Ex Parte Camp et al

Patent Trial and Appeal BoardFeb 15, 2019

12928253 (P.T.A.B. Feb. 15, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/928,253 12/06/2010 Garrett Camp 110654 7590 02/20/2019 Mahamedi IP Law LLP (Uber) 910 Campisi Way, Suite IE Campbell, CA 95008 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 ATTORNEY DOCKET NO. CONFIRMATION NO. UP-002 7165 EXAMINER JOSEPH, TONY A S ART UNIT PAPER NUMBER 3628 NOTIFICATION DATE DELIVERY MODE 02/20/2019 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): uspto@m-iplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GARRETT CAMP, OSCAR SALAZAR, and TRAVIS KALANICK Appeal2017-010473 1 Application 12/928,253 2 Technology Center 3600 Before MICHAEL C. ASTORINO, NINA L. MEDLOCK, and MATTHEWS. MEYERS, Administrative Patent Judges. MEDLOCK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's final rejection of claims 1, 3, 6, 7, 13, 19, 21, 23, 35, and 36. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We AFFIRM. 1 Our decision references Appellants' Appeal Brief ("App. Br.," filed January 30, 2017) and Reply Brief ("Reply Br.," filed August 4, 2017), and the Examiner's Answer ("Ans.," mailed June 7, 2017) and Final Office Action ("Final Act.," mailed July 28, 2016). 2 Appellants identify Uber Technologies, Inc. as the real party in interest. App. Br. 3. Appeal2017-010473 Application 12/928,253 CLAIMED INVENTION Appellants' claimed invention "pertain[ s] generally to a system and method for operating a service to arrange transport between a customer and a transport party" (Spec. ,r 2). Claim 1, reproduced below with bracketed notations added, is the sole independent claim and representative of the claimed subject matter: 1. A computer-implemented method for operating one or more servers to provide a service to arrange transport, the method: (a) communicating with a plurality of mobile computing devices in a designated region, wherein each mobile computing device in a first set of the plurality of mobile computing devices is operated by a corresponding driver for the service, and wherein each mobile computing device in a second set of the plurality of mobile computing devices is operated by a corresponding customer for the service; (b) determining, from communicating with the plurality of mobile computing devices, one or more market conditions at a given duration of time for the designated region based at least in part on a determined demand for drivers of the service operating the first set of mobile computing devices, by customers of the service operating the second set of mobile computing devices; ( c) arranging transport for individual customers for the service, including: [ ( c 1)] detecting a request for transport from a customer operating a customer mobile computing device of the second set, the transport request being generated through execution of a service application on the customer mobile computing device and including position information corresponding to a pickup location determined from a Global Positioning System ("GPS") resource of the customer mobile computing device; [(c2)] selecting a driver for the transport, the driver being associated with a driver account and a driver mobile computing device of the first set on which a driver service application is executing; 2 Appeal2017-010473 Application 12/928,253 [(c3)] when the transport is taking place, receiving position information from the service application of the driver mobile computing device, the service application of the driver mobile computing device using a GPS resource to determine the position information; [ ( c4)] detecting when the transport is over from either the customer or driver mobile computing device; [ ( c5)] upon detecting the transport is over, determining a dropoff location of the customer from position information communicated by the customer or the driver mobile computing device; [ ( c6)] automatically determining a set of payment parameters for the transport based on position information communicated from the customer or driver mobile computing device, the set of payment parameters including (i) a distance traveled during the transport as between the pickup location and the drop-off location, (ii) a time of travel for the transport, and (iii) presence of any tolls during the transport; [ ( c7)] calculating a fare for the transport using a methodology that is used to calculate fares for transport provided by any of the drivers operating mobile computing devices of the first set, to individual customers of the service operating mobile computing devices of the second set, the methodology determining the fare based on the payment parameters and the market condition; [ ( c8)] providing information of the fare to the customer mobile computing device and the driver mobile computing device; [ ( c9)] accessing an account of the customer in order to transfer funds corresponding to the fare to an account of the service; and [ ( c 10)] transferring funds corresponding to a portion of the funds received from the customer to an account associated with the driver. 3 Appeal2017-010473 Application 12/928,253 REJECTIONS Claims 1, 3, 6, 7, 13, 19, 21, 23, 35, and 36 are rejected under 35 U.S.C. Â§ 101 as directed to a judicial exception without significantly more. Claims 1, 3, 6, 7, 13, 19, and 23 are rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Felt et al. (US 2011/0099040 Al, pub. Apr. 28, 2011) ("Felt"), Jun (US 2004/0112959 Al, pub. June 17, 2004), Salemme et al. (US 2009/0099971 Al, pub. Apr. 16, 2009) ("Salemme"), Dinkin et al. (US 6,591,253 B 1, iss. July 8, 2003) ("Dinkin"), Sugahara et al. (US 2004/0254717 Al, pub. Dec. 16, 2004), Golla (US 2010/0243724 Al, pub. Sept. 30, 2010), and Spaur et al. (US 2004/0185842 Al, pub. Sept. 23, 2004) ("Spaur"). Claims 21 and 36 are rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Felt, Jun, Salemme, Dinkin, Sugahara, Golla, Spaur, and Official Notice. ANALYSIS Patent-Ineligible Subject Matter Appellants argue the pending claims as a group (App. Br. 6-16). We select independent claim 1 as representative. The remaining claims stand or fall with claim 1. See 37 C.F.R. Â§4I.37(c)(l)(iv). Under 35 U.S.C. Â§ 101, an invention is patent-eligible if it claims a "new and useful process, machine, manufacture, or composition of matter." 35 U.S.C. Â§ 101. The Supreme Court, however, has long interpretedÂ§ 101 to include an implicit exception: "[l]aws of nature, natural phenomena, and abstract ideas" are not patentable. Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,216 (2014). 4 Appeal2017-010473 Application 12/928,253 The Supreme Court, in Alice, reiterated the two-step framework previously set forth 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 Corp., 573 U.S. at 217. The first step in that analysis is to "determine whether the claims at issue are directed to one of those patent-ineligible concepts." Id. If the claims are not directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the second step where the elements of the claims are considered "individually and 'as an ordered combination'" to determine whether there are additional elements that "'transform the nature of the claim' into a patent-eligible application." Id. ( quoting Mayo, 566 U.S. at 79, 78). The Court acknowledged in Mayo, that "all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas." Mayo, 566 U.S. at 71. Therefore, the Federal Circuit has instructed that claims are to be considered in their entirety to determine "whether their character as a whole is directed to excluded subject matter." McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). We are not persuaded, as an initial matter, by Appellants' arguments the Examiner erred in determining that claim 1 is directed to an abstract idea (App. Br. 7-13). The Federal Circuit has explained that "the 'directed to' inquiry applies a stage-one filter to claims, considered in light of the [S]pecification, based on whether 'their character as a whole is directed to excluded subject matter."' Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 5 Appeal2017-010473 Application 12/928,253 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp., 790 F.3d at 1346). It asks whether the focus of the claims is on a specific improvement in relevant technology or on a process that itself qualifies as an "abstract idea" for which computers are invoked merely as a tool. See id. at 1335-36. The Specification here is entitled "SYSTEM AND METHOD FOR OPERATING A SERVICE TO ARRANGE TRANSPORT BETWEEN A CUSTOMER AND A TRANSPORT PARTY." The Background section of the Specification discloses that current fleet management systems employed for taxi and limousine fleet typically use onboard metering devices, radios, and cell phones to dispatch drivers and monitor fares, and that these systems typically are not communicative to customers who are waiting for pickup (Spec. ,r 3). The Specification also describes that little information is tracked about individual fares, and that these conventional approaches also rely on customers making payment directly to the driver, by credit card or cash (id.). The claimed invention is ostensibly intended to improve upon these systems by enabling a customer to transmit a request for transport using a mobile device and, after the request has been accepted by a vehicle driver, to automatically receive updates regarding the driver's location and other relevant information (id. ,r,r 12, 15). Once the transport is completed, a fare is calculated and funds corresponding to the fare are transferred, from the customer account associated with the mobile device, to an account of the transport service; a portion of the funds are then transferred to an account associated with the driver (id. ,r,r 18, 34). Understood in light of the Specification, we agree with the Examiner that claim 1 is directed to booking a taxi - to a commercial interaction, which is a method of organizing human activities and, therefore, an abstract idea (Final Act. 2). 6 Appeal2017-010473 Application 12/928,253 We find no indication in the Specification, nor do Appellants direct us to any indication, that the operations recited in claim 1 invoke any assertedly inventive programming, require any specialized computer hardware or other inventive computer components, or that the claimed invention is implemented using other than generic computer components to perform generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) ("[A]fter Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible."). We also find no 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, short of attorney argument, that attributes any improvement in technology and/or a technical field to the claimed invention or that otherwise indicates that the claimed invention integrates the abstract idea into a "practical application," as that phrase is used in the USPTO's "2019 Revised Patent Subject Matter Eligibility Guidance," 84 Fed. Reg. 50, 55 (January 7, 2019). 3 3 In accordance with the USP TO' s revised guidance, a claim will be considered "directed to" an abstract idea if ( 1) the claim recites subject matter falling within one of the following groupings of abstract ideas: (a) mathematical concepts; (b) certain methods of organizing human interactions, e.g., fundamental economic principles or practices, commercial or legal interactions; and ( c) mental processes, and (2) the claim does not integrate the abstract idea into a practical application. See Revised Guidance, 84 Fed. Reg. at 54--55. "A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limitation on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception." Id. at 54. 7 Appeal2017-010473 Application 12/928,253 Appellants argue that the Examiner has overgeneralized the claims and that the Examiner's characterization of the claimed invention as directed to the abstract idea of booking a taxi is "untethered from the claim language and ignores the requirements of the individual limitations/steps" (App. Br. 8). Appellants' argument is not persuasive at least because there is no requirement that the Examiner's formulation of the abstract idea copy the claim language. The Examiner's characterization here, moreover, is fully consistent with the Specification. That claim 1 includes more words than the phrase the Examiner used to articulate the abstract idea to which the claim is directed is an insufficient basis to persuasively argue that the claim language has been mischaracterized or that the Examiner has otherwise failed to consider all of the limitations of the claim. See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016) ("An abstract idea can generally be described at different levels of abstraction. As the Board has done, the claimed abstract idea could be described as generating menus on a computer, or generating a second menu from a first menu and sending the second menu to another location. It could be described in other ways, including, as indicated in the specification, taking orders from restaurant customers on a computer."). Appellants further assert that "even at the initial step of the Alice analysis, it is relevant to ask whether the invention is 'directed to an improvement to computer functionality versus being directed to an abstract idea"' (App. Br. 8). And Appellants argue that theÂ§ 101 rejection should be reversed because the Examiner "performed no such inquiry" (id.). Yet, Appellants do not identify any improvement in computer functionality that purportedly can be attributed to the claimed invention. 8 Appeal2017-010473 Application 12/928,253 We also are not persuaded of Examiner error by Appellants' argument that claim 1 is not directed to an abstract idea because the claim raises no preemption issues (id. at 9). There is no dispute that the Supreme Court has described "the concern that drives [the exclusion of abstract ideas from patent eligible subject matter] as one of pre-emption." Alice Corp., 573 U.S. at 216. But characterizing preemption as a driving concern for patent eligibility is not the same as characterizing preemption as the sole test for patent eligibility. "The Supreme Court has made clear that the principle of preemption is the basis for the judicial exceptions to patentability" and "[fJor this reason, questions on preemption are inherent in and resolved by the Â§ 101 analysis." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice Corp., 134 S. Ct. at 2354). "[P]reemption may signal patent ineligible subject matter, [but] the absence of complete preemption does not demonstrate patent eligibility." Id. Contrary to Appellants' assertion, we also find no parallel between claim 1 and the claims at issue in DDR Holdings. In DDR Holdings, the claims were directed to retaining website visitors, and in particular to a system that modified the conventional web browsing experience by directing a user of a host website who clicks an advertisement to a "store within a store" on the host website, rather directing the user to the advertiser's third- party website. DDR Holdings, 773 F.3d at 1257-1258. The court determined "the claims address a business challenge (retaining website visitors) [that] is a challenge particular to the Internet." Id. at 1257. The court also determined that the invention was "necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks," and that the claimed invention did not simply use computers to serve a conventional business purpose. Id. Rather, there was a 9 Appeal2017-010473 Application 12/928,253 change to the routine, conventional functioning of Internet hyperlink protocol. Id. Appellants argue that, like the claims in DDR Holdings, claim 1 "does not 'broadly and generically claim 'use of the Internet' to perform [an] abstract business practice"'; instead, according to Appellants, "claim 1 recites specific technological steps taken to yield a desired result that 'overrides the routine and convention[al] sequence of events"' (App. Br. 10). Appellants, thus, maintain that claim 1 recites specific steps rooted in technology, i.e., steps (cl), (c3), (c4), and (c5) and steps (b), (c6), and (c7) (which Appellants characterize as unique and non-routine steps for determining a fare for the transport service), that are neither applicable nor feasible in a "conventional taxi-booking service" (id. at 10-11 ). Although Appellants appear to be arguing otherwise, the court did not conclude in DDR Holdings that the claims were patent-eligible merely because the claims did not recite the performance of a business practice known from the pre-Internet world along with the requirement to perform it on the Internet. The claims also were not held patent-eligible merely because they required computing devices or because the claims themselves were detailed or involved the use of technology. Instead, the Federal Circuit held that the claims were directed to patent-eligible subject matter because they claimed a solution "necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks," i.e., retaining website visitors who, if adhering to the routine, conventional functioning of Internet hyperlink protocol, would be transported instantly away from a host's website after "clicking" on an advertisement and activating a hyperlink. DDR Holdings, 773 F.3d at 1257. The court, thus, expressly cautioned that "not all claims purporting to 10 Appeal2017-010473 Application 12/928,253 address Internet-centric challenges are eligible for patent." Id. at 1258. And the court contrasted the claims to those at issue in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014), in that, in DDR Holdings, the computer network was not operating in its "normal, expected manner" and the claims did not "recite an invention that is ... merely the routine or conventional use of the Internet." Id. at 1258-59. Here, we do not find, and Appellants do not identify, any analogous modification to the routine and conventional functioning of computer network technology. At best, the claimed invention appears to use generic computer components ( e.g., one or more servers and mobile computing devices ( claim 1 )) to perform an abstract business practice (i.e., booking a transport, e.g., taxi service). Appellants assert the claimed invention, as recited in claim 1, is rooted in technology, and represents a technological improvement over conventional systems/approaches (App. Br. 10-13). Appellants, thus, point, for example, to steps ( c 1 ), ( c3), and ( c5), as recited in claim 1, and argue that these steps "result in tangible improvements over conventional taxi booking services" (id. 10-11 ( citing Spec. ,r 16 ("Among other benefits, embodiments recognize that transport services often have vehicles that have down-time because they are between fares .... When the drivers/respondents are free (e.g., between fares), they can operate the program on their devices to field transport requests."))). But, we are not persuaded that these alleged improvements are technological improvements, as opposed to improvements in a business practice, i.e., booking a taxi. Turning to step two of the Mayo/Alice framework, Appellants argue that even if claim 1 is directed to an abstract idea, the claim is nonetheless patent-eligible because claim 1 amounts to significantly more than the 11 Appeal2017-010473 Application 12/928,253 alleged abstract idea of "booking a taxi"; Appellants maintain that this is so at least because claim 1 is "tied to a specific and unique structure" (App. Br. 14). More particularly, Appellants assert that claim 1 recites "a specific network architecture including one or more servers, customer mobile computing devices, and driver mobile computing devices communicating with one another to enable and facilitate a transport service," and that the benefits of claim 1 over conventional approaches are possible because of the specific network architecture recited in claim 1 (id. at 14--15). Appellants, thus, maintain that "the solution recited in claim 1 is 'narrowly circumscribed to the particular' network architecture described in claim 1 and serves to improve the performance of the system itself' (id. at 15). Appellants ostensibly rely on Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016) for support. But we can find no parallel between claim 1 and the claim at issue in Amdocs. In Amdocs, the Federal Circuit held the claim was patent eligible because the claim entails an unconventional technological solution ( enhancing data in a distributed fashion) to a technological problem (massive record flows which previously required massive databases). Although the solution requires generic components, the court determined that "the claim's enhancing limitation necessarily requires that these generic components operate in an unconventional manner to achieve an improvement in computer functionality" and that the "enhancing limitation depends not only upon the invention's distributed architecture, but also depends upon the network devices and gatherers - even though these may be generic - working together in a distributed manner." Amdocs, 841 F.3d at 1300--01. Appellants have not identified any similar "distributed architecture" nor 12 Appeal2017-010473 Application 12/928,253 otherwise established that the generic components recited in claim 1 operate in an unconventional manner. Finally, to the extent Appellants maintain that the claimed invention is patent-eligible, i.e., that claim 1 amounts to "significantly more" than an abstract idea, because the claim is allegedly novel and/or non-obvious in view of the prior art (App. Br. 18-19), Appellants misapprehend the controlling precedent. Neither a finding of novelty nor a non-obviousness determination automatically leads to the conclusion that the claimed subject matter is patent-eligible. Although the second step in the Mayo/Alice framework is termed a search for an "inventive concept," the analysis is not an evaluation of novelty or non-obviousness, but rather, a search for "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 Corp., 573 U.S. at 217-18 ( citation omitted). "Groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the Â§ 101 inquiry." Ass 'n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and non-obvious claim directed to a purely abstract idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90; see also Diamond v. Diehr, 450 U.S. 175, 188-89 ( 1981) ("The 'novelty' of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within theÂ§ 101 categories of possibly patentable subject matter."). We are not persuaded, on the present record, that the Examiner erred in rejecting claim 1 under 35 U.S.C. Â§ 101. Therefore, we sustain the 13 Appeal2017-010473 Application 12/928,253 Examiner's rejection of claim 1, and claims 3, 6, 7, 13, 19, 21, 23, 35, and 36, which fall with claim 1. Obviousness Independent Claim 1 and Dependent Claims 3, 6, 7, 13, 19, and 23 We are persuaded by Appellants' argument that the Examiner erred in rejecting claim 1 under 35 U.S.C. Â§ 103(a) at least because Dinkin, on which the Examiner relies, fails to disclose or suggest determining, from communicating with the plurality of mobile computing devices, one or more market conditions at a given duration of time for the designated region based at least in part on a determined demand for drivers of the service operating the first set of mobile computing devices, by customers of the service operating the second set of mobile computing devices[,] as recited in claim 1 (App. Br. 24--25; see also Reply Br. 8-9). Dinkin is directed to a "method and system for controlling the purchase of fine-grained resource purchases, such as utility resources or access to limited highway lanes" (Dinkin, Abstract), and discloses a highway system, with reference to Figure 3, including southbound lanes 60, northbound lanes 62, and high occupancy vehicle ("HOV") lanes 64 (id. at col. 5, 11. 31-33). Dinkin discloses, at column 5, lines 34--40 and 44--50, cited by the Examiner, that the amount of traffic within HOV lanes 64 is periodically and dynamically determined using traffic sensors 66 and 68, which detect the number of vehicles passing over a roadway surface during a specific period of time, and when HOV lanes 64 are underutilized, the lanes may be opened to nonqualified vehicles. Dinkin further discloses that "it is important that the utilization of these lanes be priced dynamically based upon the amount of additional traffic desired for these lanes" and that an access charge is calculated based 14 Appeal2017-010473 Application 12/928,253 on various traffic models and the traffic load present within HOV lanes 64 (id. at col. 5, 11. 51-60). But, we find nothing in the cited portions of Dinkin that discloses or suggests determining, from communicating with a plurality of mobile computing devices, market conditions at a given duration of time for a designated region based on a determined demand for drivers operating a first set of mobile computing devices, by customers operating a second set of mobile computing devices, as called for in claim 1. Therefore, we do not sustain the Examiner's rejection of claim 1 under 35 U.S.C. Â§ 103(a). For the same reasons, we also do not sustain the rejection of dependent claims 3, 6. 7, 13, 19, and 23. Cf In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("dependent claims are nonobvious if the independent claims from which they depend are nonobvious"). Dependent Claims 21 and 3 6 The Examiner's rejection of dependent claims 21 and 3 6 does not cure the deficiency in the Examiner's rejection of independent claim 1. Therefore, we do not sustain the Examiner's rejection under 35 U.S.C. Â§ 103 (a) of claims 21 and 3 6 for the same reasons set forth above with respect to claim 1. DECISION The Examiner's rejection of claims 1, 3, 6, 7, 13, 19, 21, 23, 35, and 36 under 35 U.S.C. Â§ 101 is affirmed. The Examiner's rejections of claims 1, 3, 6, 7, 13, 19, 21, 23, and 36 under 35 U.S.C. Â§ 101 are reversed. 15 Appeal2017-010473 Application 12/928,253 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 16