Probloch LLCDownload PDFPatent Trials and Appeals BoardSep 1, 20212021001037 (P.T.A.B. Sep. 1, 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. 16/105,138 08/20/2018 Ananth NATARAJAN 62FN-275460 5006 133759 7590 09/01/2021 Sheppard Mullin Richter & Hampton LLP 650 Town Center Drive, 10th Floor Costa Mesa, CA 92626 EXAMINER OUSSIR, EL MEHDI ART UNIT PAPER NUMBER 3685 NOTIFICATION DATE DELIVERY MODE 09/01/2021 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): SheppardMullin_Pair@firsttofile.com dmipdocketing@sheppardmullin.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ANANTH NATARAJAN ____________ Appeal 2021-001037 Application 16/105,138 Technology Center 3600 ____________ Before ANTON W. FETTING, TARA L. HUTCHINGS, and MATTHEW S. MEYERS, Administrative Patent Judges. HUTCHINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1–30. Appellant appeared for oral hearing on July 9, 2021. The record includes a transcript of the oral hearing. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Ananth Natarajan, the inventor, as the real party in interest. Appeal Br. 2. Appeal 2021-001037 Application 16/105,138 2 CLAIMED INVENTION Claims 1 and 13 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A system of implementing multiple blockchains for automated value transfer in a project, the system comprising: one or more physical processors; and a memory configured to store computer program instructions that, when executed by the one or more physical processors, cause the one or more physical processors to: obtain multiple milestones associated with the project, wherein each milestone includes one or more milestone parameters for assessing whether the milestone has been achieved; generate a first blockchain comprising multiple baseline blocks, wherein each of the multiple baseline blocks is associated with at least one of the multiple milestones, and wherein the multiple baseline blocks of the first blockchain have a first common data structure comprising a header that includes a hash of a preceding baseline block in the first blockchain and a smart contract that encodes the one or more milestone parameters for assessing whether the corresponding milestone has been achieved; generate a second blockchain that stores information indicating performance of actions related to the project, wherein the second blockchain includes one or more realized blocks having a second common data structure different than the first common data structure, the second common data structure comprising a header that includes a hash of a preceding realized block in the second blockchain, a hash of a corresponding baseline block of the first blockchain associated with a corresponding milestone, and an indication of a level of achievement of the corresponding milestone; Appeal 2021-001037 Application 16/105,138 3 transmit at least the first blockchain to multiple nodes in a blockchain network, each of the multiple nodes storing a local copy of at least the first blockchain; receive a transaction comprising an identification of the project and an indication that work toward at least a first milestone of the multiple milestones has been performed by a second user; validate the transaction based on a first smart contract of a first baseline block of the multiple baseline blocks, wherein the first baseline block is associated with the first milestone; generate a realized block based on the validated transaction, the realized block including a hash of a preceding realized block of the second blockchain, a hash of a corresponding baseline block of the first blockchain associated with the first milestone, and an indication of a level of achievement of the first milestone; and add the realized block to the second blockchain. Appeal Br. 63–64 (Claims Appendix). REJECTIONS2 Claims 1–30 are rejected under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. Claims 1–3, 11–15, and 18–30 are rejected under 35 U.S.C. § 103 as unpatentable over Knapic (US 2009/0125359 A1, pub. May 14, 2009), and Ramasamy (US 2018/0158162 A1, pub. June 7, 2018).3 2 The Examiner has withdrawn the eligibility and indefiniteness rejections. Ans. 3. 3 We treat the Examiner’s inclusion of claims 4–6, 16, and 17 and omission of claims 19–30 in the rejection heading at page 10 of the Non-Final Office Action as inadvertent error. See Non-Final Act. 10–22 (rejecting claims 1– 3, 11–15, and 18–30 as unpatentable over Knapic and Ramasamy); see also id. at 23–25 (separately rejecting claims 4–6, 16 and 17). Appeal 2021-001037 Application 16/105,138 4 Claim 4–10, 16, and 17 are rejected under 35 U.S.C. § 103 as unpatentable over Knapic, Ramasamy, and Kozloski (US 2018/0189732 A1, pub. July 5, 2018). ANALYSIS Written Description In rejecting claims 1–30 as failing to comply with the written description requirement under 35 U.S.C. § 112, first paragraph, the Examiner takes the position that the claims contain subject matter that was not described in the Specification in such a way to convey that the inventors had possession of the claimed invention at the time of filing. Non-Final Act. 5–6. In particular, the Examiner maintains that the steps of generating a first blockchain and generating a second blockchain, as recited in independent claims 1 and 13, lack adequate support in the Specification. Id. However, we agree with Appellant that at least paragraphs 43–53 of the Specification reasonably convey to those skilled in the art that Appellant was in possession of the invention at the time of filing. Appeal Br. 16–17. In particular, those portions of the Specification disclose a first blockchain (baseline blockchain 3) formed of multiple baseline blocks 3A–N. Spec. ¶ 44; see also id. at Fig. 1. Consistent with conventional blockchain technology, each of the multiple baseline blocks include a header having a hash pointer to a preceding block. See Spec. ¶ 44; see also id. at Fig. 1. The claimed invention associates each baseline block 3 with one or more milestone parameters and a smart contract that evaluates performance of the milestone. See id. ¶ 45. A second blockchain (realized blockchain 4) is formed of multiple realized blocks 5A–N. Id. ¶ 51; see also id. at Fig. 1. Appeal 2021-001037 Application 16/105,138 5 Consistent with conventional blockchain technology, each realized block 5 in realized blockchain 4 includes a header having a hash pointer to a preceding realized block. Id. However, unlike typical blocks in a blockchain, each realized block 5 additionally stores a hash of a corresponding baseline block 3. Id. ¶ 52. Because each baseline block encodes a milestone, storing a hash to a corresponding baseline block in the header of a realized block results in associating the realized block with a corresponding milestone. Id. Each realized block 5 also securely encodes a level of achievement of the corresponding milestone. Id. ¶ 53. The Examiner maintains that the rejection of claims 1–30 under 35 U.S.C. § 112(a) is proper because “the [S]pecification discloses using blockchain[;] however, there is not [sic] recitation of a first generation of a first blockchain and a second blockchain wherein each of the first and second blockchains are based on different criteria[,]” as required by independent claims 1 and 13. Non-Final Act. 6. In the Answer, the Examiner further explains that “the terminology utilized in the claims is not the same as what is disclosed in the [S]pecification. The claims recite a first blockchain and a second blockchain[;] however, the Specification recites a baseline blockchain and a realized blockchain.” Ans. 5. Although the Specification does not provide in haec verba support for the claimed subject matter at issue, we agree with Appellant that the Specification conveys with reasonably clarity that the inventor was in possession of the claimed subject matter at the time of filing. See Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (“In order to satisfy the written description requirement, the disclosure as originally filed does not have to provide in haec verba support for the claimed subject matter at issue. Nonetheless, the Appeal 2021-001037 Application 16/105,138 6 disclosure must . . . convey with reasonable clarity to those skilled in the art that . . . [the inventor] was in possession of the invention.” (alterations in original) (citations omitted)). In the Answer, the Examiner interprets the step of “generate a second blockchain,” as recited in claim 1 and similarly recited in claim 13, to require generating an “entire blockchain from ‘start’ to ‘end.’” Ans. 7. Based on this interpretation, the Examiner reasons that it is impossible to add a realized block to the second blockchain, as required by claims 1 and 13, because the second blockchain has already been generated. Id. 8; see also id. at 6–8. However, we agree with Appellant that one of ordinary skill would understand that the step of generating requires generating an initial or genesis block that subsequent blocks are appended to and does not require generating an entire blockchain from start to end at once. Reply Br. 8. Our understanding is consistent with conventional blockchain technology, as well as Appellant’s Specification. For example, paragraphs 88 and 99 of the Specification describe that the initial blocks of the baseline blockchain and the realized blockchain do not have a hash pointer to a preceding block, but the other blocks in each chain do. Accordingly, we do not sustain the rejection of independent claims 1 and 13 and their dependent claims under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. Appeal 2021-001037 Application 16/105,138 7 Obviousness Independent Claims 1 and 13, and Dependent Claims 2, 3, 11, 12, 14, 15, and 18–30 We are persuaded by Appellant’s arguments that the Examiner erred in rejecting independent claims 1 and 13 under 35 U.S.C. § 103 because the combination of Knapic and Ramasamy does not teach or suggest at least: generate a second blockchain that . . . includes one or more realized blocks having a second common data structure different than the first common data structure, the second common data structure comprising a header that includes a hash of a preceding realized block in the second blockchain, a hash of a corresponding baseline block of the first blockchain associated with a corresponding milestone, and an indication of a level of achievement of the corresponding milestone[,] as recited in claim 1, and similarly recited in claim 13. The Examiner relies on Knapic for teaching integrating a methodology management system with a project management system. Ans. 9–10; see also Non-Final Act. 10. The Examiner acknowledges that Knapic does not disclose “performance of the project management on a blockchain,” and relies on Ramasamy to teach “the generation of the blockchains and the generation of a single block in the blokchain (sic).” Ans. 10; see also Non-Final Act. 11 (citing Ramasamy ¶¶ 66, 105, 151–53, 157, 159, Abstract, Figs. 1, 7–9, 10, “and all related text”). However, Ramasamy teaches using a single blockchain. For example, Ramasamy describes a bitcoin embodiment in which a blockchain involves transactions linked as blocks. See Ramasamy ¶¶ 158, 159, Fig. 10. We agree with Appellant that Ramasamy’s disclosure of an embodiment using blockchain does not teach or suggest the claimed second blockchain that includes realized blocks having a second common data structure different Appeal 2021-001037 Application 16/105,138 8 than the first common data structure that comprises a header including a hash of a preceding realized block in the second blockchain and a hash of a corresponding baseline block of the first blockchain, as required by claims 1 and 13. Appeal Br. 48–50; see also Reply Br. 9–15. In the Answer, the Examiner contends that the generation “of multiple blockchains amounts to mere duplication.” Ans. 10–11. The difficulty with the Examiner’s reasoning, however, is that the claimed first and second blockchains comprise blocks having different common data structures. Duplicating the first blockchain fails to teach the claimed second blockchain that includes blocks having a header that includes not only a hash of a preceding realized block in the second blockchain, but also a hash of a corresponding baseline block in the first blockchain). Therefore, we do not sustain the rejection under 35 U.S.C. § 103 of independent claims 1 and 13 and dependent claims 2, 3, 11, 12, 14, 15, and 18–30. Dependent Claims 4–10, 16, and 17 The Examiner’s rejection of claims 4–10, 16, and 17 does not cure the deficiency in the rejection of independent claims 1 and 13. Therefore, we do not sustain the Examiner’s rejection of claims 4–10, 16, and 17 under 35 U.S.C. § 103. Appeal 2021-001037 Application 16/105,138 9 CONCLUSION In summary: Claims Rejected 35 U.S.C. § References/Basis Affirmed Reversed 1–30 112(a) Written Description 1–30 1–3, 11– 15, 18–30 103 Knapic, Ramasamy 1–3, 11– 15, 18–30 4–10, 16, 17 103 Knapic, Ramasamy, Kozloski 4–10, 16, 17 Overall Outcome 1–30 REVERSED Copy with citationCopy as parenthetical citation