Ex Parte Lehmann et al

Patent Trial and Appeal Board

Oct 27, 2017

13722342 (P.T.A.B. Oct. 27, 2017)

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.
13/722,342 12/20/2012 Jens Lehmann 14291-158-999/2012E00628U 4086
140285 7590 10/27/2017
Jones Day For SAP
250 Vesey Street
New York, NY 10281-1047
EXAMINER
YESILDAG, MEHMET
ART UNIT PAPER NUMBER
3623
MAIL DATE DELIVERY MODE
10/27/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JENS LEHMANN, VEDRAN LERENC,
and DAVID SOMMER
____________

Appeal 2016-004627
Application 13/722,342
Technology Center 3600
____________

Before STEVEN D.A. McCARTHY, JUSTIN BUSCH, and
JASON M. REPKO, Administrative Patent Judges.

BUSCH, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–5, 7–11, 13–17, and 19–22. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.

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CLAIMED SUBJECT MATTER
The claims relate generally to carpooling. Spec. ¶¶ 1–2. Specifically,
the claims relate to receiving “ride intents” (i.e., a “set of parameters
specified by a user for a ride”) from users; calculating differences between
one ride intent and other ride intents or ride segments; and determining
whether to add a ride intent to a multi-segment ride. Id. ¶¶ 16–17, 24–26,
Fig. 5. Certain embodiments may allow a user to specify a ride intent by
using electronic calendar entries. Id. ¶ 18, Fig. 3. Claim 1 is reproduced
below:
1. A processor-implemented method comprising:
receiving, at a user device, a ride intent;
transmitting, to a first processor, the ride intent from the
user device;
calculating, by the first processor, a time difference
between a last temporal segment belonging to a multi-segment
ride and the ride intent, wherein the multi-segment ride includes
the last temporal segment and at least one other temporal
segment, wherein each temporal segment of the multi-segment
ride corresponds to different, non-overlapping, beginning and
end times of a ride, wherein the at least one other temporal
segment corresponds to a time occurring before the beginning of
the last temporal segment, wherein the last temporal segment
defines a set of ride preferences of a user of the user device and
the ride intent defines another set of ride preferences of the same
user of the user device, a start location of the ride intent and an
end location of the last temporal segment are different, a first
time interval corresponding to the ride intent and a second time
interval corresponding to the last temporal segment are non-
overlapping, and parameters of at least one of the last temporal
segment and the ride intent are specified through electronic
calendar entries on the user device;
comparing, by a second processor, the time difference to a
first threshold;
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upon determining that the time difference is less than or
equal to the first threshold, marking the ride intent as a new
segment of the multi-segment ride for the user of the user device;
comparing, by the second processor, the multi-segment
ride of the user to at least one other multi-segment ride of at least
one other user; and
upon determining that a second threshold of the ride
preferences of the user and ride preferences of at the least one
other user match, notifying the user at the user device and
scheduling a shared multi-segment ride between the user and the
at least one other user, wherein the shared multi-segment ride
corresponds to matched temporal segments of the multi-segment
ride and the at least one other multi-segment ride, wherein each
temporal segment of the shared multi-segment ride corresponds
to different, non-overlapping, beginning and end times of a
shared ride,
wherein the first processor and the second processor are
one of: same processor, different processors, situated in the same
computer, and situated in different computers.

REJECTIONS
Claims 1–5, 7–11, 13–17, and 19–22 stand rejected under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter. Final Act. 2–3.
Claims 1–5, 7–11, 13–17, and 19–22 stand rejected under 35 U.S.C.
§ 112, first paragraph, for failing to comply with the written description
requirement. Final Act. 3–5.
Claims 2, 4, 5, 7, 8, 10, 11, 13, 14, 16, 17, and 19–221 stand rejected
under 35 U.S.C. § 103(a) as being obvious in view of Meyer

1 The statement of rejection does not identify claims 20–22 in this ground.
Nevertheless, the Examiner provides a mapping and explanation of the
rejection of claims 20–22 in view of the combination of Meyer and Kamar.
Final Act. 14–16.
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(US 2011/0054956 A1; Mar. 3, 2011) and Kamar (US 2010/0332242 A1;
Dec. 30, 2010). Final Act. 5–17.
Claims 1, 3, 9, and 15 stand rejected under 35 U.S.C. § 103(a) as
being obvious in view of Meyer, Jarvinen (US 2009/0005963 A1; Jan. 1,
2009), and Kamar. Final Act. 17–23.
ANALYSIS
REJECTION OF CLAIMS UNDER 35 U.S.C. § 101
Introduction and Framework
The Examiner rejects the claims under 35 U.S.C. § 101 because the
claims as a whole are directed to an abstract idea and do not contain
“significantly more than the abstract idea” so as to transform the claimed
abstract idea into a patent-eligible application. Final Act. 2–3; Ans. 4–7.
The Patent Act defines patent-eligible subject matter broadly:
“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. There is no dispute in this
Appeal that the pending claims are directed to one of these categories. See
App. Br. 8; Ans. 4.
In Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66, 70 (2012), and Alice Corp. v. CLS Bank International, 134
S. Ct. 2347, 2354 (2014), the Supreme Court explained that § 101 “contains
an important implicit exception” for laws of nature, natural phenomena, and
abstract ideas. See Diamond v. Diehr, 450 U.S. 175, 185 (1981). In Mayo
and Alice, the Court set forth a two-step analytical framework for evaluating
patent-eligible subject matter: (1) “determine whether the claims at issue are
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directed to” a patent-ineligible concept, such as an abstract idea; and, if so,
(2) “consider the elements of each claim both individually and ‘as an
ordered combination’ to determine whether the additional elements” add
enough to transform the “nature of the claim” into “significantly more” than
a patent-ineligible concept. Alice, 134 S. Ct. at 2355 (quoting Mayo,
566 U.S. at 79); see Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d
1253, 1257 (Fed. Cir. 2016).
Step one in the Mayo/Alice framework involves looking at the “focus”
of the claims at issue and their “character as a whole.” Elec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Step two
involves the search for an “inventive concept.” Alice, 134 S. Ct. at 2355;
Elec. Power Grp., 830 F.3d at 1353. For an inventive concept, “more is
required than ‘well-understood, routine, conventional activity already
engaged in’” by the relevant community. Rapid Litig. Mgmt. Ltd. v.
CellzDirect, Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016) (quoting Mayo,
566 U.S. at 79–80).
Step One of Alice Framework
Turning to step one of the Alice framework, we are unpersuaded that
the Examiner erred in concluding the claims are directed to an abstract idea.
Final Act. 2; Ans. 4. In particular, the Examiner finds the claims are
directed to receiving, managing, comparing, matching, and scheduling ride
segments, which are steps that could be performed mentally by a human and
are methods of organizing human activities that incorporate mathematical
formulas or relationships. Ans. 4. Notably, the Examiner’s characterization
is consistent with Appellants’ description of the problem and solution. See
App. Br. 8–9. In particular, Appellants explain that the claims are directed
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to “receiving and transmitting ride intent information associated with
electronic calendar entries” and “the scheduling of multi-segment shared
rides.” App. Br. 9; see also Spec. ¶¶ 7–8; Reply Br. 2.
Appellants contend these claimed features cannot be performed in
one’s mind because the claims are tied to electronic devices and electronic
calendar entries. App. Br. 9; Reply Br. 2. Appellants further assert the
claims’ treatment of distinct electronic entries is a technological problem
arising in computer networks and rooted in computer technology because
computer systems are required to transmit, receive, and manage electronic
calendar entries. App. Br. 9; Reply Br. 2.2
Appellants’ claims, however, do not address a problem rooted in
technology. These claims are not like those in Enfish, where the Federal
Circuit found the claims eligible because they were focused on a specific
software-based improvement to database techniques. Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed. Cir. 2016). Nor are these
claims like those found eligible when “the claimed solution is necessarily
rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks.” DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014). The claims in DDR

2 Appellants also argue the use of electronic calendar entries renders the
claimed subject matter eligible because the claims recite specific types of
information. App. Br. 11 (citing Smartflash LLC v. Apple, Inc., No.
6:13CV447-JRG-KNM, 2015 WL 661174 (E.D. Tex. Feb. 13, 2015)); Reply
Br. 2. After the briefs in this appeal had been filed, the Court of Appeals for
the Federal Circuit reversed the district court and held that the claims at
issue in that case recited ineligible subject matter under 35 U.S.C. § 101.
Smartflash LLC v. Apple Inc., 680 F. App’x 977 (Fed. Cir. 2017).
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required an inventive device or technique for displaying information. DDR,
773 F.3d at 1257.
Unlike DDR, Enfish, or the district court Trading Technologies case
Appellants reference, determining whether to combine ride segments based
on ride preferences is not a problem specifically arising in the realm of
computers.3 Instead, the claims’ character, as a whole, lies in longstanding
conduct that exists apart from computers—i.e., determining whether two
potential ride segments are compatible for carpooling. For instance,
Appellants point to the use of a “processing device” that interfaces with
other user devices to calculate, transform, and process data from electronic
calendar entries; receive and transmit ride information; and schedule
carpooling rides as evidence of eligibility. App. Br. 9; Reply Br. 2. But this
type of computer involvement does not show that the claimed invention is
“an improvement in computers as tools,” like those claims found patent-

3 Appellants reference Trading Techs. Int’l, Inc. v. CQG, Inc., No. 05-C-
4811 (E.D. Ill. Apr. 15, 2015), but provide no citation. Initially, we note that
the unreported findings from a district court are not binding in the instant
proceeding. Nevertheless, we have considered cases involving related
patents and do not find those cases support Appellants’ position. See e.g.,
Trading Techs. Int’l, Inc. v. CQG, Inc., 675 F. App’x 1001 (Fed. Cir. Jan.
18, 2017) (non-precedential); Trading Techs. Int’l, Inc. v. CQG, Inc.,
No. 05-cv-4811, 2015 WL 774655, (N.D. Ill. Feb. 24, 2015). Even with
respect to the claims involved in Trading Technologies, the instant claims
are more similar to claims the district court stated would be directed to an
abstract idea. Compare Trading Techs., 675 F. App’x 1001, 1004–05
(finding specific structure and function of a graphical user interface
constitutes eligible subject matter) with Trading Techs., 2015 WL 774655, at
*4 (noting “[i]f the claims simply provided for ‘setting, displaying, and
selecting’ data information, CQG would be correct in its assessment that the
claims are directed to an abstract idea”).
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eligible. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed.
Cir. 2016). Rather, the claims invoke computers merely as a tool aiding a
process focused on an abstract idea. See Ans. 4.
The claims are more similar to those claims the Federal Circuit has
found to be directed to an abstract idea. In determining whether claims are
directed to an abstract idea, the Federal Circuit has considered whether the
claims cover a method that human beings can perform without a computer.
See Mortgage Grader, Inc. v. First Choice Loan Servs., 811 F.3d 1314, 1324
(Fed. Cir. 2016) (explaining “[t]he series of steps covered by the asserted
claims . . . could all be performed by humans without a computer” in
concluding that the claims are directed to an abstract idea). Appellants’
claims do not recite a specific computer-based algorithm for making
determinations, like those processes found patent-eligible. See McRO, Inc.
v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314–15 (Fed. Cir. 2016)
(finding that claims involving a specific structure of the rules for automated
lip-synchronization of 3-D characters were patent-eligible). Instead, the
claims broadly and abstractly recite a series of determinations that a human
can make by reviewing the usage data and relevant records. See Ans. 3
(discussing mental processes).
The claims further recite processes or methods implemented by
processors that receive ride segment data, compare that data to existing data
to recognize whether the new data should be added to the existing carpool
ride, notify the user, and schedule (i.e., store) the additional ride segment.
Likewise, the Federal Circuit has also recognized that “[t]he concept of data
collection, recognition, and storage is undisputedly well-known,” and
“humans have always performed these functions.” Content Extraction &
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Transmission LLC v. Wells Fargo Bank, Nat. Ass’n, 776 F.3d 1343, 1347
(Fed. Cir. 2014), cited in Ans. 4. We agree with the Examiner’s findings
because the claimed concept is similar to the above-discussed concepts
found to be abstract by the Federal Circuit.
Appellants also argue the claims are not directed to abstract ideas
because they do not pre-empt other methods or systems of carpooling or
ride-sharing. App. Br. 10. It is true that the Supreme Court has
characterized pre-emption as a driving concern for patent eligibility. See
Alice, 134 S. Ct. at 2354. But the Examiner is correct, Ans. 6, that
characterizing pre-emption as a driving concern for patent eligibility is not
the same as characterizing pre-emption 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 “[f]or this reason,
questions on preemption are inherent in and resolved by the § 101 analysis.”
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) (citing Alice, 134 S. Ct. at 2354). However, “[w]hile preemption may
signal patent ineligible subject matter, the absence of complete preemption
does not demonstrate patent eligibility.” Ariosa, 788 F.3d at 1379; Cf. OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed. Cir. 2015),
cert. denied, 136 S. Ct. 701, 193 L. Ed. 2d 522 (2015) (“[T]hat the claims do
not preempt all price optimization or may be limited to price optimization in
the e-commerce setting do not make them any less abstract.”).
Accordingly, we are unpersuaded the Examiner erred in concluding
the claims are directed to an abstract idea.
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Step Two of Alice Framework
Because the claims are “directed to an abstract idea,” we turn to step
two of Alice to determine whether the limitations, when considered both
“individually and ‘as an ordered combination’” contain an “inventive
concept” sufficient to transform the claimed “abstract idea” into a patent-
eligible application. Alice, 134 S. Ct. at 2355–58.
Appellants do not clearly articulate whether they assert the claims
recite significantly more than the abstract idea itself. See App. Br. 8–11
(stating only that “the claims are not directed to a judicial exception to
statutory subject matter”); Reply Br. 3–4. Nevertheless, to the extent
Appellants’ arguments related to the use of a processor communicating with
multiple user devices and manipulating data using electronic calendar entries
are considered an assertion that the claims recite significantly more than the
abstract idea itself, we address those arguments herein. See App. Br. 9;
Reply Br. 3. In Appellants’ view, the claims are like a stock viewer
application that solves an Internet-centric problem using computer
technology. App. Br. 9–10. Appellants contend the claimed systems and
processes “operate in a manner significantly different from carpool
scheduling by pen and paper,” but offer no explanation how the claimed
systems operate differently, beyond the generically claimed use of
computers to store, transmit, and receive data in a conventional manner.
App. Br. 9–10. We disagree.
First, we consider the limitations individually. See Alice, 134 S.
Ct. at 2355–58. The claims recite conventional uses of a processor and
generic user devices, such as receiving and transmitting data. The claims
further recite calculating information based on the data determining results,
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notifying a user, and scheduling rides based on the data. To perform these
functions, the claims do not call for non-conventional computer components.
Rather, we agree with the Examiner that these functions—collection,
analysis, notification, and scheduling—merely require a generic processor,
which does not supply an inventive concept. Ans. 5–7; FairWarning IP,
LLC v. Iatric Sys. Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016).
Additionally, the steps acting upon the data are abstractly and broadly
recited as “receiving,” “transmitting,” “calculating,” “comparing,” and
“determining” functions, instead of a concrete solution for carrying out these
identifications and determinations. Thus, the recited identifications and
determinations “do not invoke any assertedly inventive programming” to
supply an inventive concept. Elec. Power, 830 F.3d at 1355. In sum, the
limitations, considered individually, do not contain an inventive concept.
Next, we consider the limitations as an ordered combination. Unlike
the inventive distribution of function between the local computer and an ISP
server in BASCOM, the claims here merely recite generic processors and
user devices carrying out the abstract idea. See BASCOM Glob. Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1352 (Fed. Cir. 2016)
(discussing the specific location for the filtering system and role of
networking accounts in concluding that the claims did not preempt the
abstract idea’s use). Essentially, the claim recites an abstract idea with the
instruction to apply it on generic computing components.
“[R]elying on a computer to perform routine tasks more quickly or
more accurately is insufficient to render a claim patent eligible.” OIP
Techs., 788 F.3d at 1363. So, even if a computer performs the claimed steps
and ultimate scheduling with fewer errors or more quickly than a human, we
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agree with the Examiner that using a computer in this conventional way does
not supply an inventive concept. Ans. 5–7. Therefore, Appellants have not
persuaded us of error in the rejection of the claims under 35 U.S.C. § 101.
REJECTION OF CLAIMS UNDER 35 U.S.C. § 112 (WRITTEN DESCRIPTION)
The Examiner rejects claims 1–5, 7–11, 13–17, and 19–22 under
35 U.S.C. § 112, first paragraph, for failing to comply with the written
description requirement with respect to various limitations recited in the
claims. Final Act. 3–5. In particular, the Examiner finds Appellants’
Specification does not have written description support for “a first time
interval corresponding to the ride intent and a second time interval
corresponding to the last temporal segment are non-overlapping,”
wherein the multi-segment ride includes the last temporal
segment and at least one other temporal segment, wherein each
temporal segment of the multi-segment ride corresponds to
different, non-overlapping, beginning and end times of a ride,
wherein the at least one other temporal segment corresponds to a
time occurring before the beginning of the last temporal segment
(the previous two limitations collectively referred to hereinafter as the “non-
overlapping limitations”),
comparing, by the second processor, the multi-segment
ride of the user to at least one other multi-segment ride of at least
one other user; and
upon determining that a second threshold of the ride
preferences of the user and ride preferences of at the least one
other user match, notifying the user at the user device and
scheduling a shared multi-segment ride between the user and the
at least one other user, wherein the shared multi-segment ride
corresponds to matched temporal segments of the multi-segment
ride and the at least one other multi-segment ride, wherein each
temporal segment of the shared multi-segment ride corresponds
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to different, non-overlapping, beginning and end times of a
shared ride
(referred to hereinafter as the “second processor” limitation”), or “ride
preferences,” each of which is recited in claim 1. Final Act. 4. The
Examiner similarly rejects independent claims 2, 7, 8, 13, 14, and 19
because the Examiner finds each of those claims recites similar limitations.
The Examiner also rejects claims 3–5, 9–11, 15–17, and 20–22 as being
dependent on the rejected independent claims from which they depend.
New or amended claims which introduce elements or limitations
which are not supported by the as-filed disclosure violate the written
description requirement. See, e.g., In re Lukach, 442 F.2d 967 (CCPA
1971).
[W]hatever the specific articulation, the test requires an objective
inquiry into the four corners of the specification from the
perspective of a person of ordinary skill in the art. Based on that
inquiry, the specification must describe an invention
understandable to that skilled artisan and show that the inventor
actually invented the invention claimed.
Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010)
(en banc).
“It is not necessary that the application describe the claim limitations
exactly.” In re Wertheim, 541 F.2d 257, 262 (CCPA 1976). Rather, the
fundamental factual inquiry is whether the specification conveys with
reasonable clarity to those skilled in the art that, as of the filing date sought,
applicant was in possession of the invention as now claimed. See, e.g., Vas-
Cath, Inc., 935 F.2d at 1563–64. When an explicit limitation in a claim is
not present in the written description it must be shown that a person of
ordinary skill would have understood that the description requires that
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limitation. Hyatt v. Boone, 146 F.3d 1348, 1353 (Fed. Cir. 1998). If the
originally filed disclosure does not provide support for each claim limitation,
a new or amended claim must be rejected under 35 U.S.C. § 112, first
paragraph, as lacking adequate written description.
The Non-Overlapping Limitations
Appellants point to various portions of their Specification indicating
how time intervals may be specified. App. Br. 12 (citing Spec. ¶¶ 18, 19,
21, 26). Appellants also point to a specific example in the Specification
indicating three ride segments whose time intervals do not overlap that are
part of a multi-segment ride as well as a ride intent having a fourth time
interval that does not overlap with the last temporal segment (or any
temporal segment) of the multi-segment ride. Id. (citing Spec. ¶ 27). The
extent of the Examiner’s explanation of the rejection is that “appellant’s
citation of empirical examples of segments and ride intents from the
specification which happens to have beginning and end times which are
different and non-overlapping does not completely prove in any way that the
appellants had the possession of” the non-overlapping limitations. Ans. 7.
As discussed above, there is no requirement that Appellants’
Specification use the exact same words as recited in the claims. Wertheim,
541 F.2d at 262. Appellants have pointed to a clear discussion in their
Specification of non-overlapping time intervals and ride intents. Thus,
without further explanation from the Examiner regarding why the identified
disclosure would not have conveyed possession of the non-overlapping
limitations, we are persuaded the Examiner erred in finding the non-
overlapping limitations lack written description support.
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The Second Processor Limitation
The Examiner explains that “there is not enough support for a
structure in the original disclosure that can carry out the functions of claim
1, such as specific functions being performed on a first processor whereas
others [are] performed on a second processor.” Final Act. 4. Appellants
argue the claimed processing system “may be any of a plurality of
conventional processing systems, including microprocessors, digital signal
processors, and field programmable logic arrays,” and that modifications and
variations of the explicitly disclosed embodiments are possible. App.
Br. 13–14 (citing Spec. ¶¶ 10, 12, 30); Reply Br. 6. Appellants argue there
is no requirement that the claims and Specification use the same terms and
the identified disclosures are sufficient to demonstrate possession of
performing some functions on one processor and other functions on a second
processor. App. Br. 13–14; Reply Br. 6. The Examiner responds that
“although a literal/verbatim support is not required under this section,
support for separation of specific function was not identified in the cited
section of appellant’s specification or anywhere else in the original
disclosure.” Ans. 7.
We agree with the Examiner. Appellants are correct that the claims
and Specification need not use the exact same language. Wertheim, 541
F.2d at 262. Nevertheless, we disagree that Appellants’ Specification
conveys to a person of ordinary skill in the art that the inventors were in
possession of the recited use of two processors performing different
functions. First, we are not persuaded the identified portions of Appellants’
Specification indicate possession of the use of multiple processors. Rather,
we understand the disclosure that the processing system (singular) used in
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the invention “may be any [one] of a plurality of conventional processing
systems,” simply means that there are many known conventional processing
systems and the invention may use any one of those many known systems to
perform its functions. See Spec. ¶¶ 10, 12. Moreover, the generic statement
that modifications and variations are possible or that certain implementations
may be in software or hardware alone provides no meaningful insight
regarding the question of whether the inventors were in possession of the use
of one processor for some functions and a second processor for other
functions.
Accordingly, we are not persuaded the Examiner erred in rejecting
claims 1, 2, 7, 8, and 13, as well as claims 3–5 and 9–11, which depend from
one of claims 2 and 8, for failing to provide sufficient written description
support for the second processor limitation.4 Claims 14–17 and 19–22,
however, do not recite a first and second processor performing various
functions. Therefore, to the extent the Examiner rejects claims 14–17 and

4 We note, however, that claims 1, 2, and 7 each recite that “the first
processor and the second processor are one of: same processor, different
processors . . . .” Additionally, claims 8 and 13 have no antecedent basis for
“the second processor.” It appears Appellants inadvertently failed to remove
“second” from those claims during a prior amendment. We leave to the
Examiner to determine whether independent claims 1, 2, 7, 8, and 13 require
clarifying amendments. In particular, we leave the following question to the
Examiner: Whether claims 1, 2, and 7 are indefinite because the claims
recite that two distinct processors can be the same processor. Although the
Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference
should be drawn when the Board elects not to do so. See MPEP § 1213.02.
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19–22 for failing to provide sufficient written description support for the
second processor limitation, we do not sustain that rejection.
Ride Preferences
The Examiner finds the claims also lack sufficient written description
support for the recited “ride preferences” because that term “may include an
enormous number of categories of information and is a genus,” and
Appellants’ Specification “does not have sufficient description of a
representative number of species.” Final Act. 5 (citing MANUAL OF PATENT
EXAMINING PROCEDURE (“MPEP”) § 2163(II)(A)(3)(a)(ii) (9th ed. Rev.
07.2015, Nov. 2015)). The Examiner further explains that Appellants’
Specification provides examples that “are a narrow representation of route,
traveler and/or vehicle characteristics; whereas ride preferences may include
various other characteristics in these categories and or other categories such
as data related to previous rides, geography, time of the year/season,
insurance coverage, ratings from others for the car or driver, etc.” Ans. 7.
Appellants argue their Specification adequately describes a
representative number of species sufficient to be representative of the genus.
App. Br. 14–15. Appellants assert sufficient description of a representative
number of species can be demonstrated by disclosing “relevant, identifying
characteristics, i.e., structure or other physical and/or chemical properties, by
functional characteristics coupled with a known or disclosed correlation
between function and structure, or by a combination of such identifying
characteristics, sufficient to show the applicant was in possession of the
claimed genus.” Reply Br. 7. Appellants contend “[s]atisfactory disclosure
of a ‘representative number’ depends on whether one of skill in the art
would recognize that the applicant was in possession of the necessary
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common attributes or features possessed by the members of the genus in
view of the species disclosed.” App. Br. 15 (citing MPEP § 2163); Reply
Br. 7. Specifically, Appellants point to their Specification’s disclosure that
parameters of ride preferences “may include values representing a start
location, end location, traveling time, role, detour time, and other
preferences such as social compatibility preferences (e.g., gender, age,
occupation) and vehicle preferences (e.g., type of music played in the
vehicle, temperature within the vehicle, size of the vehicle),” and argue these
examples adequately represent the genus of ride preferences. App. Br. 15
(quoting Spec. ¶ 16).
Accepting, for purposes of this appeal, the Examiner’s
characterization of “ride preferences” as a generic identifier, the Federal
Circuit has not “set out any bright-line rules governing, for example, the
number of species that must be disclosed to describe a genus claim, as this
number necessarily changes with each invention, and it changes with
progress in a field.” Ariad Pharms., 598 F.3d at 1351. Although we agree
with Appellants that the Specification need not describe each individual
species within a genus, Reply Br. 7, we disagree that the disclosed examples
in Appellants’ Specification adequately represent a genus. In particular, it is
unclear what parameters (or types of parameters) would be excluded from
the recited ride preferences based on the Specification’s inclusion of
parameters such as age and occupation.5 Thus, we agree with the Examiner

5 We leave to the Examiner to determine whether the metes and bounds of
the recited “ride parameters” are sufficiently clear that they meet the
requirements of 35 U.S.C. § 112, second paragraph. Although the Board is
authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should
be drawn when the Board elects not to do so. See MPEP § 1213.02.
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that a person of ordinary skill in the art would be unable to ascertain from
the examples given in Appellants’ Specification which other parameters
would be within the genus of “ride preferences.” Accordingly, we are not
persuaded the Examiner erred in rejecting claims 1–5, 7–11, 13–17, and 19–
22 under 35 U.S.C. § 112, first paragraph, for failing to provide sufficient
written description support for “ride preferences.
REJECTION OF CLAIMS UNDER 35 U.S.C. § 103
The Examiner rejects claims 2, 4, 5, 7, 8, 10, 11, 13, 14, 16, 17, and
19–22 under 35 U.S.C. § 103(a) as being obvious in view of Meyer and
Kamar. Final Act. 5–17. The Examiner rejects claims 1, 3, 9, and 15 under
35 U.S.C. § 103(a) as being obvious in view of Meyer, Kamar, and Jarvinen.
Final Act. 17–23. The Examiner relies on Jarvinen solely for teaching or
suggesting “parameters of at least one of the last temporal segment and the
ride intent are specified through electronic calendar entries on the user
device.” Final Act. 21, 23. The Examiner relies on Kamar for more
explicitly and clearly teaching or suggesting “wherein the segment defines a
set of ride preferences of a user of the user device and the ride intent defines
another set of ride preferences of the same user of the user device” and
“wherein after marking the ride intent as the new segment of the multi-
segment ride, the multi-segment ride includes at least three segments and
each segment of the multi-segment ride defines a respective set of ride
preferences of the same user” and for teaching or suggesting “wherein a
same driving role is assigned to the user during the each segment of the
multi-segment ride and the driving role is one of passenger and driver.”
Final Act. 9, 13–15. The Examiner relies on Meyer for teaching every other
element of each of the pending claims. Of particular relevance, the
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Examiner finds Meyer teaches the non-overlapping limitations. E.g., Final
Act. 7 (citing Meyer ¶¶ 35, 43, 44, 48, 49); Ans. 3–4. The Examiner also
states that “[n]on-overlapping is interpreted as the segments/rides being
different in at least one attribute such as start/end time or pickup/dropoff
location.” E.g., Final Act. 7 (emphasis omitted); Ans. 4.
Appellants contend only that Meyer fails to teach or suggest the non-
overlapping limitations. App. Br. 16–17; Reply Br. 8–9. Accordingly, we
discuss only the non-overlapping limitations with respect to the rejection
under 35 U.S.C. § 103. In particular, Appellants argue “‘non-overlapping’
unambiguously refers to non-overlapping time intervals (i.e., each temporal
segment of the multi-segment ride corresponds to different, non-
overlapping, beginning and end times of a ride).” App. Br. 16 (emphases
omitted). Appellants argue that, although paragraphs 43 and 44 of Meyer
relate to time differences for pick up times, there is no disclosure that the
pick up times have different, non-overlapping beginning and end times.
App. Br. 16; Reply Br. 8. Appellants further assert Meyer specifically
relates to matching reservations having overlapping time intervals, thus
teaching away from the non-overlapping limitations. App. Br. 16–17; Reply
Br. 8–9. Appellants, however, do not identify any aspect of Meyer
supporting such a reading.
We agree with Appellants that the claim limitations themselves
require that the time intervals, or the beginning and end times, are non-
overlapping. Thus, although the Examiner may be correct that “non-
overlapping,” alone, refers to various attributes, the claims require that the
time intervals, or the beginning and end times, are non-overlapping.
Nevertheless, the Examiner points to various paragraphs in Meyer, including
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disclosures regarding exemplary algorithms that may be used to match rides.
Final Act. 7 (citing Meyer ¶ 49). Part of the disclosed exemplary algorithm
includes matching rides “within a certain approved time frame of either
pick-up time or desired arrival time of the requested parties.” Meyer ¶ 49.
This disclosure would have at least suggested to a person having ordinary
skill in the art that certain ride segments determined to match (and thus
result in a multi-segment shared ride) may merely be within a certain time
frame of each other—i.e., matching rides may have non-overlapping time
intervals or beginning and end times. Appellants have not explained
persuasively why at least paragraph 49 of Meyer fails to teach or suggest the
non-overlapping limitations.
For the reasons discussed above, we are not persuaded the Examiner
erred in finding the combination of Meyer and Kamar, or the combination of
Meyer, Kamar, and Jarvinen teaches or suggests the subject matter recited in
claims 1–5, 7–11, 13–17, and 19–22. Accordingly, we sustain the
Examiner’s rejection of claims 1–5, 7–11, 13–17, and 19–22 under
35 U.S.C. § 103(a).
SUMMARY
We sustain the Examiner’s rejection of claims 1–5, 7–11, 13–17, and
19–22 under 35 U.S.C. § 101. We do not sustain the Examiner’s rejection of
claims 1–5, 7–11, 13–17, and 19–22 under 35 U.S.C. § 112, first
paragraph, for failing to provide adequate written description support for the
non-overlapping limitations. We sustain the Examiner’s rejection of claims
1–5, 7–11, and 13 under 35 U.S.C. § 112, first paragraph, for failing to
provide adequate written description report for two processors performing
different functions. We do not sustain the Examiner’s rejection of claims
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14–17 and 19–22 under 35 U.S.C. § 112, first paragraph, for failing to
provide adequate written description report for two processors performing
different functions because these claims do not recite such limitations. We
sustain the Examiner’s rejection of claims 1–5, 7–11, 13–17, and 19–22
under 35 U.S.C. § 112, first paragraph, for failing to provide adequate
written description support for the recited ride preferences. Finally, we
sustain the Examiner’s rejection of claims 1–5, 7–11, 13–17, and 19–22
under 35 U.S.C. § 103(a) as obvious in view of either Meyer and Kamar; or
Meyer, Kamar, and Jarvinen.
DECISION
We affirm the Examiner’s rejection of claims 1–5, 7–11, 13–17, and
19–22.
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