NEC Europe Ltd.

Patent Trials and Appeals Board

Mar 5, 2021

2019005209 (P.T.A.B. Mar. 5, 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.
15/281,236 09/30/2016 Ghassan Karame 815471 5973
95683 7590 03/05/2021
Leydig, Voit & Mayer, Ltd. (Frankfurt office)
Two Prudential Plaza, Suite 4900
180 North Stetson Avenue
Chicago, IL 60601-6731
EXAMINER
KABIR, JAHANGIR
ART UNIT PAPER NUMBER
2439
NOTIFICATION DATE DELIVERY MODE
03/05/2021 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):
chgpatent@leydig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GHASSAN KARAME, DAMIAN GRUBER, and
WENTING LI
Appeal 2019-005209
Application 15/281,236
Technology Center 2400
Before ROBERT E. NAPPI, JENNIFER L. McKEOWN, and
MATTHEW J. McNEILL, Administrative Patent Judges.

MCKEOWN, 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 1–17. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as NEC
LABORATORIES EUROPE GMBH. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The claims are directed to “a method and system for use in
interactions between full nodes and light clients in blockchain
implementations.” Spec. ¶ 1.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method of providing a transaction forwarding
service in a blockchain, the method comprising:
e) executing a smart contract in the blockchain so as to
determine whether a respective full node is eligible to execute
the smart contract, the smart contract specifying eligible full
nodes, a filter of a respective light client and a reward for
executing the smart contract;
f) forwarding, by the respective full node, data relating to
a transaction that matches the filter of the respective light client
to the respective light client with a proof that the transaction is
included in the blockchain;
g) receiving, by the respective full node, a signed
acknowledgement from the respective light client verifying the
transaction; and
h) claiming, by the respective full node, the reward using
the acknowledgement.
REFERENCES
The prior art relied upon by the Examiner is:
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Name Reference Date
Smith US 2015/0379510 A1 Dec. 31, 2015
Back US 2016/0330034 A1 Nov. 10, 2016
Scott US 2017/0017958 A1 Jan. 19, 2017
Middleton US 2017/0187535 A1 June 29, 2017
Vilmont US 2017/0200137 A1 July 13, 2017
Pierce US 2018/0005318 A1 Jan. 4, 2018
REJECTIONS
The Examiner rejected claims 1–17 under 35 U.S.C. § 101 as directed
to non-statutory subject matter. Final Act. 8–11.
The Examiner rejected claims 1, 9, and 15 under 35 U.S.C. § 102 as
anticipated by Middleton. Final Act. 11–13.
The Examiner rejected claims 2, 3, 10, and 11 under 35 U.S.C. § 103
as unpatentable over Middleton and Smith. Final Act. 14–15.
The Examiner rejected claims 4 and 12 under 35 U.S.C. § 103 as
unpatentable over Middleton, Smith, and Back. Final Act. 16.
The Examiner rejected claims 5, 6, and 13 under 35 U.S.C. § 103 as
unpatentable over Middleton and Back. Final Act. 17–18.
The Examiner rejected claims 7 and 14 under 35 U.S.C. § 103 as
unpatentable over Middleton and Pierce. Final Act. 18–19.
The Examiner rejected claim 8 under 35 U.S.C. § 103 as unpatentable
over Middleton and Scott. Final Act. 19–20.
The Examiner rejected claims 16 and 17 under 35 U.S.C. § 103 as
unpatentable over Middleton and Vilmont. Final Act. 20–21.

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OPINION
THE § 101 REJECTION
Claims 1–17
Based on the record before us, we are not persuaded that the Examiner
erred in rejecting claims 1–17 as directed to patent-ineligible subject matter.
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014) (citation omitted).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with
that framework, we first determine what concept the claim is “directed to.”
See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to
the concept of intermediated settlement, i.e., the use of a third party to
mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611
(2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept
of hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
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determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment.”
Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace
that an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim
that recites an abstract idea must include ‘additional features’ to ensure ‘that
the [claim] is more than a drafting effort designed to monopolize the
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[abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing]
generic computer implementation[] fail[s] to transform that abstract idea into
a patent-eligible invention.” Id.
The PTO published revised guidance on the application of section
101. USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under that guidance, we first
look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing human
activity such as a fundamental economic practice, or mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MANUAL OF PATENT EXAMINING
PROCEDURE (MPEP) § 2106.05(a)–(c), (e)–(h) (9th ed., Jan. 2019)).
See Guidance, 84 Fed. Reg. at 52, 55–56. Only if a claim (1) recites a
judicial exception and (2) does not integrate that exception into a practical
application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that are not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception.
See Guidance, 84 Fed. Reg. at 56.
Analysis – Revised Step 2A
Under the Guidance, in prong one of step 2A we look to whether the
claim recites a judicial exception. The claim invention recites a method of
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providing a transaction forwarding service in a blockchain including the
steps of “executing a smart contract in the blockchain so as to determine
whether a respective full node is eligible to execute the smart contract, the
smart contract specifying eligible full nodes, a filter of a respective light
client and a reward for executing the smart contract”; “forwarding . . . data
relating to a transaction that matches the filter of the respective light client. .
. with a proof that the transaction is included in the blockchain”; “receiving .
. . a signed acknowledgement from the respective light client verifying the
transaction”; and “claiming . . . the reward using the acknowledgement.”
When considered collectively, the claimed invention executes a smart
contract in a blockchain, forwards data relating to a transaction, receives an
acknowledgement verifying the transaction, and claims a reward using the
acknowledgement.
The Examiner determines the claimed invention recites certain
methods of organizing human activity, which is an abstract idea. Final Act.
3. Namely, the Examiner identifies that the claimed invention includes
“commercial or legal interactions including agreements in the form of
contracts.” Ans. 3.
We agree that the claimed invention includes a commercial or legal
interaction. Namely, the steps of executing a smart contract, forwarding
data that proves a transaction is included in the blockchain, and receiving a
reward, or in other words providing a reward for a forwarding service in a
blockchain, is a commercial or legal interaction transaction. See also Spec.
¶ 6 (“[T]he present invention provides a method of providing a transaction
forwarding service in a blockchain.”); Spec. ¶ 11 (“This platform also
ensures fair payment of the service provided by the full nodes in a manner
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which helps to prevent DoS attacks to the full nodes as well as free-riders.”).
The claimed invention, thus, recites certain methods of organizing human
activity, which is an abstract idea. See, e.g., cxLoyalty, Inc. v. Maritz
Holdings Inc., 986 F.3d 1367 (Fed. Cir. 2021) (finding ineligible claims
directed to facilitating or brokering a commercial transaction); Credit
Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1054–56 (Fed. Cir.
2017) (holding claims directed to “a system for maintaining a database of
information about the items in a dealer’s inventory, obtaining financial
information about a customer from a user, combining these two sources of
information to create a financing package for each of the inventoried items,
and presenting the financing packages to the user” were directed to an
abstract idea.).
Appellant argues that the Examiner overgeneralizes the claimed
invention “to say that it is merely directed to a method of organizing human
activity, at least because this ignores core blockchain technology that is
beyond the ability of humans to perform alone. . . .” Appeal Br. 8 (citing
Spec. 13). The Examiner, however, identifies the claimed invention as
certain methods of organizing human activity, not a mental process. Final
Act. 8; see also Guidance, 84 Fed. Reg. at 52.
Because we conclude claims 1-16 recite certain methods of organizing
human activity, which is an abstract idea, we proceed to Step 2A, Prong 2 of
the Guidance to determine whether the claimed invention is “directed to” the
judicial exception, by determining whether additional elements of the claim
integrate the abstract idea into a practical application. Such additional
elements may reflect an improvement to a technology or technical field. See
Guidance, 84 Fed. Reg. at 55.
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The claimed invention here additionally recites a light node and
respective full node as well as forwarding and receiving data. We are not
persuaded that the additional limitations alone or in combination integrate
the claimed abstract idea into a practical application.
As a whole, these additional limitations, such as a light node and
respective full node, merely link the claimed concept to the technological
environment of distributed computing. See, e.g., MPEP § 2106.05(h);
Affinity Labs of Texas v. DirecTV, LLC, 838 F.3d 1253 (Fed. Cir. 2016). As
the Examiner points out, these “are generic computing devices/embodiments
performing generic computing functions used in data processing.” Final
Act. 9; Ans. 5. Moreover, we note that the steps of receiving and
transmitting data are insignificant extra-solution activity. See, e.g., MPEP
§ 2106.05(g); Flook, 437 U.S. at 590 (holding that the step of adjusting an
alarm limit based on the output of a mathematical formula was “postsolution
activity” and did not render method patent eligible); OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (collecting and
analyzing data amounted to mere data gathering).
Appellant argues that the claimed invention is integrated into a
practical application because the claimed invention provides a technical
improvement. Appeal Br. 9–10. For example, Appellant maintains that the
claimed invention “enhances security, a light client’s utilization of the
system, a light client’s privacy, and a full nodes effective contribution of
computational resources.” Id. Appellant additionally asserts that “the
unique computer protocols implemented by the ‘smart contract’” integrate
the claimed invention into a practical application. Reply Br. 4–5.
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We disagree. The alleged improvements, discussed in paragraphs 12–
13, are not technical improvements to blockchain implementations. Unlike
the claims at issue in cases such as DDR Holdings LLC v Hotels.com LP,
773 F.3d 1245, 1257 (Fed. Cir. 2014) (claims at issue are “necessarily rooted
in computer technology in order to overcome a problem specifically arising
in the realm of computer networks”) and Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327, 1339 (Fed. Cir. 2016) (claims at issue are “directed to a
specific implementation of a solution to a problem in the software arts”),
Appellant merely addresses a business/privacy issue through the use of
generic, computer-related recitations that do not add meaningful limitations
to steps otherwise directed to an abstract idea. See, e.g., Spec. ¶ 1 (“The
present invention relates to a method and system for use in interactions
between full nodes and light clients in blockchain implementations”); ¶ 3
(noting the use of filters in conventional blockchain implementation); ¶ 11
(noting private and flexible forwarding servicing for light clients and
ensuring fair payment for full nodes).
As such, based on the record before us, we determine that the judicial
exceptions recited in the claimed invention are not integrated into a practical
application.
Analysis – Revised Step 2B
Under step 2B, we determine that the claimed invention does not add
significantly more to the abstract idea. As noted above, Appellant argues
that the claimed invention improves an existing technological process.
Appeal Br. 9–10. According to Appellant, the claimed invention improves
“the technical field of computer-based blockchain distributed database
systems that enhances security, and a light client’s privacy and support by
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full nodes, which amounts to significantly more than an abstract idea.” Id.
(citing Spec. ¶¶ 12–13.).
We find this argument unpersuasive. As the Examiner identifies, and
discussed above, the claimed invention is merely instructions to implement
the abstract idea on a computer and require no more than a generic computer
to perform generic computer functions that are well-understood, routine, and
conventional activities previously known to the industry. Ans. 5–6. See
also Alice, 573 U.S. at 225 (finding that computer functions, such as
electronic recording keep and “obtain[ing] data, adjust[ing] account
balances, and issu[ing] automated instructions; all of these computer
functions are ‘well-understood, routine, conventional’”); Content Extraction
& Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347
(Fed. Cir. 2014) (discussing that data collection, recognition, and storage is
well-known). As such, we are not persuaded of error in the Examiner’s
determination.
Accordingly, based on the record before us, we affirm the rejection of
claims 1–17 as directed to patent-ineligible subject matter.

THE ANTICIPATION REJECTION BASED ON MIDDLETON
Claims 1, 9, and 15
Appellant argues that Middleton fails to teach or suggest a “smart
contract specifying eligible full nodes, a filter of a respective light client and
a reward for executing the smart contract,” as required by the claims.
Appeal Br. 13. For example, Appellant contends that “[n]owhere does
Middleton, however mention encoding known entities into the alleged smart
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contract (Middleton’s transaction record) or that a node executes the alleged
smart contract to determine if it is an eligible full node.” Id.
Middleton describes a system including mining a record keeping
service. Middleton explains that “miners keep the block chain consistent,
complete, and unalterable by repeatedly verifying and collecting newly
broadcast transactions into a new group of transactions” called blocks.
Middleton ¶ 21. When a miner finds a new block, the miner may be
rewarded with bitcoins and transaction fees. Middleton ¶ 24. According to
the Examiner, “the actions of transmitting to known network participants
[teaches] executing a smart contract to determine specified eligible full
nodes.” Ans. 9. Further, the Examiner determines that the executing
limitation is intended use. Id.
We disagree. The Specification explains that the claimed smart
contract identifies whether a full node is eligible to execute the smart
contract. Spec. ¶ 16. For example, the Specification describes
The smart contract SC assigns full nodes FN to light
clients LC. In other words, the smart contract SC can be made to
specify which full nodes FN are allowed to serve which light
clients LC. Full nodes FN pre-process the blockchain for light
clients LC, using the filters which can also be specified in the
smart contrast by the light clients LC.
Id. Middleton’s transmitting a transaction record to known participate is
insufficient to teach executing a smart contract in the blockchain so as to
determine whether a respective full node is eligible to execute the smart
contract, the smart contract specifying eligible full nodes, a filter of a
respective light client and a reward for executing the smart contract, as
required by the claims. As such, we are persuaded of error in the
Examiner’s anticipation rejection.
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Accordingly, we reverse the rejection of claims 1, 9, and 15 as
anticipated by Middleton.

THE OBVIOUSNESS REJECTIONS
Claims 2–8, 10–14, 16, and 17
Claims 2–8, 10–14, 16, and 17 depend from one of independent
claims 1, 9, and 15. As discussed above, we are persuaded the Examiner
erred in rejecting claims 1, 9, and 15 as anticipated by Middleton. The
additionally cited prior art do not cure the deficiencies of Middleton. As
such, we are also persuaded that the Examiner erred in finding claims 2–8,
10–14, 16, and 17 obvious and, accordingly, reverse these rejections.

CONCLUSION
The Examiner’s rejection of claims 1–17 under 35 U.S.C. 101 as
directed to non-statutory subject matter is affirmed, but the Examiner’s
anticipation and obviousness rejections are reversed.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–17 101 Eligibility 1–17
1, 9, 15 102 Middleton 1, 9, 15
2, 3, 10, 11 103 Middleton, Smith, 2, 3, 10, 11
4, 12 103 Middleton, Smith,
Back
4, 12
5, 6, 13 103 Middleton, Back 5, 6, 13
7, 14 103 Middleton, Pierce 7, 14
8 103 Middleton, Scott 8
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16, 17 103 Middleton,
Vilmont
16, 17
Overall
Outcome
1–17

TIME PERIOD FOR 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