0 • REF ID: A521451 . -) 

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IN T3E UllITED STA~S PA'?ENT OFFICE 

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Ia re application or f. ' • 

Wi:llism F. Friedman, 

Piled' July 2E. 1933, 

·ser., lo .• 682,096 

i: Crntcigrapbic ~1'stea 

Hen. Commi~sioner or Patents, 

Sir a 

Div. S3, Room 699? 

December 5, 1934. 

Responsive to Patent Office Action dated June 6, 1934. 

Claime 11 and 13 are cancelled without prejudice. 

Cl&iM 17, line 3, after "bank" and before the semicolon insert - - , ea.id 

eete of ele~ente being electricall7 interrelated Line 4, cancel 

"connectionen and substitute - - electrical relation - -

Claim 18, line 2, r-ancel "and" Line 3, nfter "bank" and 

before the semicolon ineert - - , and including electrical connect1oD.8 

between said eete of element• - -

Claim 19, line 2, cancel "and" ; substitute a con:ma atter 

"te,board. " Line S, e.!ter "ba:nk" &nd before the semicolon insert -b- , a.nd 

including electrical connections between said sets of elements 

Claim 20. line 2. cancel "and " substitute a eomma after 

"keyboard" Line S, after "b&nlc" Md before the semicolon insert - - , and 

including circui 1 connections between said sets of elements - -

Claim 21. line 2, cancel " and" substitute a comma. after 

"keyboard" Line 3 after "bank" and betore the se~icolon insert - - , and 

lmcluding circuit connections between said sets of element• - -

l'ftin.f:':,,lnn+;" I .... •••lllUUla1..1L1..a 

IJeclassified and aooroved for release bv NSA on 12-16-2013 oursuant to E.O. 1352Ei 
Claim 22, line 3, after "bank ; n insert electrical 

connections between said sete of elements • ' 

Claim 23, line 3, after "bank ; " insert - - circuit connections 

between said sets of elements ; 

Claim 24, line 5, after "bank J " insert - - ~ircuit connections 

between s~id sets of elements ; 

Claim 25, line 3, after "bank ; " insert - - circuit connections 

between said sets of elements ; 

REM.ARKS 

Refer:d . .ng to the Lxaminer' s sta.ter.;ent "Bebern discloses meeh&nimn 

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tor displacing the code wheels ", this is correct. But :his statement that 

n this mechanism is in effect a cipher-key trf:l.nsml tter ", is erroneous in 

Looking into the meaning of the expreseion ,, cipher-key transmitter" ,•we have three things to consider : first, the meaning of the 

term "cipher key " ; second, the meaning of the term "transmitter" • 

and third, the meaning of the term resulting from. combining 1tcipher key" 

with "tre.nsmi tter11 into one expreseian. It will be granted, presumabl.1 • I 

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that these terms muet be examined in the light of cryptographical technique 

and tenninolog~. Accordingly, having recourse to a refe~enee source I 

commonly accepted BB a:ithori tn ti ve, viz., the Encyclopedi~a :Sri tannica. 

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14th rd1 tion, Article "Codee 1f,l.nd Ciphers " in Vol. E •! we find the 

to11ow1nc statement : 

"Every pre.ctioa.l cipher system mu!tt canbine (l) a 

baeic method or treA.tment which 1e constant in character, 

with (2) e. keying principle which la vnriabl~ in c:Mr&cter 

and employs specific keywords, phrases, or nu\:n.bers, the 1nd1T1dua.l compositions of which determine or ciontrol the exact results under the basic method. " · 

Considering the phrase "cipher key .. a.s ijt Hppeers in the 

applicant's specifications.and claims, and bearing in mind that we are 

directing attention only to the mechaniem tor displacing the cipher 

wbeel1, it is quite cle&r thst the cipher key here ser 1'res as the phyeice.l 

embodiment of the "keying princi~le " referred to in the foregoing eits ti on, Nnd that its sole purpose is to serTe &s the c~ntrolli:ng element 

in effecting the displacements of.the ciph~r wlreela in a variable manner. 

Contrast this situation with thl\t in Hebern. P.eferring now only to the 

meehaniem tor displacillg the cipher wheels, ln Hebern ,there is embodied 

no such thing as a cipher key which co~esponds to a tt,keying principle 

which ie va.riable in character " because the meeha.nism: tor displaeiD« 

the cipher wheels is absolutely rued. It is, in fa.ct, the very ft.ntithe11a of a keying principle Vt\rie.ble in character and is strict17 com-

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parable to the mechanism of any indicating or recording meter tor measuring eas, electric power, or water cons11PIDption. Certainly, no one could 

consistently ~rgue that the mechanism actuatir.J8 an odometer, for exam~le, 

embodies a keying principle which is variable in character and which controls the movements of the wheele in a Wl.riable manner. Indeed. conetanc7 is the funds.mental basis of operation and functioning or rmch a , I 

deYice. end not variabili t7. Since this ie the same tJ'pe or meter-like 

mech&niem as is embodied in Hebern, it must be quite clear that the I 

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mechanism for displacing the cipher wheels in Ilebern is positively not 

e.n aa'bediment of a "keying principle which is variable in cbs.ra.cter " 

and therefore the :~Y-e.miner is not correct in e.ssmn.ing tb)at Re'bern discloses a mechanism which embodies a cipher key as s. oon~rolUng I element 

in displacing the cipher wheels. 

Coming now to the word "transmitter" , in the phrase "cipherkey transmitter ", this refers to a definite mechanico ;-eleotrical entity 

well kncwn in the art of telegraphy as e. specific mechanism operating in 

a specific manner to ac<".omplish specific functions in electrical tra.nsmission of energy. In its essence, a transmitter of the cbar~cter disclosed by applicant is ~ mechanism whi~h pennits of t~ eeta~lisbment 

of one of a ntUltiplicity of sets of electr~cal eonditibne tor tranemitting electrical impulses and of changing from one set t;o another set of I 

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conditions ~ecordlng to some variable f~ctor eueh as ~ ta.pe b€ar1ng pGr-

:foratione eorreeponding to ~" col'!lmUllicstion alphabet. 1 :;art.a.inly Eebern 

discloses no such device, nor is the mechanism embodied therein even 

faintly similar to an electrical transmitter of this ~ype, nor is the 

Hebern mechanism in affect a transmitter, s.s inferred 'by the Examiner. 

Coming now to t1:1e whole phrare '

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eipher-key tre.nsmitter ", e;, 

transmitter of the type described b~ applicant is US\f!\lly· employed strictly for ordinary telegraphic tr~nemission purposes. · ~t is true that it hae I 

been em~loyed tor cryptogrsphie purposes, as disclos~d in Morehouse, Vernem, and others. But it hae never before been employed in connection 

with a cryptographic device using rotet~ble cipher ~heels, nor for the 

pur~ose of controlling the displacements of the cipher wheels. 

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REF ID: A521451 --, 

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In the lieht of the foregoing paragraphs it must be quite clear 

that the Rebern mechanism ls not " in effect a cipher-key transmitter " 

ae here described and that applice.nt's claims l to 4 are by no means 

met b)' the Hebern reference. 

1:eferring to ·.::xam.iner' e sta.tel!lent "lf the keying element is 

necessary to the functioning of the rest of the device, it ca..Lnot be 

said to be independent thereof " , it may be said that the tape is not 

- neceseary to the functioning of the deTioe. Considered solely ns a 

mech&nico-electrical device which has movi!JS' parts actuated thus and 

so b1 interaction of its component elements, and not thinking of it as 

e. d1nice for encipheribg and. deciphering communicstions, .it could operate perfectly 1atisfactoril7 without,e.ny tape at ell. What would 

happen in this case is that once started in operation the displ~cements 

ot the cipher wheels would be perfectly regular : &ll f1 ve wheels would 

step torward one space for each deprees!~n of a key of the keyboRrd. 

Cryptogra.phioalJ.7 the result would be equi Talent merely to the use ot 

a sot of '26-: different alphabets.. This, however, ie wholly beside the 

the 

point raised by the ~.:Xe.miner, viz:. whether or not/keying element, 

in this ca.se the tape, 1s necessary to the functlon1n€; of' the mHehine • 

. It has been demonstrated that this le not thP- cai::e ru.d therefore the 

Examiner is in error in this regard. The }le,yi:ng element ie in tact 

independent of the cryptograph. It was not intended that the fact 

tha1; it ca.n be replaced be ll.sed a.e e.n argument fa.1'oring its independency 

ot the mechanism itself. Tha.t phase of the matter has nothing to do 

with the present argument. ~e essential idea here is that of a cryptograph employing rotatable cipher wheels the displacements or which 

are controlled b1 an external element, in contradistinction with a 
REF ID:A521451 / 

device in which the displncenents of the cipher riheels e.re· controlled 

by an internal element. r.be &~plicant can only insist that claims 

6 to 10 and 18 e.re accurate in description and in a.11 sincerity requeBta 

the F..xaminer to reconsider his action in the light of the foregoing 

rem.arks : 

As for the Examiner's stetement that these claims are 

indefinite in the inferential inclusion of the tape as element of the 

mBchL':e, the applicant h~'.1" earnestly endeavored to avoid an.y basis tor 

such an inference. ;ge,in a1:d agnin the si>eeific2,tions ruid the claims 

distinctly indicate that the ta:pe is not an inherent element of the 

machine but on the contrary is an external element, independent of the 

cryptograpb. 

In sup~ort of the proposition that impoeitive inclusion 

of elements has often escaped criticism by the Gou.rte, it is desired to 

refer to "Patent Blai.m Draftine., by r:r. Strinehsn (1930 ). Sec. 545E, 

P8€e 211, wherein several cases Rre mentioned. In connection with one 

of these (Eibel v. Minnesota , 261 u.s. 45 ; 310 o.G. 3 ), it is said : 

"Eibel claim 1 and some of the other claims of the same patent consist 

exclusively of impositively included ele::nents, except tor the introductory 

nominative. " The Eibel patent in question is No. 845,224. 

The Examiner then goes on to sa:Y th~t if ?,he tspe ia 

directly included as a machine part, the claims would be subject to rejection on the ground of a.ggregntion, or ae a.n old eornbination of machine 

and tape. While not admitting the validity or includintr the tape as a part 

of the machine1 even if it were admitted, it is dif~ult, to see any 

basis tor rejection on the ground that we have here an pld combination 

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REF ID:A521451 

of machine end tape. The Examiner has failed to cite referehcee t:1herein 

a cryptographic device employine rotatable cipher wheels is combined 

with a cipher-ke7 tr~nsmitter usine a tape. So far as the applicant is 

aware this combination is novel in the art. However, if the 7 xaminer 

a3S1lilleB that the use of a tape in the applicant's invention ie merely 

another way of causing the cipher wheels to be displaced a.nd that n 

means for such a displacement is inferentially present in Hebern, and 

that therefore it is merely ~n old combination, then it 1a hopcad that 

the discussion in connection with claims l to 4 above will serve to 

clarify the structure and will lead to a change of opinion. 

Again, it is desired to stress the point that the Hawley case 

.:;. cited by the ;~xaminer t"Jould not apply to applicant's ca.s~ • even assuming the incl 11eion of the tape as a po~itive element. In that case it 

wa1 said "The substitution for an old element in R combination of en 

element performing a similar function, but constructed in a different 

way. does not render the combination itself patentable where there is 

no reeultant change in the operation n In applicant's case the key tape 

or a plurality of key tapes in the combination as claimed doee most -- - emphatically produce a resultant ch~e in the operation viz: that ------ - - periodicity is prevented, and the elimination of predictable fa.ct~rs 

is made more effective by mul.ti9lying the number of keying elements or 

tapee, all as elaborated very full~ in the previous argument and throughout the disclosure of applicant's case. 

P.ef~·ence Examiner's rejection of claime 11 to 16 on the basie 

ot Hebern who, he contends, "shows mechanism tor effecting adjustment of 

the commutators " , the discussion in connection with claims l to 4 above 

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i::- e{;ain pertinent. The explanation offered a.s to the distinction between the fixed, invariable, strictly meter-like mechanism in Hebern 

and the ve.ri~.ble mechanism embodied in e. true cipher-key transmitter 

ae disclosed by applicant is believed to be quite sufficient to differentiate the ~pplicant s invention Fmd claims 11 to 16 from a~thing 

in Hebern. 

The suggestion of the E.'::aminer found in the first para.-

graph, 'Page 2 of the rejection, that " an arbitrary phrase t• ie ueed 

" to designate such mechanism " , ?IIU.St be traversed. Supplemente.l 

to what has been aaid above, attention is called to the repeated use 

of the term "cipher key '' in the Mo:rehou.se patent of record in this ease, 

Here an example is found in the patent art for the terminoloey properly 

used by a;pl)licant. Su.rely, such patents as Vernam end :forehouse will 

serve to confirm what has been said above, and give authority and se.nction for the use by applic11nt of such terms as ''cipher key '~, "cipher 

ke;y tre.nsmi t 1,er " , ~.nd '~cipher key trruismi tter mechanism ~~. Moreover, 

the meaning of these terme in the instant ease is well supported by 

the specification and dr~wings. always keepiyl>G in mi11d that the specif'-

ic~.tion is to be regarded ~s the dietion~ry for the claims in every case. 

!..s to the term neryptogra.ph ~' used to desi!!Jl~.te the ma.china. 

The terminology offio1all;y adovted b;y the War Depa.rtnent in its publications dealing with eryutog:re.pb.y distinguishes between "cryptogram ~, which 

is the sec~et writing or meeeie.ge 1 tself and ncryptographq'j 0 whieh is an 

instrurnentt device, or a~p~ratus producing such ~writing or message. 

These terms are strictly analogous to the terms ntelecra..rn ° and ~~telegra;ph'9 •• 

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REF ID:A521451 

Moreo~r, the Encyclopaedia »ritann1ca, article referred to above, followe this terminology. lt should be recognized that dictionaries are e.e 

a rule unable to keep abreast of advances in highly specialized fields, 

and one must look to the latest texts and current publications for up 

to date terminology. The term ~ used as a noun to doeisna.te a 

Cl"J'Ptogr&pbic device, instrument or lll'Chine is tound only in the ~yclopedia I 

:Britannica of 1929, and in recent texts and publications on cryptography. 

P.eferrine now to the decision in Berardini v. Tocci relied upon by the }:xam:ner in repeatine hie rejection of the method ela.ims 

Number• 26 to 34, it is urged that said case is surely ineuf'fic~ent to 

support the contention that a method of eneipherifl€ Bnd deciphering 18 

not entitled to patent protection ae a true method or mechanical process. 

In the cited case, t~e Court ap~arently went no further than to hold t&a:t: 

in the instR.nce of one of the patents in suit ( No. 889,094 ) that the 

1n'f9ntion, if any, resided in a "ayetem •

1 , or "art " ( using these words 

as more or lees eynonomoue with method or process ) ; but the decision goee 

on to assert that the art or metbod as such w~s not claimed. The claims 

were, in fa.ct, directed to a "code message " and were in that particu.ler 

case held void for l&ek of invention. As just st~ted above, this case ie 

assuredly not to be regarded as a controlling authority to support the 

positionthat no method of enciphering or deciphering is entitled to proteetion ae a. true method. 'l'he Vern.am pa.tent No. 1,416,765 and the Morehouee patent cited in this case r.~o. 1,356,54:6 , a.re both in thie same art 

and both include method claims. 

As to the inclusion of s recital or si:ru.cture in method 

claims, patente of this character are too numeroue to mention. ~~plicant's 

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REF ID:A521451 _,..,: 

position on this point was quite fully discussed in the l~st argument. 

Examples of claims directed to methods of performing particular operations, \)_"))ttf'or methods of manipulating machines, may be cited in 

large number • In many such examples a recital of structure ie neeeese.ry 

to clearness and intelliei bili ty. Sur·ely it must be conceded that the 

inclusion of structural elements in such cases does not vitiate the 

method, nor does it follow that the method steps in such cases are 

merely statements of function of eny given machine. It must be remembered 

in the present case that we have a.n exe..~ple of a method of manipulating 

certain instrumentalities, but obviously these inetrumentalities a.re susceptible of considerable variation so that the essential method steps 

which applicant is seeking to protect in his method claims require e 

certain recit~l of structure for the sske ot clearness but this does not 

preclude the idea of changes and variations in the mechanical instrumentalitiee. In support of a~plicant's contention in this regard, it ie 

desired to add to the record several cases listed as follows: · 

Hazeltine Corp. v. z:naermuth, 34 F.R. (2nd) 635 

Ex pa.rte Ven Klrk. Pat. ''o. l,6EB.796 

Ex pHrte T:dnka, 17 lJ.S. Pai. Q.. 139 , Pat. 1,902,532 

Century Elec. Co. v. Westin0house E. Mfg. Co., 1914 C.D. 267 a 

207 o.G. 1249 ; 191 F.R. 350, Pat. 511,915. 

Reconsideration is requested of claims l to 4, G to 10 end 18, 

also claims 11 to 16 for reasons fully set out i• the foregoing e.rgu:".1snt. 

The criticism of claims 11 to lG on the ground that they include indefinite 

and functional limitations is thought to be entirely unTiarranted since all 

these claims recite ar.:rple etruebre to support eveey functional statement 

there included. Applicant ho.s endeavored in the foregoing argument to show 

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that the phraetng employed to designe.te the cipher key transmitter or 

cipher key tra.nsmitter meehaniem is not in f:\D.1 sense arbitrary. On 

the contrary; the term• are well known in the art and are tully supported 

in the disoloeu.re of this case. 

Claims 17 to 25 ha,ve been amended to overcome the Examiner' e 

objection as to the inferential inclusion of the "connections "• 

The criticisms •ith regard· to claims 10, 21. 22, 23, 2' and 

25 have been dealt with in the foregoing argument. 

It ie believed that there is ample authority for using the 

word. "eryptograph " to design~te the machine, and this point has been 

treated at length in a preceding paragraph. 

Further &nd faYOrable action is courteously. solicited in 

the light or the foregoing. 

Reepecttully submitted, 

Attorne7 

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