Probloch LLC

Patent Trials and Appeals Board

Sep 1, 2021

2021001037 (P.T.A.B. Sep. 1, 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.
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.
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Application 16/105,138

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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;
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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).
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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.
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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
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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.

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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
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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.

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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