a key-switching matrix W used to convert a ciphertext from one key, modulus or representation into another; [0084-0085] discloses modified conversion parameter is matrix W[ps′→s], defined modulo. The public key and, more particularly, key-switching matrix W, correspond to the claimed parameter);
converting the first ciphertexts to second ciphertexts corresponding to a second operation size using the parameter ([0084-0085] discloses the modified key-switching embodiment, W[ps′→s], defined modulo, to convert the ciphertext. It further describes converting a first ciphertext associated with a first key and first modulus to a second ciphertext associated with a second key and second modulus; [0091] Alternatively, Gentry converts a ciphertext having r bits of precision into a ciphertext having a different r′ bits of precision; [0093-0096] Thus, matrix W constitutes the parameter, and the second modulus, key dimension or r′-bit precision corresponds to the second operation size);
performing the ciphertext operation on the second ciphertexts ([0027, 0032–0034 and 0090] discloses performing homomorphic evaluation of one or more functions on the ciphertexts. The homomorphic operations may include addition, multiplication and automorphism; [0058–60 and 0090] expressly states that a key-switching transformation may be performed before or after the homomorphic operations are evaluated; [0091 and 0096] teaches converting the ciphertext and then performing a ciphertext operation on the converted ciphertext); and
outputting an operation result to the encryption device ([0033-0034] discloses that server 2 sends the resulting ciphertexts ci∗ to requestor 1, where the results may be decrypted to recover the answer to the requested operation. It further discloses that server 2 evaluates the requested circuit and sends the resulting ciphertexts to the requestor; [0091 and [0096] discloses that the results of the homomorphic operations may be output to storage, memory or communications component 114).
Gentry teaches the substantive operations of claim 1:
receiving homomorphically encrypted ciphertexts and an operation request;
receiving public-key/key-switching information;
converting ciphertexts between different keys, moduli, dimensions or bit precisions;
performing homomorphic operations on the converted ciphertexts; and
returning the encrypted operation result to the originating encryption device.
The principal terminology difference is that Gentry describes the first and second representations using different:
moduli;
key dimensions; or
numbers of bits of precision,
whereas claim 1 calls these representations different “operation sizes.”
A person of ordinary skill would have understood that Gentry’s different modulus sizes or r-bit and r′-bit precision levels define different numerical sizes supported during the ciphertext operation. It therefore would have been obvious to treat those differing modulus or precision sizes as the respective first and second operation sizes.
Regarding claim 2, Gentry discloses:
sending to the encryption device a request for the parameter used for the ciphertext operation (Gentry discloses a two-party protocol in which requestor 1 generates public key pk, secret keys and ciphertexts, and server 2 uses pk to evaluate the requested circuit. ¶33. Gentry further teaches that the public key includes key-switching matrix W, which is used to convert a ciphertext between different keys or representations. ¶¶65–66 and 84–85)
for receiving the parameter (Gentry’s server performs Evaluate(pk,Ci,c1,…,ct), establishing that the server receives or otherwise obtains the requestor-generated public-key information necessary for evaluation. ¶33. The public key includes the conversion matrix W. ¶¶65–66 and 84–85).
in response to receiving the request for the ciphertext operation (Gentry discloses receiving an encrypted query and evaluating a circuit representing the requested operation. ¶¶33–34).
Gentry does not expressly disclose that server 2 first sends a separate request to requestor 1 asking for the parameter. Gentry instead indicates that the requestor provides the public key and ciphertexts as part of the two-party protocol.
It would have been obvious for server 2 to request the public key or key-switching parameter when it was not already locally available, because Gentry requires that information to perform Evaluate(pk,…) and the disclosed ciphertext conversions.
Regarding claim 3, Gentry discloses:
The method of claim 1, wherein the first ciphertexts correspond to a first set of prime numbers (Gentry discloses keeping ciphertexts in an evaluation or “double-CRT” representation. ¶¶40 and 79–80. Its chain of ciphertext moduli is defined using primes p0,…,pL−1. ¶¶70 and 79–80. Gentry further explains that a modulus qt is the product of smaller primes pi. ¶¶100–101 and 177) and
the second ciphertexts correspond to a second set of prime numbers different from the first set of prime numbers (Gentry discloses modulus switching from modulus qt to modulus qt−1. ¶¶69–70 and 100–101. Because qt and qt−1 are defined by different subsets of the prime chain, the converted ciphertext corresponds to a different set of primes. Gentry explains that modulus switching removes prime factor pt, converting from qt to qt−1. ¶¶100–101 and 177).
Regarding claim 4, Gentry discloses:
The method of claim 1, wherein the first operation size is 64 bits (Gentry discloses ciphertexts having r bits of precision, but it does not specifically identify r as 64 bits. ¶¶93 and 95–96. Therefore, it is considered as design choice to use any size of bits), and
the second operation size is larger than the first operation size (Gentry discloses converting a first ciphertext having r bits of precision into a second ciphertext having r′ bits of precision, where r′>r. ¶¶9, 93 and 95–96. Gentry explains that increasing the modulus from q to pq increases precision from log(q) bits to log(pq) bits. ¶93).
Regarding claim 5, Gentry discloses:
The method of claim 1, wherein the converting the first ciphertexts to the second ciphertexts includes converting the first ciphertexts to the second ciphertexts (Gentry discloses converting ciphertexts between different moduli using modulus switching and between different keys and moduli using key switching. ¶¶65–70, 84–85 and 91)
using Chinese remainder theorem (Gentry expressly describes ciphertexts maintained in an evaluation or “double-CRT” representation. ¶¶40 and 79–80. Gentry explains that the ciphertext elements are represented in double-CRT form relative to the constituent prime factors. ¶¶100–101)
according to a set of prime numbers corresponding to the second operation size (Gentry’s modulus chain is defined by primes p0,…,pL−1, with the modulus at a particular level formed from a corresponding subset of those primes. ¶¶70 and 79–80. Gentry discloses modulus switching from qt to qt−1 by removing/scaling with prime factor pt. ¶¶100–101 and 177. Thus, the converted ciphertext is represented using the set of prime factors defining the second modulus).
Regarding claim 6, Gentry discloses:
The method of claim 1, further comprising converting the operation result to a third ciphertexts corresponding to the first operation size (Gentry expressly states that key switching is used to convert a product ciphertext valid under a high-dimension key “back to a ciphertext with respect to the original low-dimension key.” ¶65. Gentry describes use of matrix W to perform that conversion. ¶¶65–67. The returned ciphertext corresponding to the original key dimension or representation maps to the claimed third ciphertext corresponding to the first operation size).
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
Claims 7-20 are found allowable over the cited prior art. However, as described above, claims 7-20 are rejected in light of 35 USC § 101 Abstract Idea reciting Mathematical algorithm to perform Homomorphic encryption without integrating the abstract idea into a practical application.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SYED M AHSAN whose telephone number is (571)272-5018. The examiner can normally be reached 8:30 AM - 6:00 PM.
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/SYED M AHSAN/Primary Examiner, Art Unit 2491
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