Vijay Madisetti et al.Download PDFPatent Trials and Appeals BoardAug 16, 20212020004917 (P.T.A.B. Aug. 16, 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. 15/896,206 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). Appeal 2020-004917 Application 15/896,206 2 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; Appeal 2020-004917 Application 15/896,206 3 [(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. Appeal 2020-004917 Application 15/896,206 4 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 Appeal 2020-004917 Application 15/896,206 5 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). Appeal 2020-004917 Application 15/896,206 6 “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. Appeal 2020-004917 Application 15/896,206 7 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 Appeal 2020-004917 Application 15/896,206 8 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 Appeal 2020-004917 Application 15/896,206 9 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). Appeal 2020-004917 Application 15/896,206 10 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 Appeal 2020-004917 Application 15/896,206 11 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] Appeal 2020-004917 Application 15/896,206 12 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. Appeal 2020-004917 Application 15/896,206 13 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, Appeal 2020-004917 Application 15/896,206 14 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 Appeal 2020-004917 Application 15/896,206 15 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.”). Appeal 2020-004917 Application 15/896,206 16 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] Appeal 2020-004917 Application 15/896,206 17 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,” Appeal 2020-004917 Application 15/896,206 18 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 Appeal 2020-004917 Application 15/896,206 19 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 Appeal 2020-004917 Application 15/896,206 20 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 Appeal 2020-004917 Application 15/896,206 21 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). Appeal 2020-004917 Application 15/896,206 22 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)). Appeal 2020-004917 Application 15/896,206 23 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 Appeal 2020-004917 Application 15/896,206 24 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.). Appeal 2020-004917 Application 15/896,206 25 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.” Appeal 2020-004917 Application 15/896,206 26 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 Appeal 2020-004917 Application 15/896,206 27 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 Appeal 2020-004917 Application 15/896,206 28 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 Appeal 2020-004917 Application 15/896,206 29 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