Appeal 2007-0463
Application 09/896,537
modular multiplication operations (col. 1, ll. 47-50). The Examiner (Answer 4)
characterizes Arazi’s specification at column 11, lines 30-38 as disclosing RSA
key generation using modular exponentiation methods. Appellants do not dispute
this characterization.
As motivation for modifying Eyer to employ modular exponentiation, the
Examiner (Final Action 5) cites the reduction in overhead mentioned in the
following passage in Arazi:
The major contribution of this method is due to the fact that the
NIST-DSS publication (Federal Register, Aug. 30 1991, pp. 42919-
43546, indicate the usage of the Euclid algorithm, involving division
operations, and a dedicated control program. The present method
avoids this overhead, calculating the modular multiplicative inverse
modulo q by using the already available modular exponentiator, which
forms an integral part of the DSS circuitry.
(Arazi, col. 11, ll. 58-66).
Appellants responded to the obviousness rejection by arguing that:
[t]he fact that Eyer may use digital signatures . . . does not make it a
candidate for combination with Arazi absent a suggestion for
desirability of the combination. Applicants submit that such
suggestion is absent because the references address different needs.
Eyer addresses a need for a secure method for transmission of data,
while Arazi addresses a need for a simplified and less expensive
digital signature device. Applicants respectfully submit that the
combination of Eyer with Arazi is not suggested in either reference.
(Br. 19). This argument is unconvincing because it fails to take into account that a
reference may be understood by the artisan as suggesting a solution to a problem
that the reference does not discuss. Id., 127 S. Ct. at 1742, 82 USPQ2d at 1397
(“Common sense teaches . . . that familiar items may have obvious uses beyond
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