Coinplug, Inc.

Patent Trials and Appeals Board

May 17, 2021

2021002415 (P.T.A.B. May. 17, 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.
15/845,224 12/18/2017 Joon Sun Uhr 11565US01CON 1714
154930 7590 05/17/2021
XSENSUS LLP
200 Daingerfield Road
Suite 201
Alexandria, VA 22314
EXAMINER
CASTILHO, EDUARDO D
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
05/17/2021 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):
Faith.Baggett@xsensus.com
Sandy.Miles@Xsensus.com
anaquadocketing@Xsensus.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOON SUN UHR, JAY WU HONG, and JOO HAN SONG
____________

Appeal 2021-002415
Application 15/845,2241
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
BRUCE T. WIEDER, Administrative Patent Judges.

WIEDER, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1, 3–5, 8, 9, 11, 12, and 16. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM and enter a NEW GROUND OF REJECTION pursuant
to our authority under 37 C.F.R. § 41.50(b).

1 We use the term “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
Coinplug, Inc. (Appeal Br. 2.)
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CLAIMED SUBJECT MATTER
Appellant’s “invention relates to a method for verifying authenticity
of a financial institution (FI) certificate.” (Spec. ¶ 3.)
Claims 1 and 9 are the independent claims on appeal. Claim 1 is
illustrative. It recites:
1. A method comprising:
a managing server creating a transaction information and
transmitting the transaction information to a blockchain server
for storage in the blockchain server, the transaction information
including a first index hash value of a first financial institution
certificate, wherein the creating includes generating the first
index hash value by
processing at the managing server the first financial
institution certificate with a hashing algorithm to create
the first index hash value;
the blockchain server storing the transaction information
along with a transaction ID and transmitting the transaction ID
to the managing server;
the managing server transmitting to the financial
institution terminal the transaction ID, received from the
blockchain server, and corresponding to the transaction
information;
a user terminal transmitting to the financial institution
terminal a first request for the first financial institution
certificate;
the financial institution terminal transmitting to the user
terminal the transaction ID and a second financial institution
certificate;
the user terminal transmitting to the managing server a
second request for determining whether the second financial
institution certificate is verified, wherein the second request
includes the transaction ID and the second financial institution
certificate;
the managing server acquiring the transaction information
from the blockchain server using the transaction ID;
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the managing server comparing (i) the first index hash
value associated with the first financial institution certificate, and
(ii) a second index hash value associated with the second
financial institution certificate and determining if there is a match
between the first hash value and the second hash value; and
the managing server providing to the user terminal a
verification result generated by comparing the first index hash
value and the second index hash value, the verification result
including an indication that the second financial institution
certificate is authentic in response to the managing server
determining that the match exists, and the verification result
including an indication that the second financial institution
certificate is not authentic in response to the managing server
determining that the match does not exist.

REJECTIONS2
Claims 1, 3–5, 8, 9, 11, 12, and 16 are rejected under 35 U.S.C. § 101
as directed to a judicial exception without significantly more.
Claims 1, 3–5, and 8 are rejected under 35 U.S.C. § 112(b) as
indefinite for being incomplete for omitting essential steps.
Claims 1, 3–5, 8, 9, 11, 12, and 16 are rejected under 35 U.S.C.
§ 112(b) as indefinite because: (1) it is unclear whether the claims require
the user terminal to request one certificate and receive another certificate,
and (2) it is unclear whether the “second financial institution certificate” is a
certificate of a second financial institution or whether it is a second
certificate of the financial institution.
Claims 9 and 12 are rejected under 35 U.S.C. § 112(b) as invoking
35 U.S.C. § 112(f) but failing to have written description disclosure of

2 The rejections of claims 1, 3–5, 8, 9, 11, 12, and 16 under 35 U.S.C. § 103
were withdrawn. (See Answer 4.)
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corresponding structure, material, or acts for performing the entire claimed
function, and clearly linking the structure, material, or acts to the function.
Claim 9 is rejected under 35 U.S.C. § 112(b) as indefinite because it is
a hybrid claim.

ANALYSIS
“Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.” 35 U.S.C. § 101. Section 101, however,
“contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable.” Alice Corp. v. CLS Bank
Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for Molecular Pathology v.
Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
Alice applies a two-step framework, earlier set out in Mayo
Collaborative Services v. Prometheus 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, 573 U.S. at 217.
Under the two-step framework, it must first be determined if “the
claims at issue are directed to a patent-ineligible concept.” Id. at 218. If the
claims are determined to be directed to a patent-ineligible concept, e.g., an
abstract idea, then the second step of the framework is applied to determine
if “the elements of the claim . . . contain[] an ‘inventive concept’ sufficient
to ‘transform’ the claimed abstract idea into a patent-eligible application.”
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Id. at 221 (internal quotation marks omitted) (citing Mayo, 566 U.S. at 72–
73, 79).
With regard to step one of the Alice framework, we apply a “directed
to” two-prong test to: 1) evaluate whether the claim recites a judicial
exception, and 2) if the claim recites a judicial exception, evaluate whether
the claim “appl[ies], rel[ies] on, or use[s] 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.” See USPTO, 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50, 54 (Jan. 7, 2019) (hereinafter “2019 Guidance”).
Here, the Examiner determines that claim 1 recites “electronic
recordkeeping and ID verification . . . which represent both a fundamental
economic practice and a commercial interaction, grouped within certain
methods of organizing human activity.” (Final Action 7.) The Examiner
additionally determines that claim 1 recites “performing a hash match, which
can be represented by a formula grouped within mathematical concepts.”
(Id.)
Appellant argues that claim 1 “recites an authentication analysis
system designed to address the problem of fraudulent activities (i.e.,
fraudulently issued FI certificates) associated with transactions between a
user client computer (i.e., user terminal) and a server computer (i.e., FI
terminal).” (Appeal Br. 13.)
Under step one of the Alice framework, we “look at the ‘focus of the
claimed advance over the prior art’ to determine if the claim’s ‘character as a
whole’ is directed to excluded subject matter.” Affinity Labs of Tex., LLC v.
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DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)).
The “directed to” inquiry . . . cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical products
and actions involves a law of nature and/or natural phenomenon
. . . . Rather, 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 matter.” Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015).

Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). In
other words, the first step of the Alice framework “asks whether the focus of
the claims is on the specific asserted improvement in [the relevant
technology] or, instead, on a process that qualifies as an ‘abstract idea’ for
which computers are invoked merely as a tool.” Id. at 1335–36; see also
2019 Guidance at 54–55.
The Specification provides evidence as to what the claimed invention
is directed. In this case, the Specification discloses that the “invention
relates to a method for verifying authenticity of a financial institution (FI)
certificate.” (Spec. ¶ 3.) Claim 1 provides further evidence. Claim 1 recites
“creating a transaction information and transmitting the transaction
information . . . , the transaction information including a first index hash
value of a first financial institution certificate,” “processing . . . the first
financial institution certificate with a hashing algorithm to create the first
index hash value,” “storing the transaction information along with a
transaction ID and transmitting the transaction ID,” “transmitting . . . a first
request for the first financial institution certificate,” “transmitting . . . the
transaction ID and a second financial institution certificate,” “transmitting
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. . . a second request for determining whether the second financial institution
certificate is verified,” “acquiring the transaction information . . . using the
transaction ID,” “comparing (i) the first index hash value associated with the
first financial institution certificate, and (ii) a second index hash value
associated with the second financial institution certificate and determining if
there is a match between the first hash value and the second hash value,” and
“providing . . . a verification result.”
The intrinsic evidence shows that claim 1 recites creating data
(determining a hash index value), transmitting data, analyzing data, creating
additional data, storing data, transmitting data, receiving data (acquiring the
transaction information), analyzing data (comparing hash values), and
providing results. Determining values, transmitting data, analyzing data,
storing data, receiving data, and providing results have been determined to
be directed to an abstract idea. See, e.g., Alice, 573 U.S. at 225 (using a
computer-implemented system “to obtain data, adjust account balances, and
issue automated instructions” did not result in claim being non-abstract),
Bozeman Fin. LLC v. Fed. Reserve Bank of Atlanta, 955 F.3d 971, 978 (Fed.
Cir. 2020) (determining claims to “a method of receiving data from two
financial records, storing that data, comparing that data, and displaying the
results” to be directed to an abstract idea); see also Content Extraction &
Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347
(Fed. Cir. 2014) (treating as an abstract idea “1) collecting data,
2) recognizing certain data within the collected data set, and 3) storing that
recognized data”), Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can.,
687 F.3d 1266, 1280 (Fed. Cir. 2012) (managing an account by performing
calculations and manipulating the results determined to be directed to an
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abstract idea). And “[a]s many cases make clear, even if a process of
collecting and analyzing information is ‘limited to particular content’ or a
particular ‘source,’ that limitation does not make the collection and analysis
other than abstract.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168
(Fed. Cir. 2018). The “character of [the] information simply invokes a
separate category of abstract ideas.” Id.
Claim 1 does not recite, e.g., what hashing algorithm is used, how the
managing server transmits and receives information, how the transaction ID
is created, how the blockchain server stores or transmits information, how
the user terminal transmits information, how the financial institution
terminal transmits information, how the user terminal transmits information,
how the managing server compares information, or how the second hash
value is created.
Regardless, Appellant attempts to analogize claim 1 to the claims in
the non-precedential decision In re Boding, 2017-008591 (PTAB Feb. 4,
2019). As noted above, Appellant argues that “[j]ust like Boding, claim 1 of
the present application recites an authentication analysis system designed to
address the problem of fraudulent activities (i.e., fraudulently issued FI
certificates) associated with transactions between a user client computer
(i.e., user terminal) and a server computer (i.e., FI terminal).” (Appeal
Br. 13.)
Subsequent to the Board’s issuance of the non-precedential decision
in Boding, the Federal Circuit issued its precedential decision in Bozeman.
Bozeman claimed a “method for detecting fraud in financial transactions
during a payment clearing process.” Bozeman, 955 F.3d at 976. Like
Appellant’s claim 1, claim 1 in Bozeman is “directed to the abstract idea of
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‘collecting and analyzing information for financial transaction fraud or error
detection.’” Id. at 978 (quoting Joint Appendix in Appeal 19-1020 at 33).
In view of the foregoing, we do not find Appellant’s attempt to analogize to
Boding to be persuasive of error.
Regardless, the recitations in Appellant’s claim 1 of creating a
transaction information including a first index hash value of a first FI
certificate, transmitting a request for the first FI certificate, transmitting a
request for determining whether a second FI certificate is verified, and
comparing the first index hash value to a second index hash value associated
with the second FI certificate to determine if the second FI certificate is
authentic, clearly recite practices for mitigating risk with respect to financial
institution certificates, i.e., economic principles or practices (including
hedging, insurance, mitigating risk), that are considered certain methods of
organizing human activity. (See 2019 Guidance at 52.) Therefore, we are
not persuaded that the Examiner erred in determining that claim 1 recites
elements of certain methods of organizing human activity. (See id.; see also
Final Action 7.)
With regard to our analysis under prong two, we note that the
limitations of claim 1 do not recite technological implementation details for
any of the elements. As discussed above, claim 1 does not recite, e.g., how
the managing server transmits and receives information, how the transaction
ID is created, how the blockchain server stores or transmits information,
how the user terminal transmits information, how the financial institution
terminal transmits information, how the user terminal transmits information,
how the managing server compares information, or how the second hash
value is created. “Indeed, the claim language here provides only a result-
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oriented solution, with insufficient detail for how a computer accomplishes
it. Our law demands more.” Intellectual Ventures I LLC v. Capital One Fin.
Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017).
Claim 1 is “focused on providing information . . . , not on improving
computers or technology.” Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d
1378, 1384 (Fed. Cir. 2019). “Like Electric Power, the purported advance
‘is a process of gathering and analyzing information of a specified content,
then displaying the results, and not any particular assertedly inventive
technology for performing those functions.’ We thus conclude that the
claim[ is] directed to an abstract idea.” Id. at 1385 (citation omitted).
In cases involving software innovations, such as we have here, the
inquiry as to whether the claims are directed to an abstract idea “often turns
on whether the claims focus on ‘the specific asserted improvement in
computer capabilities . . . or, instead, on a process that qualifies as an
“abstract idea” for which computers are invoked merely as a tool.’” Finjan,
Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303 (Fed. Cir. 2018) (quoting
Enfish, 822 F.3d at 1335–36). Here, the recited servers and terminals (i.e.,
managing server, blockchain server, financial institution terminal, and user
terminal) are invoked merely as tools. The asserted improvement is to the
data calculated and the results determined.
“[T]he focus of the claims is not a physical-realm improvement but an
improvement in wholly abstract ideas––the selection and mathematical
analysis of information, followed by reporting or display of the results.”
SAP Am., Inc., 898 F.3d at 1168 (“Moreover, the ‘investment’ character of
this information simply invokes a separate category of abstract ideas
involved in Alice and many of our cases—‘the creation and manipulation of
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legal obligations such as contracts involved in fundamental economic
practices.’” (quoting Elec. Power Grp., 830 F.3d at 1354)).
Regardless, Appellant argues that claim 1 recites a technical
improvement. Specifically, Appellant argues that claim 1 recites an
improvement in the “technical field of authenticating electronic documents
including FI certificates by employing a blockchain server to function as a
secure memory to avoid corruption of the transaction information and enable
the client terminal to avoid receiving fraudulent FI certificates.” (Appeal
Br. 15.) Appellant argues that claim 1
specifically recite[s] a managing server, a blockchain server, a
user terminal, and a FI terminal, each of which communicating
with each other. The claims therefore limit the claims to a
particular machine corresponding to a computer system that
includes the managing sever [sic] collaborating with the
blockchain server to provide a reliably [sic] way to securely store
and retrieve transaction information, as well as in conjunction
with the [sic, paragraph ends here].

(Id.)
With regard to the blockchain server, claim 1 merely recites its use to
receive, store, and transmit information, i.e., to perform routine tasks. (See
Answer 7.) Appellant does not allege to have invented blockchain or a
blockchain server. Nor does Appellant persuasively argue against the
Examiner’s findings that “the generic terms managing server, a blockchain
server, a user terminal, and a FI terminal are not directed to a particular
machine. Specifically, the disclosure and claims don’t even specify details
of a particular machine.” (Id. at 12.) Therefore, we do not find Appellant’s
arguments persuasive.
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Appellant argues that “the claims recite a verification and
authentication process that is limited in multiple ways that completely
avoids monopolizing the exception.” (Appeal Br. 15.) We do not find this
argument persuasive. Monopolization, i.e., preemption is not a separate test.
“Where a patent’s claims are deemed only to disclose patent ineligible
subject matter under the Mayo framework, as they are in this case,
preemption concerns are fully addressed and made moot.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
In other words, “preemption may signal patent ineligible subject matter,
[but] the absence of complete preemption does not demonstrate patent
eligibility.” Id.
Additionally, we do not find any indication in the Specification that
the claimed invention effects a transformation or reduction of a particular
article to a different state or thing. Nor do we find anything of record that
attributes an improvement in computer technology or functionality to the
claimed invention or that otherwise indicates that the claimed invention
“appl[ies], rel[ies] on, or use[s] 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.”
(See 2019 Guidance at 54–55.) In view of the above, we do not find
Appellant’s arguments persuasive.
Therefore, under prong one of the two prong test in the 2019
Guidance, claim 1 recites an abstract idea; and, under prong two, additional
elements in claim 1 do not “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
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exception.” (See 2019 Guidance at 54.) As such, under step one of the Alice
framework, the claim is directed to an abstract idea, and we move to step
two.
Step two of the Alice framework has been described “as 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.’” Alice, 573 U.S.
at 217–18 (brackets in original) (quoting Mayo, 566 U.S. at 72–73). Under
step two, we examine, inter alia, whether an additional element or
combination of elements “[a]dds a specific limitation or combination of
limitations that are not well-understood, routine, conventional activity in the
field, which is indicative that an inventive concept may be present.” (2019
Guidance at 56.)
Appellant presents no arguments under step two of the Alice
framework. Nonetheless, for completeness, we analyze claim 1 under step
two. Taking the claim elements separately, the functions performed in
claim 1 by the generically recited managing server, blockchain server,
financial institution server, and user terminal to determine values, transmit
data, analyze data, store data, receive data, and provide results are purely
conventional. Determining values, transmitting data, analyzing data, storing
data, receiving data, and providing results are well-understood, routine, and
conventional functions previously known to the industry. See Elec. Power
Grp., 830 F.3d at 1356 (The claims “do not include any requirement for
performing the claimed functions of gathering, analyzing, and displaying in
real time by use of anything but entirely conventional, generic
technology.”); see also Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d
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1306, 1335 (Fed. Cir. 2015) (determining claims requiring “arranging,
storing, retrieving, sorting, eliminating, determining” to “involve the normal,
basic functions of a computer” and to be “conventional, routine, and well-
known”), Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307,
1318 (Fed. Cir. 2016) (determining receiving, processing, and sending data
to be well-known, generic computer-implemented steps), Content Extraction
& Transmission LLC, 776 F.3d at 1347 (“The concept of data collection,
recognition, and storage is undisputedly well-known.”), In re Katz
Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed.
Cir. 2011) (“Absent a possible narrower construction of the terms
‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved
by any general purpose computer without special programming.”).
Considered as an ordered combination, the generic computer
components of Appellant’s claimed invention add nothing that is not already
present when the limitations are considered separately. For example,
claim 1 does not purport to improve the functioning of the servers or
terminals themselves. Nor does it effect an improvement in any other
technology or technical field. Instead, claim 1 amounts to nothing
significantly more than an instruction to apply the abstract idea using generic
computer components performing routine computer functions. That is not
enough to transform an abstract idea into a patent-eligible invention. See
Alice, 573 U.S. at 225–26. We are not persuaded that the Examiner erred in
rejecting claim 1. Appellant does not separately argue independent claim 9
or dependent claims 3–5, 8, 11, 12, and 16. These claims fall with claim 1.
See 37 C.F.R. § 41.37(c)(1)(iv).
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The § 112(b) rejection and new ground of rejection re: essential steps
The Examiner determines that claim 1 is “incomplete for omitting
essential steps.” (Final Action 11.) Specifically, the Examiner determines
that
the specification as filed explicitly recites that the claimed step
“a managing server creating a transaction information and
transmitting the transaction information to a blockchain server”
is contingent on the receipt of the FI certificate from the FI
terminal (language “if the information on the first FI certificate
is transmitted from the FI terminal 100... instruct...”), the claims
do not require this essential step.

(Id.) The Examiner explains that
without receiving and processing the information received from
the FI terminal, the managing server would be unable to perform
the further step of “transmitting ... the transaction ID” to the
financial institution terminal, merely because without receiving
this information upfront, the managing server would be unaware
of which FI server [sic, terminal] the response should be given.

(Answer 20.)
Appellant argues that receipt of the FI certificate from the FI terminal
is not an essential step. (Appeal Br. 16 (citing Spec. ¶ 52).) Paragraph 52
discloses that
if the information on the first FI certificate for the client is created
by the FI terminal 100, a personnel of the financial institution
who operates the FI terminal 100 may (i) record the information
on the first FI certificate in a first DB 111, (ii) transmit the
information on the first FI certificate to the managing server 200
in order to request the verification of record of the information
on the first FI certificate at a step of S110.

(Spec. ¶ 52.)
As an initial matter, we note that claim 1 recites “the managing server
transmitting to the financial institution terminal the transaction ID.”
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(Emphasis added.) The term “the financial institution terminal” lacks
antecedent basis. For purposes of our analysis, we will consider the term to
be a typographical error requiring correction, and treat the term as “a
financial institution terminal.”
Regardless, we do not find in the Specification language indicating
that it is essential that the managing server receive the FI certificate from the
same FI terminal to which it later transmits the transaction ID, or even that a
FI terminal transmit the first FI certificate to the managing server. We agree
with the Examiner that claim 1 requires the first FI certificate to be
processed at the managing server (to create the first index hash value), and
requires the managing server to transmit the transaction ID to a FI terminal.
And although it may be convenient in the case where a FI terminal creates a
FI certificate to have that same FI terminal also receive the transaction ID
from the managing server, we do not agree that it is essential to the
invention. Lack of recitation of a particular FI terminal as the source of the
first FI certificate does not result in the claim being inoperative.3 See, e.g.,
Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1337–38 (Fed.
Cir. 2003) (citing In re Mayhew, 527 F.2d 1229, 1233 (CCPA 1976)).
Claim 9 includes similar language (but does not suffer from the antecedent
basis problem of claim 1). Therefore, we will reverse this rejection of
claims 1 and 9.

3 With regard to the lack of a recitation in the claim of the source of the first
FI certificate, we note that the Examiner does not reject claim 1 for either
non-enablement or lack of adequate written description support. See, e.g.,
MPEP § 2172.01.
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In view of the above, and pursuant to our authority under 37 C.F.R.
§ 41.50(b), we enter a NEW GROUND OF REJECTION against claims 1,
3–5, and 8 under 35 U.S.C. § 112(b), as indefinite because the term “the
financial institution terminal” lacks antecedent basis.

The § 112(b) rejections re: lack of clarity
The Examiner determines that in independent claims 1 and 9, it is
unclear: (1) “whether the claims require the user terminal to request one
certificate (i.e. ‘a first’) and receive another certificate (‘i.e. a second’)” and
(2) “whether the ‘second financial institution certificate’ is a certification of
a ‘second financial institution’ or whether it is a ‘second certificate’ of the
‘financial institution.’” (Final Action 12.)
With regard to (1), Appellant argues that there is no ambiguity. We
agree. Claim 1 recites “a user terminal transmitting to the financial
institution terminal a first request for the first financial institution
certificate,” and “the financial institution terminal transmitting to the user
terminal the transaction ID and a second financial institution certificate.” If
the claim recited requesting one certificate and receiving that same
certificate, the claim would have defined the requested and received
certificates to be the same. It is the possibility that the certificates may not
be the same that creates the reason to verify. We will reverse this rejection
of claims 1 and 9.
With regard to (2), Appellant argues that
[w]hether the “second financial institution certificate” is a
certification of a “second financial institution” or a “second
certificate” of the “financial institution” is irrelevant to the
definiteness of the claim. In fact, the only requirement of the
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claim is that it is in fact a financial institution certificate. But,
unless it is the “second certificate” of the “financial institution”
and it is identical to the “first financial institution certificate,” it
will not be verified as authentic.

(Appeal Br. 17.) We do not find this argument persuasive.
The Federal Circuit has stated that
when the USPTO has initially issued a well-grounded rejection
that identifies ways in which language in a claim is ambiguous,
vague, incoherent, opaque, or otherwise unclear in describing
and defining the claimed invention, and thereafter the applicant
fails to provide a satisfactory response, the USPTO can properly
reject the claim as failing to meet the statutory requirements of
§ 112(b).

In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014).
“[W]e employ a lower threshold of ambiguity when reviewing a
pending claim for indefiniteness than those used by post-issuance reviewing
courts.” Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008)
(precedential). Specifically, “if a claim is amenable to two or more plausible
claim constructions, the USPTO is justified in requiring the applicant to
more precisely define the metes and bounds of the claimed invention by
holding the claim unpatentable under 35 U.S.C. § 112[(b)], as indefinite.”
Id.; see also In re Packard, 751 F.3d at 1311.
In this case, the Examiner has explained why the term “second
financial institution certificate” is ambiguous. It is, e.g., unclear whether a
FI certificate from a second financial institution satisfies the requirements of
claim 1 as a “second financial institution certificate.” Therefore, we will
affirm this rejection of claims 1 and 9.

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The § 112(b) rejection re: invocation of § 112(f)
The Examiner determines that the claim limitations “‘a user terminal
configured to ... transmit ... receive ... transmit ... receive ...’ (claim 9),” “‘a
financial terminal configured to ... transmit ... receive ... transmit ...’
(claim 9),” “‘a blockchain server configured to ... receive ... transmit ...’
(claim 9),” “‘a managing server configured to ... create ... transmit ...
acquire ... compare ... provide ...’ (claim 9)” and “‘a managing server ...
configured to ... manipulate and acquire ...’ (claim 12) (emphasis on
functional language)” all invoke § 112(f) as reciting means-plus-function
language. (Final Action 12–13.)
Appellant disagrees and argues that “[t]he terms ‘terminal’ and
‘server’ recite more than sufficient structure to perform the functions recited
in claims 9 and 12.” (Appeal Br. 17.)
Section 112(f) states:
An element in a claim for a combination may be expressed
as a means or step for performing a specified function without
the recital of structure, material, or acts in support thereof, and
such claim shall be construed to cover the corresponding
structure, material, or acts described in the specification and
equivalents thereof.

In enacting § 112(f),
Congress struck a balance in allowing patentees to express a
claim limitation by reciting a function to be performed rather
than by reciting structure for performing that function, while
placing specific constraints on how such a limitation is to be
construed, namely, by restricting the scope of coverage to only
the structure, materials, or acts described in the specification as
corresponding to the claimed function and equivalents thereof.

Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1347 (Fed. Cir. 2015).
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“[T]he use of the word ‘means’ in a claim element creates a rebuttable
presumption that § 112[(f)] applies.” Id. at 1348. Here, because the claims
do not use the word “means,” the presumption does not apply. But this does
not end our inquiry.
In making the assessment of whether the limitation in
question is a means-plus-function term subject to the strictures
of § 112[(f)], [Federal Circuit] cases have 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 ordinary skill in the art to have a sufficiently
definite meaning as the name for structure.

Id.
With regard to the term “terminal,” the Examiner finds that “the
specification does not offer a lexicographic definition of the term” and that
“absent a lexicographic definition, the term ‘terminal’ is construed as being
a generic placeholder modified by functional language.” (Answer 26.) We
do not agree.
Claim 9 recites that the terminals are configured to perform generic
tasks associated with terminals, e.g., transmitting and receiving information.
In this context, the lack of a “lexicographic definition” in the Specification
does not establish that one of ordinary skill in the art would not have
understood the term “terminal” to have a sufficiently definite meaning.
With regard to the term “server,” the Examiner finds that “the
specification does not offer a lexicographic definition of the term,” that
“[o]ne of ordinary skill in the art would reasonably convey [sic] that the term
‘server’ is a piece of computer hardware or software,” and therefore, that
“one of ordinary skill in the art would reasonably convey [sic] that the word
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‘server’ is a generic placeholder for either physical structures or software.”
(Id. (emphasis omitted).) We do not agree.
Claim 9 recites that the servers are configured to perform generic
tasks associated with servers, e.g., transmitting, receiving, storing, and
analyzing information. The lack of a “lexicographic definition” in the
Specification does not establish that one of ordinary skill in the art would not
have understood the term “server” to have a sufficiently definite meaning.
Moreover, where a server or general purpose computer performs generic
functions, e.g., processing, receiving, and storing, “those functions can be
achieved by any general purpose computer without special programming.
As such, it [is] not necessary to disclose more structure than the general
purpose computer that performs those functions.” In re Katz Interactive
Call Processing Patent Litig., 639 F.3d at 1316. Therefore, we will reverse
this rejection of claims 1 and 9.

The hybrid claim rejection
Claim 9 is rejected as “indefinite because it is a hybrid claim.” (Final
Action 14.) The Examiner finds “[e]vidence to support that claim[] 9 [is]
drawn to a product includes the recitation of: ‘a system’; [o]n the other
hand, evidence to support a position that the claim is drawn to a process
includes: ‘wherein creating the transaction information includes generating
. . . .’” (Id.)
Appellant argues that claim 9 recites a system and that “[t]he mere
recitation of functions does not convert those limitations into method steps.”
(Appeal Br. 18.)
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“[W]hile a claim directed to both a method and an apparatus may be
indefinite, ‘apparatus claims are not necessarily indefinite for using
functional language.’” MasterMine Software, Inc. v. Microsoft Corp., 874
F.3d 1307, 1313 (Fed. Cir. 2017) (quoting Microprocessor Enhancement
Corp. v. Tex. Instruments Inc., 520 F.3d 1367, 1375 (Fed. Cir. 2008). Here,
as in MasterMine, the claim is simply an apparatus claim with functional
language.
The concern underlying a single claim covering both a method of
using an apparatus and the apparatus itself is that it can be unclear whether
infringement occurs when the user uses the apparatus or when the apparatus
is created. Id. We see no such confusion here. Claim 9 recites, e.g., “a
managing server configured to create the transaction information . . .
wherein creating the transaction information includes generating the first
index hash value.” Infringement of claim 9 would not require creation of
transaction information or the generation of a first index hash value.
Infringement would require that the managing server be configured to create
the transaction information and to generate the first index hash value. In
other words, it is “clear ‘that infringement occurs when one makes, uses,
offers to sell, or sells the claimed apparatus.’” MasterMine, 874 F.3d at
1315 (quoting HTC Corp. v. IPCom GmbH & Co., KG, 667 F.3d 1270, 1277
(Fed. Cir. 2012). Therefore, we will reverse this rejection of claim 9.

CONCLUSION
The Examiner’s rejection of claims 1, 3–5, 8, 9, 11, 12, and 16 under
35 U.S.C. § 101 is affirmed.
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The Examiner’s rejection of claims 1, 3–5, and 8 under 35 U.S.C.
§ 112(b) as indefinite for being incomplete for omitting essential steps is
reversed.
The Examiner’s rejection of claims 1, 3–5, 8, 9, 11, 12, and 16 under
35 U.S.C. § 112(b) as indefinite because it is unclear whether the claims
require the user terminal to request one certificate and receive another
certificate is reversed.
The Examiner’s rejection of claims 1, 3–5, 8, 9, 11, 12, and 16 under
35 U.S.C. § 112(b) as indefinite because it is unclear whether the “second
financial institution certificate” is a certificate of a second financial
institution or whether it is a second certificate of the financial institution is
affirmed.
The Examiner’s rejection of claims 9 and 12 under 35 U.S.C. § 112(b)
as invoking 35 U.S.C. § 112(f) but failing to have written description
disclosure of corresponding structure, material, or acts for performing the
entire claimed function and clearly linking the structure, material, or acts to
the function is reversed.
The Examiner’s rejection of claim 9 under 35 U.S.C. § 112(b) as
indefinite because it is a hybrid claim is reversed.
Specifically:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis  Affirmed Reversed New
Ground
1, 3–5, 8,
9, 11, 12,
16
101 Eligibility 1, 3–5, 8,
9, 11, 12,
16

1, 3–5, 8 112(b) Indefinite for
omitting essential
steps
1, 3–5, 8
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Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis  Affirmed Reversed New
Ground
1, 3–5, 8,
9, 11, 12,
16
112(b) Indefinite as
unclear re:
certificate
requested vs.
certificate received
1, 3–5, 8,
9, 11, 12,
16

1, 3–5, 8,
9, 11, 12,
16
112(b) Indefinite as
unclear re: second
financial institution
certificate
1, 3–5, 8,
9, 11, 12,
16

9, 12 112(b) Written description 9, 12
9 112(b) Indefinite as hybrid
claim
9
1, 3–5, 8 112(b) Indefinite for lack
of antecedent basis
1, 3–5, 8
Overall
Outcome
1, 3–5, 8,
9, 11, 12,
16
1, 3–5, 8

Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a NEW
GROUND OF REJECTION against claims 1, 3–5, and 8 under 35 U.S.C.
§ 112(b), as indefinite because the term “the financial institution terminal”
lacks antecedent basis.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides that, “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) further provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THIS DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
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(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the Examiner, in which event the
proceeding will be remanded to the Examiner.
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record.
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; 37 C.F.R. § 41.50(b)