NEC Europe Ltd.Download PDFPatent Trials and Appeals BoardMar 5, 20212019005209 (P.T.A.B. Mar. 5, 2021) Copy Citation 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. Appeal 2019-005209 Application 15/281,236 2 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: Appeal 2019-005209 Application 15/281,236 3 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. Appeal 2019-005209 Application 15/281,236 4 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 Appeal 2019-005209 Application 15/281,236 5 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 Appeal 2019-005209 Application 15/281,236 6 [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 Appeal 2019-005209 Application 15/281,236 7 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 Appeal 2019-005209 Application 15/281,236 8 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. Appeal 2019-005209 Application 15/281,236 9 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. Appeal 2019-005209 Application 15/281,236 10 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 Appeal 2019-005209 Application 15/281,236 11 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 Appeal 2019-005209 Application 15/281,236 12 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. Appeal 2019-005209 Application 15/281,236 13 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 Appeal 2019-005209 Application 15/281,236 14 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 Copy with citationCopy as parenthetical citation