Vijay Madisetti et al.

Patent Trials and Appeals Board

Aug 16, 2021

2020004917 (P.T.A.B. Aug. 16, 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.
15/896,206 02/14/2018 Vijay K. Madisetti 3026.00005 7612
39682 7590 08/16/2021
Widerman Malek, PL
1990 W. New Haven Avenue, Suite 201
Melbourne, FL 32904
EXAMINER
NIGH, JAMES D
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
08/16/2021 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):
Docket@USLegalTeam.com
Michelle@USLegalTeam.com
patentdocket@uslegalteam.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte VIJAY K. MADISETTI, ARSHDEEP BAHGA,
JAE KIM, and AVINASH RAO
____________

Appeal 2020-004917
Application 15/896,206
Technology Center 3600
____________

Before HUBERT C. LORIN, NINA L. MEDLOCK, and
MATTHEW S. MEYERS, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–6, 9–13, and 15–23. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Our decision references Appellant’s Appeal Brief
(“Appeal Br.,” filed February 11, 2020) and Reply Brief (“Reply Br.,” filed
June 15, 2020), and the Examiner’s Answer (“Ans.,” mailed April 17, 2020)
and Final Office Action (“Final Act.,” mailed October 10, 2019). Appellant
identifies Vijay Madisetti as the real party in interest (Appeal Br. 4).
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CLAIMED INVENTION
The Specification states, “[t]he present invention relates to
blockchain-based diamond ownership, identity, custody, supply-chain
transfer, trading and secure payments” (Spec. ¶ 2).
Claims 1 and 22 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A method of issuing blockchain-based digital certificates
associated with a rough gemstone and cut gemstones derived
therefrom, comprising:
[(a)] receiving from a first user a plurality of rough
gemstone records, each record of the plurality of rough gemstone
records comprising a characteristic indicator associated with a
rough gemstone;
[(b)] receiving from the first user meta-information
related to the plurality of rough gemstone records;
[(c)] applying, using a processor, a hashing function to
each record of the plurality of rough gemstone records,
generating a plurality of fingerprints;
[(d)] generating a hash tree from the plurality of
fingerprints, the hash tree comprising a root hash;
[(e)] recording to a digital certificate gemstone smart
contract deployed at a digital certificate gemstone smart contract
address on a first blockchain network the root hash and the
received meta-information;
[(f)] signing the digital certificate gemstone smart
contract with an issuer signature;
[(g)] generating a combination certificate configured to
be shared by the first user to verify the first user’s ownership of
the rough gemstone associated with the plurality of rough
gemstone records;
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[(h)] receiving from a second user a hashed second user
identification information associated with the second user and a
plurality of records of derivative gemstones, defined as
derivative gemstone records, each derivative gemstone record
being associated with a gemstone that is derived from cutting a
rough gemstone associated with a rough gemstone record of the
plurality of rough gemstone records;
[(i)] receiving from the second user derivative meta-
information related to the plurality of derivative gemstone
records;
[(j)] applying, using the processor, a hashing function to
each record of the plurality of derivative gemstone records,
generating a plurality of derivative fingerprints;
[(k)] generating a derivative hash tree from the plurality
of derivative fingerprints, the derivative hash tree comprising a
derivative root hash;
[(l)] recording to a second digital gemstone certificate
smart contract deployed at a second digital certificate gemstone
smart contract address on a second blockchain network
comprising the hashed second user identification information,
the derivative root hash, and the derivative meta information;
[(m)] signing the second digital certificate gemstone
smart contract on the second blockchain network with the issuer
signature; and
[(n)] generating a second combination certificate
configured to be shared by the second user to verify the second
user’s ownership of the derivative gemstone.
REJECTIONS
Claims 1–6, 9–13, and 15–23 are rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.
Claims 22 and 23 are rejected under 35 U.S.C. § 112(b) as indefinite
for failing to particularly point out and distinctly claim the subject matter
that the inventors regard as the invention.
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Claims 1–6, 9–13, 15–18, and 21–23 are rejected under 35 U.S.C.
§ 103 as unpatentable over Moss-Pultz et al. (US 2016/0300234 A1,
published Oct. 13, 2016) (“Moss-Pultz”), Shaan Mulchandani, Where can
blockchain add value? (August 31, 2017) (available at
https://betanews.com/2017/08/31/blockchain-value) (“Mulchandani”),
Sivovolenko (US 2010/0250201 A1, published Sept. 30, 2010), and
Chris Skinner, The heart of the blockchain use case: digital proof
(Everledger case study) (January 2016) (available at
https://thefinanser.com/2016/01/the-heart-of-the-blockchain-use-case-
digital-proof.html) (“Skinner”).
Claims 19 and 20 are rejected under 35 U.S.C. § 103 as unpatentable
over Moss-Pultz, Mulchandani, Sivovolenko, Skinner, and Westlind et al.
(US 2017/0028622 A1, published Feb. 2, 2017) (“Westlind”).
ANALYSIS
Patent-Ineligible Subject Matter
Appellant argues claims 1–6, 9–13, and 15–23 as a group (Appeal
Br. 8–10). We select independent claim 1 as representative. Claims 2–6,
9–13, and 15–23 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
Under 35 U.S.C. § 101, a claim is patent eligible if it claims a “new
and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[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).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
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Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’”
to determine whether there are additional elements that “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 79, 78). This is “a search for an ‘inventive concept’ — i.e., an
element or combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Id. at 217–18 (alteration in original).
The U.S. Patent and Trademark Office (the “USPTO”) published
revised guidance on January 7, 2019, for use by USPTO personnel in
evaluating subject matter eligibility under 35 U.S.C. § 101. 2019 REVISED
PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 57
(Jan. 7, 2019) (the “2019 Revised Guidance”).2 That guidance revised the
USPTO’s examination procedure with respect to the first step of the
Mayo/Alice framework by (1) “[p]roviding groupings of subject matter that
[are] considered an abstract idea”; and (2) clarifying that a claim is not

2 The MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) incorporates
the revised guidance and subsequent updates at Section 2106 (9th ed.
Rev. 10.2019, rev. June 2020).
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“directed to” a judicial exception if the judicial exception is integrated into a
practical application of that exception. Id. at 50.
The first step, as set forth in the 2019 Revised Guidance (i.e.,
Step 2A), is, thus, a two-prong test. In Step 2A, Prong One, we look to
whether the claim recites a judicial exception, e.g., one of the following
three groupings of abstract ideas: (1) mathematical concepts; (2) certain
methods of organizing human activity, e.g., fundamental economic
principles or practices, commercial or legal interactions; and (3) mental
processes. 2019 Revised Guidance, 84 Fed. Reg. at 54. If so, we next
determine, in Step 2A, Prong Two, whether the claim as a whole integrates
the recited judicial exception into a practical application, i.e., whether the
additional elements recited in the claim beyond the judicial exception, apply,
rely on, or use the judicial exception in a manner that imposes a meaningful
limit on the judicial exception, such that the claim is more than a drafting
effort designed to monopolize the judicial exception. Id. at 54–55. Only if
the claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application do we conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea. Id.
If the claim is determined to be directed to a judicial exception under
revised Step 2A, we next evaluate the additional elements, individually and
in combination, in Step 2B, to determine whether they provide an inventive
concept, i.e., whether the additional elements or combination of elements
amounts to significantly more than the judicial exception itself. Only then,
is the claim patent eligible. 2019 Revised Guidance, 84 Fed. Reg. at 56.
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Here, the Examiner determined that independent claim 1 recites
receiving records, receiving meta-information relating to the
records, applying a hashing function to the records which yields
a plurality of fingerprints, generating a hash tree from the
plurality of fingerprints comprising a root hash, recording the
root hash to a digital certificate, signing the digital certificate,
generating a combination certificate, receiving derivative
gemstone records, receiving derivative meta-information,
applying a hashing function, generating a derivative hash tree,
recording the derivative root hash and derivative meta-
information, signing the second digital certificate and generating
a second combination certificate[,]
which the Examiner concluded is a method of “organizing human activity
involving legal interactions” (Final Act. 10). The Examiner also determined
that the recited abstract idea is not integrated into a practical application; that
claim 1 does not include additional elements sufficient to amount to
significantly more than the abstract idea itself; and that dependent
claims 2–6, 9–13, and 15–21 are patent ineligible for substantially the same
reasons (id. at 10–14).
Further, separately addressing independent claim 22, the Examiner
determined that claim 22, and claim 23, which depends from claim 22, are
patent ineligible for reasons substantially similar to the reasons set forth with
respect with respect to claim 1 (Final Act. 14–20).
Step One of the Mayo/Alice Framework (2019 Revised Guidance, Step 2A)
We are not persuaded by Appellant’s argument that the Examiner
erred in determining that claim 1 is directed to an abstract idea (Appeal
Br. 8). The Federal Circuit has explained that “the ‘directed to’ inquiry
applies a stage-one filter to claims, considered in light of the specification,
based on whether ‘their character as a whole is directed to excluded subject
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matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir.
2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a
specific improvement in relevant technology or on a process that itself
qualifies as an “abstract idea” for which computers are invoked merely as a
tool. See id. at 1335–36. Here, it is clear from the Specification (including
the claim language) that claim 1 focuses on an abstract idea, and not on an
improvement to technology and/or a technical field.
The Specification is titled “METHOD AND SYSTEM FOR
BLOCKCHAIN-BASED GEMSTONE OWNERSHIP, IDENTITY,
CUSTODY, SUPPLY-CHAIN TRANSFER, TRADING, AND SECURE
PAYMENTS,” and describes, in the Background section, that a
“[b]lockchain is a distributed and public ledger which maintains records of
all the transactions” (Spec. ¶ 3). The Specification describes a “blockchain
network” as “a truly peer-to-peer network” that “does not require a trusted
central authority or intermediaries to authenticate or to settle the transactions
or to control the network infrastructure,” and explains that users interact and
transact with blockchain networks through Externally Owned Accounts,
which are owned and controlled by the users (id.).
According to the Specification, a problem with existing blockchain
platforms is that they lack identity management beyond the blockchain
accounts, and there is no way to know if two blockchain accounts belong to
the same person; as such, “[b]lockchain applications can be prone to Sybil
attacks where the attacker can create a large number of pseudonymous
identities and then use them to gain a large influence on the network”
(Spec. ¶ 7). The Specification describes that proof-of-existence approaches
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based on blockchain technology allow generating ownership certificates for
digital objects; but again, there is no way to securely link the ownership of a
digital object to a verified user, prevent a user from using pseudonymous
identities, or determine a timeline of ownership and custody of digital
objects (id. ¶ 8).
The claimed invention is ostensibly intended to address these issues in
the context of the diamond industry,3 by providing a method that
“increas[es] confidence of ownership of a particular gemstone over existing
blockchain-implementations of ownership by improving association of a
blockchain certificate to a particular gemstone and by improving confidence
in a purported owner’s contention of ownership” (Spec. ¶ 10) (underlining
omitted). The Specification, thus, describes that “[a]n embodiment of the
invention provides a system and associated methods for issuing blockchain-
based digital certificates[,] which serve as combined Proofs of Existence,
Ownership, Custody[,] and Integrity of documents or objects (digital or
physical), defined as a combination certificate” (id. ¶ 122).
The combination certificate generation process is illustrated in
Figure 17, and involves a user 1052, who is the owner or custodian of a
document or object 1050; an issuer 1054, who issues the blockchain-based
digital certificate; and a blockchain network 1056, on which smart contracts
for issuing and recording digital certificates are deployed (Spec. ¶ 122). As
shown in the figure, the process begins, in step 1062, with user 1052 sharing

3 The Specification describes that “[t]he diamond industry, and gemstone
industry more generally, focus area of this invention falls into (at least) the
following 3 phases”: (1) ROUGH DIAMOND; (2) DIAMOND
PROCESSING; and (3) POLISHED TRADING (Spec. ¶ 9).
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user and document/object identification details with issuer 1054 (id.).
Issuer 1054, in step 1064, records the user identifier, object identifier,
timestamp and, optionally, a location of the user, in a smart contract
deployed on blockchain network 1056, and creates a combination
certificate 1080 (id.). Combination certificate 1080 is sent by issuer 1054 to
user 1052 in step 1066 (id.); user 1052, in step 1068, can then share
combination certificate 1080 with a third party consumer 1058, who can
have combination certificate 1080 verified by a verification authority 1060
(id.). Verification authority 1060 may be the same institution as issuer 1054
or a third party (id.). Consumer 1058 forwards combination certificate 1080
to verification authority 1060 in step 1070, which looks up combination
certificate 1080 on blockchain network 1056 and verifies the certificate’s
integrity, authenticity, and validity in step 1072 (id.). A verification
response then is sent back to consumer 1058 in step 1074 (id.).
Consistent with this disclosure, claim 1 recites a method of issuing
blockchain-based digital certificates associated with a rough gemstone and
cut gemstones derived from the rough gemstone comprising: (1) receiving,
from a first user, records associated with a plurality of rough gemstones, and
meta-information related to the rough gemstone records, i.e., “receiving
from a first user a plurality of rough gemstone records, each record of the
plurality of rough gemstone records comprising a characteristic indicator
associated with a rough gemstone” and “receiving from the first user meta-
information related to the plurality of rough gemstone records” (steps (a) and
(b)); (2) applying a hash function to generate a fingerprint for each rough
gemstone record and generating a hash tree from each fingerprint, i.e.,
“applying, using a processor, a hashing function to each record of the
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plurality of rough gemstone records, generating a plurality of fingerprints”
and “generating a hash tree from the plurality of fingerprints, the hash tree
comprising a root hash” (steps (c) and(d)); (3) recording an issuer-signed
certificate comprising the fingerprint and meta-information for each rough
gemstone record to a first blockchain network, and generating a combination
certificate to demonstrate the first user’s ownership of the rough gemstones,
i.e.,
recording to a digital certificate gemstone smart contract
deployed at a digital certificate gemstone smart contract address
on a first blockchain network the root hash and the received
meta-information; [and]
signing the digital certificate gemstone smart contract with
an issuer signature;
generating a combination certificate configured to be
shared by the first user to verify the first user’s ownership of the
rough gemstone associated with the plurality of rough gemstone
records
(steps (e), (f), and (g)); (4) receiving, from a second user, records associated
with a plurality of derivative gemstones that may be derived from cutting the
rough gemstones, and meta-information regarding the derivative gemstone
records, i.e.,
receiving from a second user a hashed second user
identification information associated with the second user and a
plurality of records of derivative gemstones, defined as
derivative gemstone records, each derivative gemstone record
being associated with a gemstone that is derived from cutting a
rough gemstone associated with a rough gemstone record of the
plurality of rough gemstone records; [and]
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receiving from the second user derivative meta-
information related to the plurality of derivative gemstone
records
(steps (h) and (i)); (5) applying a hash function to generate a derivative
fingerprint for each derivative gemstone record and generating a hash tree
from each derivative fingerprint, i.e., “applying, using the processor, a
hashing function to each record of the plurality of derivative gemstone
records, generating a plurality of derivative fingerprints” and “generating a
derivative hash tree from the plurality of derivative fingerprints, the
derivative hash tree comprising a derivative root hash” (steps (j) and (k));
and (6) recording an issuer-signed certificate comprising the fingerprint and
meta-information for each derivative gemstone record to a second
blockchain network, and generating a combination certificate to demonstrate
the second user’s ownership of the derivative gemstones, i.e.,
recording to a second digital gemstone certificate smart
contract deployed at a second digital certificate gemstone smart
contract address on a second blockchain network comprising the
hashed second user identification information, the derivative root
hash, and the derivative meta information;
signing the second digital certificate gemstone smart
contract on the second blockchain network with the issuer
signature; and
generating a second combination certificate configured to
be shared by the second user to verify the second user’s
ownership of the derivative gemstone
(steps (l), (m), and (n)).
We agree with the Examiner that these claim limitations, when given
their broadest reasonable interpretation, recite a commercial and/or legal
interaction, i.e., a method of organizing human activity and, therefore, an
abstract idea. See 2019 Revised Guidance, 84 Fed. Reg. at 52.
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The Examiner characterized the abstract idea as “a form of accounting where
the amount and value of raw materials, work-in-progress and finished goods
are calculated and recorded in a ledger” (Final Act. 10). Stated slightly
differently, claim 1 recites storing ownership information related to
gemstones using blockchain networks.
Appellant presents no substantive challenge to the Examiner’s
determination that claim 1 recites an abstract idea. Instead, Appellant
maintains that claim 1 is patent eligible because it integrates the alleged
abstract idea into a practical application (Appeal Br. 8–10).
The 2019 Revised Guidance references MPEP, Ninth Edition
(rev. Jan 2018) (available at https://www.uspto.gov/web/offices/
pac/mpep/old/mpep_E9R08-2017.htm) § 2106.05(a)–(c) and (e) in
non-exhaustively listing considerations indicative that an additional element
or combination of elements may have integrated the recited judicial
exception into a practical application. 2019 Revised Guidance, 84 Fed. Reg.
at 55. In particular, the Guidance describes that an additional element may
have integrated the judicial exception into a practical application if the
additional element (1) reflects an improvement in the functioning of a
computer or an improvement to other technology or technical field;
(2) applies or uses the judicial exception to effect a particular treatment or
prophylaxis for a disease or medical condition; (3) implements the judicial
exception with, or uses the judicial exception with, a particular machine or
manufacture integral to the claim; (4) effects a transformation or reduction
of an article to a different state or thing; or applies; or (5) applies or uses the
judicial exception in some other meaningful way beyond generally linking
the use of the judicial exception to a particular technological environment,
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such that the claim as a whole is more than a drafting effort designed to
monopolize the exception. Id. At the same time, the Guidance makes clear
that merely including instructions to implement an abstract idea on a
computer, or merely using a computer as a tool to perform an abstract idea;
adding insignificant extra-solution activity to the judicial exception; or only
generally linking the use of the judicial exception to a particular
technological environment or field are not sufficient to integrate the judicial
exception into a practical application. Id.
Appellant asserts here that, even assuming arguendo that claim 1
recites an abstract idea, “requiring discrete first and second blockchain
networks . . . imparts a meaningful limitation . . . that demonstrates the
practical application of a judicial exception” (Appeal Br. 8; see also Reply
Br. 2). Appellant maintains that “the recitation of first and second
blockchain networks applies the alleged judicial exception ‘in some other
meaningful way beyond generally linking the use of the judicial exception to
a particular technological environment’” (Appeal Br. 8). Yet, we fail to
discern (whether from the claim language or the written description portion
of the Specification) improvements to the functioning of a computer, or to
any other technology or technical field, that are attributable to the use of
discrete first and second blockchain networks. We also find no indication
that the use of discrete blockchain networks otherwise integrates the abstract
idea into a “practical application,” as that phrase is used in the 2019 Revised
Guidance.
Responding to the Examiner’s Answer, Appellant asserts in the Reply
Brief that recording the second digital certificate gemstone smart contract on
a second blockchain network that is discrete from the first blockchain
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network enables the generation of the second combination certificate that
can be verified independent of, and simultaneously with, the combination
certificate of the digital certificate gemstone smart contract of the first
blockchain network, and that the first and second blockchain networks are
what enables the generation of separate combination certificates (Reply
Br. 2). But, we are not persuaded that the generation of separate
combination certificates, which can be independently verified, provides any
technological improvement or otherwise integrates the abstract idea into a
“practical application,” within the meaning of the 2019 Revised Guidance.
Instead, to the extent the use of separate combination certificates and
discrete blockchain networks represents an improvement at all, that
improvement is to the abstract idea of storing ownership information related
to gemstones using blockchain networks, which is not enough for patent
eligibility. See SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1170 (Fed.
Cir. 2018) (“[P]atent law does not protect such claims [i.e., claims to an
asserted advance in the realm of abstract ideas], without more, no matter
how groundbreaking the advance.”). That is particularly true, where, as
here, there is no indication that the operations recited in claim 1 require any
specialized computer hardware or other inventive computer components,
invoke any allegedly inventive programming, or that the claimed invention
is implemented using other than generic computer components to perform
generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no
doubt: recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible.”).
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We also are not persuaded of Examiner error to the extent Appellant
maintains that claim 1 is patent eligible because the claim presents no risk of
preemption (see, e.g., Appeal Br. 9 (“It is entirely possible for alternative
solutions to track gemstones using a single blockchain, and without
generating combination certificates as claimed”)). Although the Supreme
Court has described “the concern that drives [the exclusion of abstract ideas
from patent-eligible subject matter] as one of pre-emption,” Alice Corp.,
573 U.S. at 216, characterizing preemption as a driving concern for patent
eligibility is not the same as characterizing preemption as the sole test for
patent eligibility. “The Supreme Court has made clear that the principle of
preemption is the basis for the judicial exceptions to patentability” and “[f]or
this reason, questions on preemption are inherent in and resolved by the
§ 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015) (citing Alice Corp., 573 U.S. at 216). “[P]reemption
may signal patent ineligible subject matter, [but] the absence of complete
preemption does not demonstrate patent eligibility.” Id.
We conclude, for the reasons outlined above, that claim 1 recites a
method of organizing human activity, i.e., an abstract idea, and that the
additional elements recited in the claim beyond the abstract idea, i.e., “a
processor”; “a first blockchain network”; and “a second blockchain
network,” are no more than generic computer components used as tools to
perform the recited abstract idea. As such, they do not integrate the abstract
idea into a practical application. See Alice Corp., 573 U.S. at 223–24
(“[W]holly generic computer implementation is not generally the sort of
‘additional featur[e]’ that provides any ‘practical assurance that the process
is more than a drafting effort designed to monopolize the [abstract idea]
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itself.’” (quoting Mayo, 566 U.S. at 77)). Accordingly, we agree with the
Examiner that claim 1 is directed to an abstract idea.
Step Two of the Mayo/Alice Framework (2019 Revised Guidance, Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 1 is directed to an abstract idea, we next consider under Step 2B of the
2019 Revised Guidance, the second step of the Mayo/Alice framework,
whether claim 1 includes additional elements or a combination of elements
that provides an “inventive concept,” i.e., whether an additional element or
combination of elements adds specific limitations beyond the judicial
exception that are not “well-understood, routine, conventional activity” in
the field (which is indicative that an inventive concept is present) or simply
appends well-understood, routine, conventional activities previously known
to the industry to the judicial exception. 2019 Revised Guidance,
84 Fed. Reg. at 56.
We agree with the Examiner that claim 1 does not include additional
elements or a combination of elements that provides an inventive concept
(Final Act. 12–14). And Appellant presents no arguments to the contrary.
We are not persuaded, for the reasons set forth above, that the
Examiner erred in rejecting independent claim 1 under 35 U.S.C. § 101.
Therefore, we sustain the Examiner’s rejection of independent claim 1, and
claims 2–6, 9–13, and 15–23, which fall with claim 1.
Indefiniteness
Independent claim 22 is directed to a system for issuing blockchain-
based digital certificates associated with a gemstone, and recites that the
system comprises a processor and “a network communication device
positioned in communication with each of the processor and a network,”
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wherein the network communication device is operable to perform various
functions (Appeal Br. 21) (Claims App.).
In rejecting independent claim 22 under 35 U.S.C. § 112(b), the
Examiner concluded that the term, “network communication device,” is
properly interpreted under 35 U.S.C. § 112(f), and that claim 22 is indefinite
because the written disclosure fails to adequately disclose the structure that
corresponds to the recited “network communication device” (Final
Act. 20–21). The Examiner rejected claim 23 under 35 U.S.C. § 112(b)
based on its dependence from claim 22 (id. at 21).
Appellant does not dispute the Examiner’s finding that the
Specification fails to adequately disclose structure corresponding to the
recited “network communication device” under the Examiner’s § 112(f)
interpretation of that term. Instead, Appellant disputes that “network
communication device” invokes § 112(f) (Appeal Br. 10). The dispute here,
thus, turns on whether the Examiner erred in interpreting “network
communication device” as a means-plus-function element under 35 U.S.C.
§ 112(f).
The Federal Circuit has “stated that the use of the word ‘means’ in a
claim element creates a rebuttable presumption that § 112, para. 6 [now
§ 112(f)] applies” and that “the failure to use the word ‘means’ also creates a
rebuttable presumption —this time that [§ 112(f)] does not apply.”
Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015)
(internal citations omitted). At the same time, the court has emphasized that
“the essential inquiry is not merely the presence or absence of the word
‘means’ but whether the words of the claim are understood by persons of
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ordinary skill in the art to have a sufficiently definite meaning as the name
for structure.” Id.
Appellant contends here that a person of ordinary skill in the art
would understand that “network communication device” connotes
sufficiently definite structure so as to avoid interpretation under 35 U.S.C.
§ 112(f) (Appeal Br. 10). Appellant, thus, asserts, “that a person having
ordinary skill in the art would understand that term to mean a hardware
device capable of transmitting an analog or digital signal over a wired or
wireless transmission medium” (id. (citing What is a Communication
Device, retrieved from https://www.computerhope.com/jargon/
c/communication-devices.htm)) — an interpretation that Appellant
maintains is “wholly consistent with [the] use of the term in the written
description” (id. (citing Spec. ¶¶ 24–26, 64, 117, and 180)).
Although Appellant recites the applicable standard, the alleged
understanding of one of ordinary skill in the art is not supported by the
record evidence, and is instead mere attorney argument. See, e.g., In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a
brief cannot take the place of evidence.”). We are persuaded, for much the
same reasons set forth at pages 13–14 of the Examiner’s Answer, that the
record, including Appellant’s disclosure, supports the Examiner’s finding
that the term “network communication device” would not be generally
recognized, by those of ordinary skill in the art, as connoting a specific
structure.
As the Examiner points out, claim 22 does not recite “any modifier
that limits the term to a particular type of network” (Ans. 13). There also is
nothing in the written disclosure that imposes any such limitation or that
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otherwise equates “network communication device” to a particular structure.
Instead, the Specification merely describes that the “network communication
device” is “positioned in communication with each of [a] processor, [a] data
store, and a network” and that it is operable to send and receive certain
information, e.g., as recited in claim 1 (see, e.g., Spec. ¶¶ 24–26) and
operable to “communicate across a network, such as a wide area network,
including the Internet” (id. ¶ 64). Rather than connoting a particular
structure, “network communication device,” thus, reasonably broadly
encompasses any device operable to communicate over any type of network.
Appellant’s proffered article bears a date more than one year after the
filing date of the present application and more than two years after the
application’s priority date. Yet, even putting aside whether the article can be
relied on as contemporaneous evidence of what a person of ordinary skill in
the art would have understood “network communication device” to mean, it
does not require a different result.
The article describes “a communication device” as encompassing any
device capable of transmitting “an analog or digital signal over the
telephone, other communication wire, or wirelessly” (What is a
Communication Device?, 1), and, in a section titled “Communication device
examples,” lists different types of structure that fall within the category of
communication devices, i.e., “Bluetooth devices”; “Infrared devices”;
“Modem (over phone line)”; “Network card (using Ethernet)”;
“Smartphone”; and “Wi-Fi devices (using a Wi-Fi router).” Id. We agree
with the Examiner that these examples “underscore[ ] why the term
‘communication device’ is simply a catch-all generic placeholder term used
to describe a generalized function which in and of itself does not equate to
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any particular structure” (Ans. 13). For example, the difference between
wired and wireless networks – and between digital and analog networks –
implies significantly different structure.
The record fairly supports the conclusion that, as used in claim 22,
“network communication device” is no more than a “black box recitation of
structure” that is simply a generic substitute for “means.” See Williamson,
792 F.3d at 1350; cf. Massachusetts Institute of Technology and Electronics
for Imaging, Inc. v. Abacus Software, 462 F.3d 1344, 1354 (Fed. Cir. 2006)
(“The generic terms ‘mechanism,’ ‘means,’ ‘element,’ and ‘device,’
typically do not connote sufficiently definite structure.”). And, as discussed
above, there appears to be no dispute that the Specification fails to disclose
structure that corresponds to the recited “network communication device.”
“If the specification fails to disclose adequate corresponding structure, the
claim is indefinite.” Synchronoss Techs., Inc. v. Dropbox, Inc., 987 F.3d
1358, 1367 (Fed. Cir. 2021) (citing Williamson, 792 F.3d at 1351–52).
We are not persuaded that the Examiner erred in rejecting claims 22
and 23 under 35 U.S.C. § 112(b). Therefore, we sustain the Examiner’s
rejection.
Obviousness
Independent Claims 1 and 22 and Dependent Claims 2–6, 9–13, and 15–18,
21, and 23
Appellant argues claims 1–6, 9–13, 15–18, and 21–23 as a group
(Appeal Br. 11–14). We select independent claim 1 as representative.
Claims 2–6, 9–13, 15–18, and 21–23 stand or fall with claim 1. See
37 C.F.R. § 41.37(c)(1)(iv).
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Independent claim 1, reproduced above, is directed to “[a] method of
issuing blockchain-based digital certificates associated with a rough
gemstone and cut gemstones derived therefrom,” and recites that the method
comprises a series of seven steps, i.e., steps (a) through (g), for issuing a
certificate associated with the rough gemstone, and a series of seven
substantially identical steps, i.e., steps (h) through (n), for issuing a
certificate associated with the cut, i.e., derivative, gemstones.4
In rejecting claim 1 under 35 U.S.C. § 103(a), the Examiner found
that Moss-Pultz discloses each of steps (a) through (g), as recited in claim 1
(Final Act. 22). But, the Examiner acknowledged that Moss-Pultz does not
explicitly disclose performing the claimed steps using derivative gemstone
information (Final Act. 23–29).

4 In particular, claim 1 recites the following steps related to rough
gemstones: (1) receiving a plurality of records about rough gemstones
(step (a)); (2) receiving meta-information related to the rough gemstone
records (step (b)); (3) applying a hashing function to each record to generate
a plurality of fingerprints (step (c)); (4) generating a hash tree from the
plurality of fingerprints (step (d)); (5) recording the received and generated
information about the rough gemstones to a digital certificate on a first
blockchain network (step (e)); (6) signing the digital certificate (step (f));
and (7) generating a combination certificate to verify ownership of the rough
gemstones (step (g)). Claim 1 recites the following, substantially identical,
steps related to derivative gemstones: (1) receiving a plurality of records
about derivative gemstones (step (h)); (2) receiving meta-information related
to the derivative gemstone records (step (i)); (3) applying a hashing function
to each record to generate a plurality of fingerprints (step (j)); (4) generating
a hash tree from the plurality of fingerprints (step (k)); (5) recording the
received and generated information about the derivative gemstones to a
digital certificate on a first blockchain network (step (l)); (6) signing the
digital certificate (step (m)); and (7) generating a combination certificate to
verify ownership of the derivative gemstones (step (n)).
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The Examiner, thus, acknowledged, with respect to steps (h) through
(j), for example, that although Moss-Pultz discloses the hashing of physical
good records, Moss-Pultz does not explicitly disclose “applying, using the
processor, a hashing function to each record of the plurality of derivative
gemstone records, generating a plurality of derivative fingerprints” (Final
Act. 24). The Examiner, however, concluded that “when combined with the
teachings of Mulchandani[,] which teaches the use of blockchain and its
inherent hashing on either raw materials or finished goods” and
“Sivovolenko which teaches the gathering of the metadata regarding a
virtual diamond . . . derived from an uncut diamond . . . , no new knowledge
is required of those skilled in the art to perform the hashing of a derivative
gemstone record but only the mere substitution of data[,] i.e.[,] one element
for another to obtain predictable results” (id.) (citing MPEP § 2141(III)(B)
(“Simple substitution of one known element for another to obtain predictable
results.”); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)). The
Examiner also reached a substantially similar conclusion with respect to
each of steps (k) through (n) (see id. at 25–29 (the Examiner further relying
on Skinner’s disclosed use of blockchain networks to store smart contracts to
support the obviousness determination)).
Simply stated, the Examiner’s position is that it would have been
obvious to duplicate steps (a) through (g), with the substitution of derivative
gemstone information for rough gemstone information, as called for in
steps (h) through (n) of claim 1, because doing so is merely a repetition of
steps – albeit with the substitution of one known element for another – to
obtain predictable results. As the Examiner explains in the Answer, “[t]he
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steps are merely repeated with different data such that the novelty lies not in
the operations themselves but in the data used in the operations” (Ans. 19).
As an alternative basis for the rejection, the Examiner asserts that the
substitution of derivative gemstone information for rough gemstone
information in each of steps (h) through (n) is a difference that “does not
patentably distinguish the claimed invention from the prior art” because “no
‘new and unobvious’ functional difference exists between” the information
related to rough gemstones and the information related to derivative
gemstones (Final Act. 24–30) (citing MPEP § 2111.05(II) (discussing
“Functional and Nonfunctional Descriptive Material”)).
Appellant first argues that the “Examiner erroneously invoked the
printed matter doctrine” (Appeal Br. 11) (emphasis omitted). According to
Appellant, the “Examiner has erroneously conflated the content of data
being recorded to the first and second blockchain networks with the
performative step of recording data to the networks” (id.). Appellant
concedes that the “Examiner has correctly stated that the first and second
blockchain networks are ‘ledgers for storing printed matter’” (id. at 12).
Yet, Appellant contends that the “Examiner errs in going on to state the first
and second blockchain networks should therefore not be given patentable
weight” (id.). Citing King Pharmaceuticals Inc. v. Eon Labs, Inc., 616 F.3d
1267, 1279 (Fed. Cir. 2010) and In re Gulack, 703 F.2d 1381, 1385 (Fed.
Cir. 1983), Appellant characterizes the claimed first and second blockchain
networks as substrates, and argues that the Examiner’s position “is contrary
to precedent, as the substrate in these cases was always given patentable
weight” (id.).
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Responding to Appellant’s argument, the Examiner observes, in the
Answer, that “the distinction between the cited prior art and the claimed
invention appears only to be the substitution of rough gemstone data with
derivative gemstone data and the recordation to a different smart contract on
a different network where the results are predictable in nature” (Ans. 20).
According to the Examiner, this is a sufficient basis for the rejection, and
“even if a finding was made that MPEP § 2111.05(II) [i.e., “printed matter”
doctrine] was not applicable to the claimed invention a prima facie case is
still present involving one of the rationales from KSR” (id. at 21).5
Appellant summarily asserts that the Examiner’s proposed
modification is based on “hindsight” and that the Examiner “provides no
motivation to substitute rough gemstone data with derivative data” (Appeal
Br. 13). Yet, in the absence of persuasive arguments or technical reasoning
to explain why the motivation set forth by the Examiner is insufficient or
why the modification described by the Examiner is more than the predictable
use of prior art elements according to their established functions, we are not
persuaded of error on the part of the Examiner.
Appellant also argues that “[t]he prior art fails to teach or suggest
recording rough and derivative gemstone contracts to respective, discrete
blockchain networks” (Appeal Br. 13) (emphasis omitted). According to
Appellant, the “Examiner has failed to provide any teaching, suggestion, or
motivation in the cited prior art to record a second digital gemstone

5 Because we agree with the Examiner that the substitution of derivative
gemstone information for rough gemstone information amounts to a “simple
substitution of one known element for another” (KSR, 550 U.S. at 401), we
need not, and do not, address the Examiner’s alternative basis for the
rejection based on non-functional descriptive material, i.e., “printed matter.”
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certificate smart contract on a second blockchain network” (id.), and “it is
clear that the requirements of discrete first and second blockchain networks
and respective combination certificates therefore are not taught in the prior
art, nor is there any motivation to be found in the prior art for multiple
blockchain networks and respective combination certificates” (id. at 14).
To the extent Appellant seeks an explicit suggestion or teaching in the
references themselves, the Supreme Court made clear in KSR that no such
explicit suggestion or teaching is required. See KSR, 550 U.S. at 419. As
discussed above, the Examiner’s proposed modification merely requires a
repetition of steps with the substitution of one known element for another,
i.e., information about derivative gemstones for information about rough
gemstones.
Responding to the Examiner’s Answer, Appellant argues in the Reply
Brief that the Examiner is misconstruing Skinner as disclosing discrete first
and second blockchain networks, as called for in claim 1; that “Skinner
specifically teaches a first public blockchain network to provide global
transparency and a second private blockchain network for commercial
transaction”; and that “Skinner is explicit that it is only the second private
blockchain network that includes smart contract functionality” (Reply Br. 3).
Appellant, thus, maintains that “the prior art, taken alone or in combination,
fails to teach or suggest two discrete blockchain networks as required in the
independent claims and requests the Board reverse the rejection” (id.).
Appellant’s argument is not persuasive at least because it is based on
the bodily incorporation of the features of Skinner into the Moss-Pultz
system, which is not the test for obviousness. Instead, the test is what the
combined teachings of these references would have suggested to a person of
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ordinary skill in the art. See In re Keller, 642 F.2d 413, 425 (CCPA 1981);
see also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not
necessary that the inventions of the references be physically combinable to
render obvious the invention under review.”); In re Nievelt, 482 F.2d 965,
968 (CCPA 1973) (“Combining the teachings of references does not involve
an ability to combine their specific structures.”).
The Examiner did not propose any bodily incorporation of Skinner’s
public blockchain network and private blockchain network into the Moss-
Pultz system. Rather, the Examiner relied on Skinner for its disclosure of
using blockchain networks to store smart contracts (Final Act. 25–26
(“page 5 ‘The private Everledger blockchain is where diamond industry
actors engage commercially, transact between themselves across the
blockchain. . . . Those smart contracts go hand in hand with the blockchain
. . . . The blockchain, through its transparency, is enforcing the contract,
whether it is related to changes in ownership of the diamond, financing of
the diamond, its insurance policy and so on’”), and simply noted, Skinner
“even describes the use of two blockchains” (Ans. 17).
On this record, Appellant has not shown that the Examiner erred in
determining that a person of ordinary skill in the art, using no more than
ordinary creativity, would have modified Skinner’s method to include
recording smart contracts on two different blockchain networks. For
example, Appellant has not persuasively shown how the recordation of data
on two different blockchain networks yields an unpredictable or unexpected
result. See KSR, 550 U.S. at 416 (“The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results”); In re Harza, 274 F.2d 669, 671 (CCPA
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1960) (“It is well settled that the mere duplication of parts has no patentable
significance unless a new and unexpected result is produced”).
In view of the foregoing, we sustain the Examiner’s rejection, under
35 U.S.C. § 103(a), of claim 1, and claims 2–6, 9–13, 15–18, and 21–23,
which fall with claim 1.
Dependent Claims 19 and 20
Appellant does not present any argument in response to the
Examiner’s rejection of claims 19 and 20 as unpatentable over Moss-Pultz,
Mulchandani, Sivovolenko, Skinner, and Westlind. Therefore, we
summarily sustain the Examiner’s rejection.
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–6, 9–13,
15–23
101 Eligibility 1–6, 9–13,
15–23

22, 23 112(b) Indefiniteness 22, 23
1–6, 9–13,
15–18, 21–
23
103(a) Moss-Pultz,
Mulchandani,
Sivovolenko,
Skinner
1–6, 9–13,
15–18,
21–23

19, 20 103(a) Moss-Pultz,
Mulchandani,
Sivovolenko,
Skinner, Westlind
19, 20
Overall
Outcome
1–6, 9–13,
15–23

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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