Nasdaq, Inc.

Patent Trials and Appeals Board

Mar 2, 2021

2020003469 (P.T.A.B. Mar. 2, 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.
15/086,801 03/31/2016 Thomas FAY AC-4010-337 1013
23117 7590 03/02/2021
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
IMMANUEL, ISIDORA I
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
03/02/2021 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte THOMAS FAY and DOMINICK PANISCOTTI
________________

Appeal 2020-003469
Application 15/086,801
Technology Center 3600
____________

Before MICHAEL R. ZECHER, MATTHEW J. McNEILL, and
STEPHEN E. BELISLE, Administrative Patent Judges.

McNEILL, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 18, 22‒28, 31, and 32.1 Claims 1‒17, 19‒21, 29, and 30
have been cancelled or withdrawn. Final Act. 2.2 We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies NASDAQ, INC. as the real party in
interest. Appeal Br. 3.
2 All references to the Final Action under appeal are to the Final Action
mailed on March 15, 2019.
Appeal 2020-003469
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STATEMENT OF THE CASE
Introduction
The claimed subject matter relates to a system that interfaces with
blockchain transactions. Spec. ¶ 2. In particular, the system receives
transaction requests, identifies matches between requests, and generates new
transactions based on the requests using identifiers associated with the
requesting parties. Id. ¶ 8. The system submits the transactions to a
blockchain and monitors the blockchain to determine when the transactions
have been incorporated into the blockchain. Id.
Claim 18 is illustrative of the appealed subject matter and reads as
follows:
18. A non-transitory computer readable storage medium
having stored thereon computer readable instructions for use
with a computer system that includes at least one processor, a
memory, and a transceiver, the stored computer readable
instructions comprising instructions that, when executed by the
computer system, cause the computer system to:
store a plurality of digital wallets that are respectively
associated with different client entities, each of the plurality of
digital wallets respectively linked to at least one corresponding
private cryptographic key and at least one identifier that has
been generated based on the at least one private cryptographic
key;
receive, via the transceiver and from different remote
computing devices, electronic data messages that each include
data transaction requests;
add a received first data transaction request, which is
associated with a first digital wallet, to a first list that is stored
in the memory, the first list including a first plurality of data
transaction requests, each of the first plurality of data
transaction requests including size value and a type identifier;
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receive a second data transaction request, which is
associated with a second digital wallet;
identify a match between at least the stored first data
transaction request and the received second data transaction
request;
in response to the identification of the match between at
least the stored first data transaction request and the received
second data transaction request:
(1) generate a first hash identifier based on data
included in the first digital wallet,
(2) generate a second hash identifier based on data
included in the second digital wallet, wherein the first
and second hash identifiers are unique among other hash
identifiers that are generated in response to each new
match that is identified between data transaction requests,
(3) generate (a) a first blockchain transaction and
(b) a second blockchain transaction, where the first
blockchain transaction is based on the first hash identifier
and the second data transaction request and the second
blockchain transaction is based on the second hash
identifier and the first data transaction request;
submit the generated first blockchain transaction and the
generated second blockchain transaction to a distributed
blockchain computing system for inclusion into a blockchain
that is maintained on the distributed blockchain computing
system;
monitor the blockchain to verify that the first blockchain
transaction and the second blockchain transaction have been
included into the blockchain; and
based on verification that the that the first blockchain
transaction and the second blockchain transaction have been
included into the blockchain, update at least one record of a
database that is external to the distributed blockchain
computing system.

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The Examiner’s Rejections
Claims 18, 22‒26, 28, 31, and 32 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Armstrong (US 2015/0262137 A1; Sept. 17,
2015) and Mizunuma (US 2013/0238903 A1; Sept. 12, 2013). Final Act. 5‒
8.
Claim 27 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Armstrong, Mizunuma, and Ford (US 2016/0261404 A1;
Sept. 8, 2016). Final Act. 8‒9.
ANALYSIS
The Examiner finds the combination of Armstrong and Mizunuma
teaches or suggests “(3) generat[ing] (a) a first blockchain transaction and
(b) a second blockchain transaction, where the first blockchain transaction is
based on the first hash identifier and the second data transaction request and
the second blockchain transaction is based on the second hash identifier and
the first data transaction request,” as recited in claim 18. Final Act. 5‒6.
In particular, the Examiner finds Armstrong teaches bitcoin addresses
that act as hashes identifying bitcoin wallets. Ans. 31‒32 (citing Armstrong
¶ 198). The Examiner finds Armstrong teaches a hashed bitcoin address is
used to generate blockchain transactions. Id. at 32 (citing Armstrong ¶¶ 101,
108, 117, 119). The Examiner further finds Mizunuma teaches a broker that
verifies deposit hashes based on received withdrawal hashes, showing that
the blockchain is generated using previously-received wallet information. Id.
at 33.
Appellant argues the Examiner errs in rejecting claim 18 because
neither Armstrong nor Mizunuma teaches generating a first blockchain
transaction based on a first hash identifier associated with a first wallet and a
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second data transaction request associated with a second wallet. Appeal Br.
24‒27; Reply Br. 8. In particular, Appellant argues neither Armstrong nor
Mizunuma teaches generating a transaction based on information related to
two different wallets. Appeal Br. 25‒26.
Appellant has persuaded us of Examiner error. Claim 18 recites
“generat[ing] (a) a first blockchain transaction . . . based on the first hash
identifier and the second data transaction request.” Claim 18 also recites
“generat[ing] (b) a second blockchain transaction . . . based on the second
hash identifier and the first data transaction request.” Thus, claim 18 recites
creating transactions based on an identifier associated with one digital wallet
and a transaction request based on a second or different digital wallet.
The Examiner finds Armstrong and Mizunuma collectively teach
these limitations. See Ans. 31‒33. However, the Examiner fails to
sufficiently explain or establish that information from two wallets is used to
create a single blockchain transaction. The Examiner’s findings regarding
Armstrong relate to currency transfers between two wallets, but the
generated transactions only include information relating to a single wallet
per transaction. See Ans. 31‒32 (citing Armstrong ¶¶ 101, 108, 117, 119).
The Examiner’s findings regarding Mizunuma also relate to transactions that
involve hashes relating to a single wallet per transaction. See Ans. 33.
In particular, Mizunuma teaches transfer requests that include deposit
and withdrawal hashes relating to digital wallets. See Mizunuma ¶¶ 312‒
326. The hashes used to generate each transaction appear to relate to a single
wallet per transaction. See id. For example, Mizunuma teaches the user
transmitting two messages to the broker server, where the first message
includes a withdrawal hash vector that hashes the wallet s1, a withdrawal
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index vector for wallet s1, and an increment of the withdrawal index vector
for wallet s1. Id. ¶ 319. The second message includes the same information
for wallet s2. Id. Neither of these messages includes information relating to
two different wallets, and the Examiner has not sufficiently identified any
transaction that is generated using information from two different wallets.
Thus, the Examiner has not sufficiently explained how Mizunuma’s
teachings relate to the claimed limitations regarding “generat[ing] (a) a first
blockchain transaction . . . based on the first hash identifier and the second
data transaction request.”
For these reasons, we do not sustain the Examiner’s obviousness
rejection of claim 18.3 We also do not sustain the Examiner’s obviousness
rejection of independent claim 23, which recites commensurate subject
matter. By virtue of their dependency to either claim 18 or claim 23, we also
do not sustain the Examiner’s obviousness rejection of dependent claims 22,
24‒26, 28, 31, and 32 for the same reasons.
Claim 27 stands rejected as unpatentable over Armstrong, Mizunuma,
and Ford. Final Act. 8‒9. The Examiner does not find Ford teaches or
suggests “(3) generat[ing] (a) a first blockchain transaction and (b) a second
blockchain transaction, where the first blockchain transaction is based on the
first hash identifier and the second data transaction request and the second
blockchain transaction is based on the second hash identifier and the first
data transaction request.” See id. Accordingly, we also do not sustain the
Examiner’s obviousness rejection of claim 27 for the same reasons discussed
above.

3 Because we agree with at least one of the dispositive arguments advanced
by Appellant, we need not reach the merits of Appellant’s other arguments.
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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
18, 22‒26,
28, 31, 32
103 Armstrong, Mizunuma 18, 22‒26,
28, 31, 32
27 103 Armstrong, Mizunuma,
Ford
27
Overall
outcome
18, 22‒28,
31, 32

REVERSED