Ece Kamar et al.

Patent Trials and Appeals Board

Jun 12, 2020

2018006681 (P.T.A.B. Jun. 12, 2020)

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.
12/491,635 06/25/2009 Ece Kamar 215786-0030-00-
US-564845
5779
141674 7590 06/12/2020
Faegre Drinker Biddle & Reath LLP (Microsoft)
1500 K Street, N.W.
Suite 1100
Washington, DC 20005
EXAMINER
WHITE, LANCE WILLIAM
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
06/12/2020 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):
DBRIPDocket@faegredrinker.com
usdocket@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ECE KAMAR and ERIC J. HORVITZ

Appeal 2018-006681
Application 12/491,635
Technology Center 3600
____________

Before ERIC S. FRAHM, NORMAN H. BEAMER,
and MICHAEL T. CYGAN, Administrative Patent Judges.

BEAMER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 34–53. Claims 1–33 are cancelled. We have
jurisdiction over the pending rejected claims under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Microsoft
Technology Licensing, LLC. (Appeal Br. 1.)
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THE INVENTION
Appellant’s disclosed and claimed invention is directed to generating
and implementing collaborative plans that achieve goals for sets of
individual agents based on a consideration of individual and group
preferences — for example, a ridesharing plan. (Abstract, Spec. 1.)
Independent claim 34, reproduced below, is illustrative of the subject
matter on appeal:
34. A computer-implemented method for a collaborative plan
generation based on varying preferences and constraints, the
method comprising:
receiving, by a computing device, a plurality of
commute plan preferences of a corresponding plurality of
agents, the commute plan preferences of each agent
including an origin location, a destination location, and a
time of trip;
generating, by the computing device, a rideshare
plan based on the plurality of commute plan preferences
of the corresponding plurality of agents, wherein the
rideshare plan includes one driver agent of the plurality
of agents having a driver origin location and a driver
destination location and a plurality of rider agents of the
plurality of agents, each rider agent having a rider origin
location and a rider destination location, and wherein the
rideshare plan includes a plurality of stop points
corresponding to each rider origin location and each rider
destination location;
receiving, by the computing device during
execution of the rideshare plan, a new commute plan
preference of a new rider agent, the new commute plan
preference of the new rider agent including a new rider
origin location, a new rider destination location, and a
new rider time of trip; and
computing, by the computing device during
execution of the rideshare plan, an updated rideshare plan
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based on the rideshare plan and the new commute plan
preference of the new rider, the updated rideshare plan
including new stop points for the new rider
corresponding to the new rider origin location and the
new rider destination location, the new stop points being
within a predetermined radius around the stop points of
the plurality of rider agents.

REJECTIONS
The Examiner rejected claims 34–53 under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. (Final Act. 2–14.)
The Examiner rejected claims 34–53 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
(Final Act. 15–23.)2
The Examiner rejected claims 34–53 under 35 U.S.C. § 102(b) as
being anticipated by Olmi (GB 2397683 A, pub. July 28, 2004). (Final Act.
24–37.)
ISSUES ON APPEAL
Appellant’s arguments present the following dispositive issues:3
First Issue: Whether the Examiner erred in concluding claims 34–53
are directed to patent-ineligible subject matter. (Appeal Br. 17–29.)
Second Issue: Whether the Examiner erred in finding claims 34–53
fail to comply with the written description requirement. (Appeal Br. 29–36.)

2 The Examiner withdrew a rejection of claims 34–53 under 35 U.S.C.
§ 112, second paragraph, as indefinite. (Ans. 3–4.)
3 Rather than reiterate the arguments of Appellant and the positions of the
Examiner, we refer to the Appeal Brief (filed Mar. 9, 2018); the Reply Brief
(filed June 15, 2018); the Final Office Action (mailed Nov. 2, 2017); and the
Examiner’s Answer (mailed May 16, 2018) for the respective details.
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Third Issue: Whether the Examiner erred in finding claims 34–53
anticipated by Olmi. (Appeal Br. 36–40.)
ANALYSIS
First Issue
The Examiner concludes claims 34–53 are patent-ineligible under
35 U.S.C. § 101 because the claims are directed to “a method of organizing
human activities and an idea of itself, as well as using mathematical
relationships/formulas.” (Final Act. 4.) The Examiner further concludes
that “[t]he claims do not include additional elements that are sufficient to
amount to significantly more than the judicial exception. . . .,” finding that
the only “additional elements” comprised “a computer performing generic
functions.” (Id. at 4, 12.)
Appellant argues that the claims “contain meaningful limitations that
sufficiently limit the claims to a practical application,” specifically pointing
to the independent claim limitations that receive, “during execution of the
rideshare plan, a new commute plan preference of a new rider agent,” and
compute, “during execution of the rideshare plan, an updated rideshare plan
based on the rideshare plan and the new commute plan preference of the new
rider,” with “the new stop points being within a predetermined radius around
the stop points of the plurality of rider agents.” (Appeal Br. 18–19.)
Appellant argues that the Examiner’s conclusion that these limitations are
part of an abstract idea is conclusory and fails to consider the claims as a
whole. (Id. at 22, 25.)
Furthermore, argues Appellant, for the same reason (i.e., the receiving
and computing of a new commute preference), “the claims are patent
eligible subject matter because they constitute an improvement to the
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technical field.” (Id. at 26.) Relying on McRO, Inc. v. Bandai Namco
Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016), Appellant also argues
the claims are not directed to an abstract idea because they “do not preempt
the basic tools of science.” (Id. at 27–28.) Finally, Appellant argues that the
Examiner failed to meet the standards of Berkheimer v. HP Inc., 881 F.3d
1360, 1369 (Fed. Cir. 2018), regarding the factual support required for a
finding that claimed subject matter was well-understood, routine, and
conventional. (Reply Br. 2–3.)
As set forth below, we are not persuaded the Examiner erred. An
invention is patent-eligible if it claims a “new and useful process, machine,
manufacture, or composition of matter.” 35 U.S.C. § 101. Here,
independent claim 34 and its dependent claims relate to a method,
independent claim 41 and its dependent claims relate to a system; and
independent claim 48 and its dependent claims relate to a non-transitory
computer-readable storage medium — i.e., a process, machine, or
manufacture, respectively. However, the Supreme Court has long held that
“[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) (quoting Assoc. for Molecular Pathology v. Myriad Genetics, Inc.,
569 U.S. 576, 598–99 (2013)). The “abstract ideas” category embodies the
longstanding rule that an idea, by itself, is not patentable. Alice, 573 U.S. at
216–17.
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first
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determine what concept the claim is “directed to.” See Alice, 573 U.S. at
219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court
also indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
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formula to a particular technological environment.” Id. (citation omitted)
(citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that
an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). An
“inventive concept” is “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.’” 573 U.S. at 217–18.
“A claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” 573 U.S. at 221 (alterations in original)
(quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer
implementation[] fail[s] to transform that abstract idea into a patent-eligible
invention.” Id.
Further to the Alice/Mayo analytical framework, after the mailing of
the Answer and the filing of the Briefs in this case, in January 2019, the U.S.
Patent and Trademark Office (USPTO) published revised guidance on the
application of § 101. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Revised Guidance”).4 “All

4 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
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USPTO personnel are, as a matter of internal agency management, expected
to follow the guidance.” Id. at 51; see also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, we
first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th
ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).5
2019 Revised Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or

USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).
5 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance — Section III(A)(2), 84
Fed. Reg. 54–55.
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(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
2019 Revised Guidance, 84 Fed. Reg. at 52–56.
In evaluating the claims at issue here, we consider claim 34 as
representative, consistent with how Appellant and the Examiner analyze the
claims. See 37 C.F.R. § 41.37(c)(1)(iv)(2017). We agree with the Examiner
that claim 34 recites, aside from computer references (in square brackets
below) to a certain method of organizing human activity — collaborative
plan generation:6
34. A [computer-implemented] method for a collaborative plan
generation based on varying preferences and constraints, the
method comprising:
receiving, [by a computing device], a plurality of
commute plan preferences of a corresponding plurality of
agents, the commute plan preferences of each agent
including an origin location, a destination location, and a
time of trip;
generating, [by the computing device], a rideshare
plan based on the plurality of commute plan preferences
of the corresponding plurality of agents, wherein the
rideshare plan includes one driver agent of the plurality
of agents having a driver origin location and a driver
destination location and a plurality of rider agents of the
plurality of agents, each rider agent having a rider origin

6 We do not consider the Examiner’s alternative conclusion that the claims
are directed to “mathematical relationships/formulas.” (Final Act. 4.)
Although the specification includes mathematical formulas as part of the
disclosure, a claim does not recite a mathematical concept (i.e., the claim
limitations do not fall within the mathematical concept grouping), if it is
only based on or involves a mathematical concept. See, e.g., Thales Visionix
Inc. v. United States, 850 F.3d 1343, 1348-49 (Fed. Cir. 2017).
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location and a rider destination location, and wherein the
rideshare plan includes a plurality of stop points
corresponding to each rider origin location and each rider
destination location;
receiving, [by the computing device during
execution of the rideshare plan], a new commute plan
preference of a new rider agent, the new commute plan
preference of the new rider agent including a new rider
origin location, a new rider destination location, and a
new rider time of trip; and
computing, [by the computing device] during
execution of the rideshare plan, an updated rideshare plan
based on the rideshare plan and the new commute plan
preference of the new rider, the updated rideshare plan
including new stop points for the new rider
corresponding to the new rider origin location and the
new rider destination location, the new stop points being
within a predetermined radius around the stop points of
the plurality of rider agents.
(Appeal Br. 42–43.) As the Examiner concludes, other than the reference to
a computing device, all of the above steps are part of a certain method of
organizing human activity — collaborative plan generation, such as
determining rideshare plans. (Final Act. 4.) See In re Maucorps, 609 F.2d
481 (CCPA 1979) (using an algorithm for determining the optimal number
of visits by a business representative to a client). As stated in the Revised
Guidance, abstract ideas include certain methods of organizing human
activity. (Revised Guidance, 84 Fed. Reg. at 52). Therefore, we agree with
the Examiner that the subject matter of claim 34 recites an abstract idea, as
do the remaining claims.
Further pursuant to the Revised Guidance, we consider whether there
are additional elements set forth in claim 34 that integrate the judicial
exception into a practical application. Revised Guidance, 84 Fed. Reg. at
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54–55. Here, as discussed, Appellant argues that the requirement of
“computing, [] during executing of the rideshare plan, an updated rideshare
plan based on the rideshare plan and the new commute plan preference of
the new rider,” are “specific, concrete steps, which thus sets the claims
outside the Office Action's broad definition of an abstract idea,” (Appeal
Br. 23, 25.) However, this requirement, directed to updating the rideshare
plan during its execution, is itself part of the abstract idea of collaborative
plan generation as recited in the claims, and as such cannot form the basis
for concluding that the recited abstract idea is integrated into a practical
application. 2019 Revised Guidance, 84 Fed. Reg. 54–55 (“evaluate
integration into a practical application by: (a) Identifying whether there are
any additional elements recited in the claim beyond the judicial
exception(s)”); 2019 Revised Guidance, fn. 24 (“USPTO guidance uses the
term ‘additional elements’ to refer to claim features, limitations, and/or steps
that are recited in the claim beyond the identified judicial exception.”).
Appellant also argues that the claims “are patent eligible subject
matter because they constitute an improvement to the technical field.”
(Appeal Br. 26.) However, other than the requirement of computer
implementation, there is nothing in the claims that relates to technology.
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Alice, 573 U.S. at 221.
Nor does the subject matter of the claims contain additional elements
that implement the judicial exception with a “particular machine,” because
the claims do not specify any details in regard to collaborative plan
generation beyond the abstract idea. See MPEP § 2106.05 (b). Further, the
method does not transform matter; at best it transforms information. See
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MPEP § 2106.05(c). Nor does claim 34 have any other meaningful
limitations (MPEP § 2106.05 (e)), or any of the other considerations set
forth in the Revised Guidance regarding a determination of whether
additional elements integrate the judicial exception into a practical
application. See Revised Guidance, 84 Fed. Reg. at 55. Accordingly, we
conclude that the subject matter of claim 34 (and the remaining claims) is
directed to a method of organizing human activity — collaborative plan
generation — and thus is directed to abstract ideas, and there are no
additional elements recited therein that would integrate the abstract ideas
into a practical application.
Turning to the second step of the Alice inquiry, we consider the
elements of the claims “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.” 573 U.S. at 217
(quoting Mayo, 566 U.S. at 79, 78 (2012)). We do not agree with Appellant
that there are any additional elements of claim 34, whether taken
individually or in combination, that would add “significantly more” to the
basic collaborative plan generation abstract idea encompassed by the claims
sufficient to transform the claimed abstract idea into a patent-eligible
application. Alice, 573 U.S. at 223 (“[T]he mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention.”). Other than using generic computer technology, the
claimed improvement consists of the claimed abstract idea itself. “It is clear
from Mayo that the ‘inventive concept’ cannot be the abstract idea itself.”
Aatrix Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354, 1359
(Fed. Cir. 2018). Moreover, “[p]atent law does not protect claims to an
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‘asserted advance in the realm of abstract ideas . . . no matter how
groundbreaking the advance.’” 890 F.3d at 1359.
As discussed above, Appellant argues that the subject matter of the
claims embodies an improvement in technology. (Appeal Br. 26–27.)
However, as discussed, the claimed invention here only uses generic
computing components to implement an abstract idea as noted previously.
Appellant also argues the specific steps of the claims “do not preempt
the basic tools of science.” (Appeal Br. 27.) However, “[w]hile preemption
may signal patent ineligible subject matter, the absence of complete
preemption does not demonstrate patent eligibility.” Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
Appellant also argues the Examiner failed to consider the claims in
light of the USPTO “Berkheimer” guidance. (Reply Br. 2–3.) However, the
Examiner’s finding is consistent with that guidance:
[T]he Specification notes that the client device may be any
computing device that has network access capabilities (0019),
notes that the processor, memory, interface and client devices
are recited at a high level of generality and the specification
describes the processor and memory as a general purpose
computer component (0096), cites the process may be
implemented with other system architectures not described
(0083) (See also, 0083 and 0092-0096 discussing the process
and system structure in general, not intending to suggest any
limitation as to the scope of use or functionality of the various
embodiments using any suitable device).
(Final Act. 12.)
Accordingly, we sustain the Examiner’s 35 U.S.C. § 101 rejection of
claim 34. Appellant provides no arguments that would differentiate the
remaining claims from claim 34. Thus, the foregoing analysis of claim 34 is
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exemplary of that for claims 35–53. See 37 C.F.R. § 41.37(c)(1)(iv).
Therefore, we also sustain the Examiner’s 35 U.S.C. § 101 rejection of those
claims.
Second Issue
The Examiner rejects claims 34–53 because:
[T]he Specification, as originally filed . . . recites a plurality of
functions and processes as being required to be performed in
order to perform the function of generating a rideshare plan
based on the plurality of commute plan preferences of the
corresponding plurality of agents, as claimed without providing
an adequate written description of a process or algorithm for
performing those functions.
(Final Act. 18.) In addition, for claims 39, 46, and 53, the Examiner finds
that the additional requirement of generating a rideshare plan based on
“personal inconvenience cost” is insufficiently described and, because it was
added during prosecution, comprises new matter. (Final Act. 20–23.) The
functions and processes referred to are those that are described in the
illustrative embodiment set forth in the specification for carrying out the
claimed steps of receiving commute plan preferences, generating a rideshare
plan (including using personal inconvenience cost for the above dependent
claims), receiving a new commute plan preference, and computing an
updated rideshare plan. (Spec. ¶¶ 16–91.)
Appellant argues the Examiner’s rejections fail to establish the basic
findings of fact as to what the specification would have taught to a person of
ordinary skill in the art, but rather are based on conjecture. (Appeal Br. 33.)
We agree with Appellant. “The ‘written description’ requirement serves a
teaching function . . . in which the public is given ‘meaningful disclosure in
exchange for being excluded from practicing the invention for a limited
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period of time.”’ University of Rochester v. G.D. Searle & Co., Inc., 358
F.3d 916, 922 (Fed. Cir. 2004) (citation omitted). Another “purpose of the
‘written description’ requirement is … [to] convey with reasonable clarity to
those skilled in the art that, as of the filing date [ ], [the applicant] was in
possession of the invention.” Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555,
1563-64 (Fed. Cir. 1991). See also Enzo Biochem Inc. v. Gen-Probe Inc.,
296 F.3d 1316, 1329 (Fed. Cir. 2002). The requirement is satisfied when the
specification “set[s] forth enough detail to allow a person of ordinary skill in
the art to understand what is claimed and to recognize that the inventor
invented what is claimed.” University of Rochester, 358 F.3d at 928, 69.
Whether or not a specification satisfies the requirement is a question of fact,
which must be resolved on a case-by-case basis (Vas-Cath, 935 F.2d at
1562–63), and it is the examiner's “initial burden [to] present[ ] evidence or
reasons why persons skilled in the art would not recognize in the disclosure
a description of the invention defined by the claims” (In re Wertheim, 541
F.2d 257, 263 (CCPA 1976)).
For the claims at issue, which involve functions being performed by a
computer, the specification must explain how the inventor intends to achieve
the claimed function to satisfy the written description requirement. See,
e.g., Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681–
683 (Fed. Cir. 2015). Where the function is supported by an algorithm, that
algorithm may be expressed “in any understandable terms including as a
mathematical formula, in prose, or as a flow chart, or in any other manner
that provides sufficient structure.” Finisar Corp. v. DirecTV Grp., Inc., 523
F.3d 1323, 1340 (Fed. Cir. 2008).
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Here, the specification sets forth in considerable detail a description of
embodiments of the claimed subject matter which support the claims.
Appellant points to the Specification’s discussion of mathematical formulas
by which the “personal inconvenience cost” may be calculated. (Appeal Br.
35 (citing Spec. ¶¶ 44–55)(. The Examiner cites two particular formulas for
such calculation. (Ans. 24 (citing Spec. ¶¶ 47–48)). The Examiner has not
explained why one having ordinary skill in the art at the relevant time would
not have understood Appellant to possess the claimed calculation of a
personal inconvenience cost, or of any other claimed function. Nor has the
Examiner asserted, supported by adequate explanation, that the formulas and
algorithms disclosed are inadequate to show possession of the scope of the
claims. Reiffin v. Microsoft Corp., 214 F.3d 1342, 1345 (Fed. Cir. 2000)
(“The purpose of [the written description requirement] is to ensure that the
scope of the right to exclude, as set forth in the claims, does not overreach
the scope of the inventor’s contribution to the field of art as described in the
patent specification”); cf. LizardTech Inc. v. Earth Resource Mapping Inc.,
424 F.3d 1336, 1345 (Fed. Cir. 2005) (“A claim will not be invalidated on
[§] 112 grounds simply because the embodiments of the specification do not
contain examples explicitly covering the full scope of the claim language.”).
The Examiner has not made a prima facie showing that this description is
inadequate. Therefore, we do not sustain the Examiner’s written description
rejections of claims 34–53.
Third Issue
In rejecting claims 34–53 as anticipated by Olmi, for the claim
requirement, “computing . . . an updated rideshare plan . . . including new
stop points for the new rider . . . the new stop points being within a
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predetermined radius around the stop points of the plurality of rider agents,”
the Examiner relies on the disclosure in Olmi in which a “journey request”
from travelers who have not yet been allocated a transit vehicle is satisfied if
the current geographic position of a transit vehicle is within a given driving
distance radius of the traveler’s current location. (Final Act. 29–30; Olmi
pp. 33, 35–36.)
Appellant argues:
Appellant submits that [new stop points] being with[in] a
predetermined radius around the stop points . . . is not disclosed
by a current geographic position of a transit vehicle being
within the vicinity of a traveller to be picked-up’s current
location . . . .
For example, [new stop points] being with[in] a
predetermined radius around origin locations and destination
locations of the plurality of rider agents does not factor in a
location of the vehicle. The present claims consider origin and
destination locations of the new rider and the plurality of rider
agents. According to Appellant’s claims, a vehicle may not be
within a 3 minute driving radius of the new rider and still pick-
up the new rider because the new rider is within the
predetermined radius around a stop point . . . .
Conversely, with Olmi, a current geographic position of a
transit vehicle being within the vicinity of a traveller to be
picked-up's current location . . . requires the location of the
vehicle. Thus, the vehicle will pick up the traveller even if the
traveller’s [new stop points] are not with the predetermined
radius around the stop points . . . of the plurality of rider agents.
(Appeal Br. 36–37.)
We agree with Appellant. The disclosure in Olmi hinges on the
traveler seeking to join a ride being within a given radius of the vehicle,
whereas the claims require the new traveler’s start or stop point to be within
a given radius of a start or stop point of the current rideshare plan. As
Appeal 2018-006681
Application 12/491,635

18
established by Appellant’s various examples, there is a significant difference
between the claim requirement in question and the approach of Olmi.
(Appeal Br. 36–37.) Accordingly, we do not sustain the Examiner’s
rejection of claims 34–53 as anticipated by Olmi.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § References/
Basis
Affirmed Reversed
34–53 101 Eligibility 34–53
34–53 112, First
Paragraph
Written
Description
34–53
34–53 102(b) Olmi 34–53
Overall
Outcome
34–53

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED