Nasdaq, Inc.

Patent Trials and Appeals Board

Feb 25, 2022

2021001640 (P.T.A.B. Feb. 25, 2022)

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. 15/592,803 05/11/2017 Richard DEMARINIS 4010-385 8434 23117 7590 02/25/2022 NIXON & VANDERHYE, PC 901 NORTH GLEBE ROAD, 11TH FLOOR ARLINGTON, VA 22203 EXAMINER KUO, CHENYUH ART UNIT PAPER NUMBER 3685 NOTIFICATION DATE DELIVERY MODE 02/25/2022 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 RICHARD DEMARINIS, HEDI UUSTALU, THOMAS FAY, DOMINICK PANISCOTTI, TRIIN PARVITS, RACHANA RAJKUMAR, and JUNNING TONG Appeal 2021-001640 Application 15/592,803 Technology Center 3600 Before HUBERT C. LORIN, MICHAEL R. ZECHER, and TARA L. HUTCHINGS, Administrative Patent Judges. LORIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the Examiner’s final decision to reject claims 1-10 and 20-29.1 Responsive to a 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies Nasdaq Inc. as the real party in interest. Appeal Br. 4. Appeal 2021-001640 Application 15/592,803 2 restriction requirement, claims 11-19 were cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER The claimed subject matter “relates to distributed ledger technology (such as blockchain technology), proof of work systems, cryptosystems, and electronic transaction systems” (Spec. para. 2). Claim 1 is illustrative of the claimed subject matter: 1. A networked computer system, comprising: a distributed blockchain computer system including multiple computing nodes, each computing node storing a copy, or a portion thereof, of a blockchain of the distributed blockchain computer system; and a server computer system communicatively coupled to one or more client computers and the distributed blockchain computer system, the server computer system comprising one or more processors configured to perform operations comprising: recording on the blockchain, by transmitting one or more electronic messages to the distributed blockchain computer system, ownership information of respective groups of one or more units of an asset for each of a plurality of owners of the asset; for each of one or more of the owners: generating at least one blockchain address based upon a private cryptographic key; configuring a digital wallet corresponding to the asset; and associating the digital wallet with the private cryptographic key and at least one blockchain address; receiving a command from a client computer after the recording; responsive to the received command, accessing, using the at least one blockchain address stored in one of said digital wallets, the recorded ownership information of the asset; performing application processing using the accessed ownership information, wherein the application Appeal 2021-001640 Application 15/592,803 3 processing includes voting, according to a number of units of the asset, by owners or proxies of the owners of said groups of one or more units of the asset; for each of the plurality of owners, distributing at least one voting token to a digital wallet of the owner or a digital wallet of a proxy for the owner; and starting a voting event; wherein the distributed blockchain computer system is configured to receive, during the voting event and at one or more of a plurality of block chain addresses, respective ones of the voting tokens from the digital wallets of one or more of the owners or the digital wallets of one or more proxies of the owners; and wherein the one or more processors are further configured to perform operations comprising: determining, based upon numbers of the received voting tokens for each of the plurality of blockchain addresses, a distribution of votes for each of a plurality of voting choices; and displaying a result of the voting event based upon the determined distribution of votes. Appeal Br. 28-29 (Claims App.). REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Wald US 2003/0094489 A1 May 22, 2003 Wallman US 2005/0288996 A1 Dec. 29, 2005 Armstrong US 2015/0262140 A1 Sept. 17, 2015 REJECTIONS Claims 1-10 and 20-29 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. Final Act. 11-12. Appeal 2021-001640 Application 15/592,803 4 Claims 1-10 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Armstrong. Final Act. 13-14. Claims 1, 6-10, 20, 23-26, and 29 are rejected under 35 U.S.C. § 103(a) as being unpatentable over the Armstrong, Wallman, and Wald. Final Act. 15-22. OPINION The rejection of claims 1-10 and 20-29 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. Claims 1, 3, 4, 26, and 28 The Examiner argues that these claims include limitations which “render[] the claim[s] indefinite because [the limitations] create[] confusion regarding when infringement occurs.” E.g., Ans. 7, citing Manual of Patent Examination Procedure (“MPEP”) § 2173.05(p) II and decisions associated therewith. The concerning limitations are: 1. “wherein the distributed blockchain computer system is configured to receive . . . respective ones of the voting tokens from the digital wallets” (claims 1 and 26); 2. “a blockchain address stored in one of said digital wallets” (claims 1 and 26); 3. “performing application processing using the accessed ownership information, wherein the application processing includes voting, according to a number of units of the asset, by owners or proxies of the owners of said groups of one or more units of the asset” (claims 1 and 26); Appeal 2021-001640 Application 15/592,803 5 4. “said one of the owners has assigned a proxy to the first proxy” (claims 3, 4, and 28); and 5. “distributing the at least one voting token to a digital wallet of the first proxy if said determining determined that the proxy has been assigned, and not distributing the at least one voting token to a digital wallet of said one of the owners if said determining determined that the proxy has not been assigned” (claims 3 and 4). Ans. 5-8. The Examiner argues that each said limitation 1. “describes an unspecified entity configuring the distributed blockchain computer system to receive respective ones of the voting tokens from the digital wallets” (Ans. 6); 2. “describes an unspecified entity storing a blockchain address in one of said digital wallets but is not attributed to any structure of the claimed products” (id.); 3. “[contains] language, ‘. . . wherein . . . voting . . . by owners’, [which] is from the perspective of owners and describes the owners performing an act, ‘voting’, but is not part of the claimed structure” (id. at 7); 4. “[contains] [t]he language, ‘said one of the owners has assigned a proxy to the first proxy’, [which] is from the perspective of said one of the owners and describes said one of the owners performing an action, ‘has assigned’, but is not part of the claimed structure” (id.); and 5. “[contains] [t]he language ‘the proxy has been assigned’ and ‘the proxy has not been assigned’, describes an unspecified entity Appeal 2021-001640 Application 15/592,803 6 performing actions of assigning the proxy and not assigning the proxy, which is not attributed to any structure of the claimed products” (id. at 8), respectively. We have reviewed the record and agree with Appellant. MasterMine Software, Inc. v. Microsoft Corporation, 874 F.3d 1307 (Fed. Cir. 2017) (“MasterMine”), is on point. See Appeal Br. 25. See also MPEP § 2173.05(p) II (9th ed., Rev. 10.2019, June 2020), citing MasterMine. “[A] patent specification must ‘conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.’” MasterMine, 874 F.3d at 1312-13 (quoting 35 U.S.C. § 112, para. 2). In IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377 (Fed. Cir. 2005) (“IPXL Holdings”), the court held a claim covering both an apparatus and a method of using that apparatus indefinite because it was “unclear whether infringement . . . occurs when one creates a[n infringing] system, or whether infringement occurs when the user actually uses [the system in an infringing manner].” UltimatePointer, L.L.C. v. Nintendo Co., 816 F.3d 816, 826 (Fed. Cir. 2016) (alteration in original) (quoting IPXL Holdings, 430 F.3d at 1384).” MasterMine, 874 F.3d at 1313. However, apparatus claims are not always indefinite for including process elements. This is so because “apparatus claims are not necessarily indefinite for using functional language.” Microprocessor Enhancement Corp. v. Tex. Instruments Inc., 520 F.3d 1367, 1375 (Fed. Cir. 2008). That is the situation we have here. None of the five limitations the Examiner has identified explicitly claim an entity performing configuring, storing, or proxy- Appeal 2021-001640 Application 15/592,803 7 assigning/unassigning actions or owners voting or performing proxy-related actions. Instead, they functionally limit the claimed apparatus. Cf. MasterMine, 874 F.3d at 1316 (“While these claims make reference to user selection, they do not explicitly claim the user’s act of selection, but rather, claim the system’s capability to receive and respond to user selection.”). For example, with respect to the claim limitation “performing application processing using the accessed ownership information, wherein the application processing includes voting, according to a number of units of the asset, by owners or proxies of the owners of said groups of one or more units of the asset,” the “voting, according to a number of units of the asset, by owners or proxies of the owners” defines a function of the “application processing.” The system performs the function of voting by owners or proxies of the owners using certain information. This interpretation is supported by Figure 4 of the Specification, for example, and the associated disclosure in paragraph 74 (“computer-implemented shareholder voting application that uses an immutable distributed digital ledger for securities ownership records and other information associated with securities ownership such as, but not limited to, vote-related records” (emphasis added)). The claimed system is not specifying a step calling for owners/proxies to take a vote that is separate and distinct from the system’s application-processing function. Rather, it is the system that processes the voting using certain voting-related information. This is similar to the limitation “receives from the user a selection of” that was at issue in MasterMine (874 F.3d at 1315). It is not the same as, for example, IPXL Holdings where the system claim described input means and then added that “the user uses the input means to either change the predicted transaction Appeal 2021-001640 Application 15/592,803 8 information or accept the displayed transaction type and transaction parameters.” 430 F.3d at 1384 (emphasis added). Because we determine that “the claims merely use permissible functional language to describe the capabilities of the claimed system, it is clear that infringement occurs when one makes, uses, offers to sell, or sells the claimed system” (MasterMine, 874 F.3d at 1316). Accordingly, we do not sustain the Examiner’s indefiniteness rejection of claims 1, 3, 4, 26, and 28 on the ground that said five respective claim limitations “render[] the claim[s] indefinite because [the limitations] create[] confusion regarding when infringement occurs.” E.g., Ans. 7. Claims 1, 20, and 26 According to the Examiner, The language, “the application processing includes voting”, describes the term, application processing, as a noun describing an item, while the description of what the item includes is a verb describing an action. The language, “the application processing includes voting”, describes the application processing includes voting but does not describe processing for voting as part of the application processing. (See In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)). Ans. 9. We understand the Examiner to take the position that the claim phrase “the application processing includes voting,” which appears in all three independent claims (1, 20, and 26), is confusing, thereby rendering these claims indefinite. “A decision on whether a claim is invalid under § 112 [¶ 2] requires a determination of whether those skilled in the art would understand what is claimed when the claim is read in light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986). For Appeal 2021-001640 Application 15/592,803 9 the reasons discussed earlier with respect to the “hybrid claims” rejection, once said claim limitation is interpreted in light of the Specification, one of ordinary skill in the art would have understood said claim limitation as describing the application processing as including a “voting” processing function. In addition to the disclosure cited earlier, paragraph 129 of the Specification discloses: At operation 1012 [Fig. 10], the voting is conducted. When a shareholder digital wallet receives one or more voting tokens, it reads the asset definition to display relevant data to the shareholder on the display of the user device, including the voting options. Once the shareholder selects their voting choice for the agenda item and confirms, the shareholder digital wallet creates and signs a blockchain transaction sending the appropriate number of voting tokens to the blockchain address for the selected choice. Continuing the example of shareholder Bob above, in order to cast his vote, Bob can generate blockchain transaction for each meeting item from him to the blockchain addresses setup to tally the votes (e.g., by signing the transaction with the public key of the wallet associated with the voting address) for each agenda item requiring a vote. The number of voting tokens may be all voting tokens for that agenda item or only some of them. The votes can be called back or changed before the meeting and/or voting for the agenda item is terminated. Calling back the votes during the meeting is possible only when specific voting round is active. The admin has the right to activate/deactivate the voting rounds any number of times during the meeting. The votes may be locked once the meeting has ended. In light of the Specification disclosure, we agree with Appellant that A person of ordinary skill in the art would not interpret one or more processors being configured to perform the application processing that includes processing of voting by owners as being an action performed by a user. It is unambiguous that it is the one or more processors that is configured to perform that application Appeal 2021-001640 Application 15/592,803 10 processing, and therefore to perform the recited voting by owners. Reply Br. 14. It is possible that said claim limitation, as broadly as it is presented, may be difficult to understand in technological terms without the benefit of the Specification. But “[t]he purpose of claims is not to explain the technology or how it works, but to state the legal boundaries of the patent grant. A claim is not ‘indefinite’ simply because it is hard to understand when viewed without benefit of the specification.” S3 Inc. v. NVIDIA Corp., 259 F.3d 1364, 1369 (Fed. Cir. 2001). Accordingly, we do not sustain the Examiner’s indefiniteness rejection of claims 1, 20, and 26 on the ground that said limitation is confusing. The rejection of claims 1-10 under 35 U.S.C. § 102(a)(1) as being anticipated by Armstrong. According to the Examiner, “[r]egarding Claim 1, Armstrong teaches ‘a server computer system . . . comprising one or more processors ([paras.] 5, 16) . . . .’” Final Act. 13. “Giving the term [‘one or more processors’ (claim 1)] its broadest reasonable interpretation, the processor is a CPU [central processing unit] for a computing platform.” Id. at 14. The rest of claim 1 that describes the “networked computer system” in functional terms is disposed of as being “inherent to [common] CPUs.” Id. [A]s computing platform CPUs are programmable, the actions of “recording”, “generating”, “configuring”, “associating”, “receiving”, “accessing”, “performing”, “distributing”, “starting”, “determining” and “displaying” are inherent to these CPUs (See MPEP 2103 I C, 2114 IV, How Computers Work 7th Ed, page 4, last para “What makes your [personal computer] such Appeal 2021-001640 Application 15/592,803 11 a miraculous device is that each time you turn it on, it is a tabula rasa, capable of doing anything your creativity-or, more usually, the creativity of professional programmers-can imagine for it to do. It is a calculating machine, an artist’s canvas, a magical typewriter, an unerring accountant, and a host of other tools. To transform it from one persona to another merely requires setting some of the microscopic switches buried in the hearts of the microchips, a task accomplished by typing a command or by clicking with your mouse on some tiny icon on the screen.”) Therefore, as the prior art teaches one or more hardware processors . . . it is sufficient in terms of art. Id. A difficulty with this reasoning is that the claims have been rejected as anticipated Armstrong. Yet “How Computers Work 7th Ed., page 4, last para.” (id.) is additionally relied upon to find the recited operations the claimed processor is configured to perform are conventional. “[A]nticipation requires that all limitations of the claimed invention are described in a single reference . . . .” Glaxo Group Ltd. v. Apotex, Inc., 376 F.3d 1339, 1348 (Fed. Cir. 2004). A bigger difficulty is that the Examiner does not explain how the processor used in Armstrong “inherently” performs the functions as claimed. It is true that the claim phrase “one or more processors” (claim 1) is broad and, given the Specification discloses generic computers (Spec. para. 39 (“smart phone, tablet, laptop computer, desktop computer or other computing device”)) can be used, claim 1 appears reasonably broadly to cover generic processors. However, the claim requires said “processors” to be “configured to perform” the operations recited in the claim, notwithstanding the processor is otherwise generic. This is not about the processors’ intended use. Intended use comes into play when subject matter Appeal 2021-001640 Application 15/592,803 12 is claimed in terms of what it will be used for. See, e.g., In re Pearson, 494 F.2d 1399 (CCPA 1974). This is about whether Armstrong anticipates the claimed subject matter for describing, expressly or inherently, all that is claimed; that is, as it is “configured to perform.” Under principles of inherency, when a reference is silent about an asserted inherent characteristic (i.e., the operations the processor is “configured to perform”), it must be clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill. Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). Even if we assume that the processors of Armstrong are known CPUs, it has not been sufficiently established that Armstrong’s CPUs are inherently “configured to perform” the operations as claimed. All that the Examiner has presented as evidence of the inherent functions of CPUs is that CPUs are known. Finding that CPUs are known and concluding that the claimed operations “are inherent to these CPUs” (Final Act. 14) is an insufficient evidentiary basis by which to sustain the Examiner’s anticipation rejection. It may be possible that Armstrong’s processors can function as claimed but “[i]nherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Hansgirg v. Kemmer, 102 F.2d 212, 214 (CCPA 1939), quoted in Continental Can, 948 F.2d at 1269. Without more by way of evidence or reasoning tying the claimed functions to Armstrong’s processors, of which there is none at present, a prima facie case of anticipation by Armstrong has not been made out in the first instance. Accordingly, the Examiner’s anticipation rejection is not sustained. Appeal 2021-001640 Application 15/592,803 13 The rejection of claims 1, 6-10, 20, 23-26, 29 under 35 U.S.C. § 103(a) as being unpatentable over the Armstrong, Wallman, and Wald. All the independent claims (1, 20, and 26) require “the distributed blockchain computer system [to be] configured to receive, during the voting event and at one or more of a plurality of block chain addresses, respective ones of the voting tokens from the digital wallets of one or more of the owners or the digital wallets of one or more proxies of the owners.” According to the Examiner, Armstrong teaches “the distributed blockchain computer system” (Final Act. 15-16) and Wald teaches a “computer system is configured to receive, during the voting event and at one or more of a plurality of [block chain] addresses, respective ones of the voting tokens from the digital wallets of one or more of the owners or the digital wallets of one or more proxies of the owners” (Final Act. 19, citing Wald, Fig. 3, paras, 11, 12, 14, 15, 18, 49, 51). Then the Examiner finds “[i]t would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the blockchain based asset management of Armstrong and the electronic voting system of Wallman to incorporate the teachings of electronic voting (Wald [paras.] 11-12, 14-15, 18) of Wald for automated mechanism for voting. (Wald [para.] 18)” (Final Act. 19). We agree with Appellant that the Examiner’s reasoning for combining the teachings of Armstrong, Wallman, and Wald does not suffice as an articulated reasoning with a rational underpinning to support a conclusion of obviousness. See Appeal Br. 18. The rejection does not explain why one of ordinary skill in the art would look to Wald’s electronic voting system to modify Armstrong’s Appeal 2021-001640 Application 15/592,803 14 bitcoin transaction system and thereby reach what is claimed. “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417-418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The Examiner’s obviousness rejection is not sustained on the ground that a prima facie case of obviousness has not been made out in the first instance for the subject matter of independent claims 1, 20, and 26, and claims 6-10, 23-25, 29 depending therefrom. CONCLUSION The decision of the Examiner to reject claims 1-10 and 20-29 is reversed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-10, 20-29 112 Indefiniteness 1-10, 20-29 1-10 102(a)(1) Armstrong 1-10 1, 6-10, 20, 23- 26, 29 103(a) Armstrong, Wallman, Wald 1, 6-10, 20, 23- 26, 29 Overall Outcome 1-10, 20-29 REVERSED