Radhakrishnan, Mina et al.

Patent Trials and Appeals Board

Sep 3, 2019

13837592 - (R) (P.T.A.B. Sep. 3, 2019)

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.
13/837,592 03/15/2013 Mina Radhakrishnan UP-001CIP1 3441
110654 7590 09/03/2019
Mahamedi IP Law LLP (Uber)
910 Campisi Way, Suite 1E
Campbell, CA 95008
EXAMINER
WHITAKER, ANDREW B
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
09/03/2019 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 MINA RADHAKRISHNAN, GARRETT CAMP,
OSCAR SALAZAR, and TRAVIS CORDELL KALANICK
____________

Appeal 2018-003071
Application 13/837,592
Technology Center 3600
____________

Before ERIC B. CHEN, IRVIN E. BRANCH, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.

LENTIVECH, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING1
Pursuant to 37 C.F.R. § 41.52, Appellants2 filed a Request for
Rehearing (herein “the Request”) of our Decision affirming rejections of
pending claims 1–16 under 35 U.S.C. §§ 101 and 103(a) (herein “our
Decision”). The Request does not show we misapprehended or overlooked
the Appeal Brief’s points of contention. See 37 C.F.R. § 41.52(a)(1) (“The

1 We refer, herein, to the Request for Rehearing filed August 7, 2019
(“Req.”), Decision mailed June 6, 2019 (“Dec’n”), Examiner’s Answer
mailed September 8, 2017, Appeal Brief filed May 22, 2017 (“Br.”), and
Non-Final Office Action mailed December 20, 2016 (“Non-Final
Act.”). Appellants did not file a Reply Brief.
2 According to Appellants, the real party in interest is “Uber Technologies,
Inc.” Br. 3.
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request for rehearing must state with particularity the points believed to have
been misapprehended or overlooked by the Board.”). We add the following
for emphasis.
35 U.S.C. § 101
Appellants do not contest our selection of claim 1 as representative of
all claims for the rejection under 35 U.S.C. § 101 (Dec’n 7).
The Request alleges the following claim limitation:
upon [the one or more processors of the transport arrangement
service] detecting the transport is complete, [the one or more
processors of the transport arrangement service] causing the
mobile computing device of the user to automatically generate a
ratings interface for the user to provide feedback about the
driver.
Req. 3. In this alleged limitation, the bracketed language represents claim
preamble language reciting that “the method [is] . . . performed by one or
more processors of the transport arrangement service” (herein “the
preamble”). The un-bracketed language represents a claimed method step
of “upon detecting the transport is complete, causing the mobile computing
device of the user to automatically generate a ratings interface for the user to
provide feedback about the driver” (herein “the method step”). The
underlined language represents the “focus” of the Request’s below
contentions. Id.
Appellants contend:
[T]he underlined elements reflect[] Applicant’s identification of
“additional elements” for purpose [of] the analysis under
Step 2A, Prong Two[.] . . . [T]he Board Decision does not
appear to identify the[se] specific “additional elements[.]”
(Board Decision at Page 10).” . . . [T]he above limitation
provides timing and context to when the rating interface is
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automatically generated on the user’s device. In other words,
the “rating interface” is automatically generated on the mobile
computing device of the user, using the one or more processors
of the transportation arrangement system, when the transport is
detected as being complete.
Req. 3 (emphasis omitted). Appellants further contend:
[The] Examiner had spliced the limitation when determining
which limitations were “extra‐solution data gathering
activities.” Splicing the limitation for purpose of analysis under
Step 2A, Prong Two is not proper, as it cuts directly against a
determination of whether “additional elements” integrate an
abstract idea into a practical application.
Id. at 4 (emphasis omitted).
Appellants are contending that neither our Decision nor the rejection
considers the alleged effect of the preamble on the method step (i.e., as
shown in the above, marked-up claim limitation and described in the above
two contentions). We are unpersuaded for each of three reasons.
First Reason
Our Decision cannot have overlooked the alleged effect of the
preamble on the method step, because the alleged effect is not meaningfully
argued by the Appeal Brief. See, e.g., Br. 9–10 (addressing the method step
without referencing the preamble), 10 (addressing a graphical user
interface), 11–12 (addressing “additional elements” without referencing the
preamble), 12–13 (addressing the method step without referencing the
preamble), 13–14 (alleging technical improvements without referencing the
preamble), 14 (alleging “specific steps” without referencing the
preamble). The Appeal Brief at best alludes to the alleged effect, stating:
Claim 1 recites a distributed network architecture including one
or more processors of a transport arrangement service and
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mobile computing devices of users to enable a feedback system
for a transport service. The benefits of claim 1 over
conventional approaches are possible because of the specific
network architecture recited in claim 1. . . . For example, the
one or more processors of the transport arrangement service
detects when the transport is complete and “cause[s] [a] mobile
computing device of [a] user to generate a ratings interface.”
Id. at 15 (original bracketing). These are naked assertions that the preamble
requires the method step to generate the ratings interface and feedback via a
“specific network architecture” and thereby yields “benefits . . . over
conventional” methods.3 There is no explanation of the alleged
improvement (i.e., the specific architecture and unconventional benefits),
much less of how the preamble requires the improvement.4 Compare In re
Marco Guldenaar Holding B.V., 911 F.3d 1157, 1162 (Fed. Cir. 2018)
(“[An] appeal brief must contain substantive argument[.] . . . Appellant’s
brief . . . merely identified a few additional limitations . . . without any
explanation as to why [they] . . . rendered the claims patent-eligible.”).
Second Reason
Even assuming the Appeal Brief meaningfully argues the alleged
effect of the preamble on the method step, the argument would be addressed
by the Answer’s following statements:

3 There is not even an effort to separately address independent claim 9,
which does not recite “one or more processors of the transport arrangement
service.” Claim 9 rather recites “instructions . . . executed by one or more
processors.”
4 To the extent the Specification may allege that mere feedback was an
unconventional benefit (Spec. ¶ 3), that does not constitute an allegation of
specific improvement under 35 U.S.C. § 101. See McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1311, 1314 (Fed. Cir. 2016) (paragraph
beginning “The preemption concern . . .”).
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[I]f a patent’s recitation of a computer amounts to a mere
instruction to “implement” an abstract idea “on a computer,”
that addition cannot impart patent eligibility. . . . Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional feature”
that provides any “practical assurance that the process is more
than a drafting effort designed to monopolize the abstract idea
itself.” Alice Corp. Pty. Ltd., 134 S.Ct. at 2358 (citations
omitted). “The relevant question is whether the claims here do
more than simply instruct the practitioner to implement the
abstract idea on a generic computer.” Alice Corp. Pty. Ltd.,
134 S.Ct. at 2359. The instant claims do not.
Ans. 4–5 (original ellipses and brackets omitted). The Examiner finds,
therefore, the preamble is merely an instruction to implement the claimed
method via generic computer technology.
Our Decision identified these findings with reference to both the
Non-Final Office Action and Answer. Dec’n 10–11 (citing Non-Final
Act. 9), 12 (citing Ans. 4); see also Ans. 4–7. Appellants nonetheless do not
even contend the preamble is more than a mere instruction to implement the
claimed method via generic computer technology. Appellants instead allege
our Decision and the rejection neglect the preamble. See supra 2–3. Rather,
Appellants neglect the preamble—having failed to rebut the Examiner’s
finding that the preamble is merely an instruction to implement the claimed
method via generic computer technology.
We add that, inasmuch a “taxi arrangement service” is an
intermediary of a taxi rider and driver, the preamble is an instruction to
“[perform the] method . . . by one or more processors of [an intermediary]
transport arrangement service” (emphasis added). Alice’s patent-ineligible
method, cited by the Examiner (above block quote), similarly concerns an
instruction to perform the claimed method via a generic “computer [that] is
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itself the intermediary.” Alice, 573 U.S. 208 at 224 (internal quotation
marks and citaiton omitted).
Third Reason
We further add that the preamble is not shown to be a limiting
recitation, because Appellants fail to show it to be more than a mere
introduction to a complete invention.
If . . . the body of [a] . . . claim fully and intrinsically sets forth
the complete invention, including all of its limitations, and the
preamble offers no distinct definition of any of the claimed
invention’s limitations, but rather merely states, for example,
the purpose or intended use of the invention, then the preamble
is of no significance to claim construction because it cannot be
said to constitute or explain a claim limitation.
Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305
(Fed. Cir. 1999). Here, the preamble offers no distinct definition of a claim
limitation. It does not specify what steps are “performed by one or more
processors of the transport arrangement service,” nor what is meant by a
processor “of” a transport arrangement service. The preamble thus merely
introduces the claimed method as using at least one processor to perform at
least one method step.
Conclusion
For the foregoing reasons, the Request does not show an error in our
Decision to sustain the rejection of claims 1–16 under 35 U.S.C. § 101.
35 U.S.C. § 103(a)
The Request presents contentions for the following three recitations of
claim 1: (1) “automatically detecting when the transport is complete based in
part on the real‐time location information communicated by at least one of
the driver or the user;” (2) “upon detecting the transport is complete, causing
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the mobile computing device of the user to automatically generate a ratings
interface for the user to provide feedback about the driver” (i.e., the method
step); and (3) “the method being performed by one or more processors of the
transport arrangement service” (i.e., the preamble).5 Req. 5–6. We are
unpersuaded for the reasons below.
(1) “automatically detecting when the transport is complete
based in part on the real‐time location information
communicated by at least one of the driver or the user”
As to the above claim recitation, Appellants contend our Decision is
erred because:
The Board makes reference to Para. [0045] of Mashinsky on
page [18‐19] of the Board Decision, however, this portion of
Mashinsky does not relate to events which occur at the end of a
ride, but rather “upon completion of the transaction, the system
collects customer satisfaction information using SMS, e‐mail or
IVR and updates its data records.” The same paragraph of
Mashinsky indicates the events occur as part of a reservation,
not at the completion of transport.
Req. 5 (original bracketing).
We are unpersuaded. As reflected by the above contention,
Mashinsky’s paragraph 45 states that “[u]pon completion of the transaction,
the system collects customer satisfaction information.” There is plainly little

5 The Request does not expressly identify the third recitation, which is the
preamble. It is identified inasmuch Appellants contend Mashinsky’s steps of
paragraphs 53–54 are not performed by the central controller 130. Req. 6.
We presume Appellants thereby allege paragraphs 53–54 cannot teach or
suggest “one or more processors of the transport arrangement service,” i.e.,
the preamble. If this presumption is incorrect, then we cannot discern a
claim recitation underlying the Request’s contentions as to paragraphs
53–54.
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if any “customer satisfaction information” to collect before completing the
‘taxiing’ focus of the customer’s overall satisfaction and Mashinsky’s rating
interface, i.e., before completing the transport. See, e.g., Mashinsky ¶ 9
(describing an objective of “collecting satisfaction and rating information
about individual cars, drivers and companies,” which plainly concern
transport). It is, therefore, clear that the completed transaction of
Mashinsky’s paragraph 45 is a completed transport.
(2) “upon detecting the transport is complete, causing the mobile
computing device of the user to automatically generate a ratings
interface for the user to provide feedback about the driver”
As to the above claim recitation, i.e., the method step, Appellants
contend our Decision is erred because “the Board did not consider ‘upon
detecting the transport is complete’ when analyzing ‘causing the mobile
computing device of the user to automatically generate a ratings interface for
the user[’].” Req. 6.
We are unpersuaded. Our Decision cannot have overlooked the “upon
detecting the transport is complete” condition for “causing . . . to
automatically generate a ratings interface” because the condition is not
meaningfully argued by the Appeal Brief. See Br. 17–18; see also supra 4–5
(discussion of meaningful argument). The Appeal Brief does not
substantively address whether Mashinsky’s ratings interface is (or would
obviously be) generated “upon detecting the transport is complete.” Br.
17–18. The Appeal Brief argues that Mashinsky’s ratings interface is not
shown to be automatically generated. Id. Although the Appeal Brief quotes
the “upon detecting the transport is complete” condition (id. at 17–18), these
quotations add only a general allegation of patentability for the condition.
Compare Marco, 911 F.3d at 1162 (quoted at supra 4).
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We add that our Decision shows the “upon detecting the transport is
complete” condition would have been obvious. In addressing the method
step, our Decision shows “a person of ordinary skill in the art . . . would
understand Mashinsky’ s user rating interface as both displaying when the
taxi ride completes and [as] entering a simple numerical rating.” Dec’n
18–19. The “upon detecting” condition can be mapped to, for example, the
obviousness of the taxi rider detecting the ride is complete and then
prompting the smartphone to generate the ratings interface. The method step
does not require further automation. Only the generating of the ratings
interface is automated—not the detecting of the transport’s completion that
results in the generating of the interface.6
(3) “the method being performed by one or more
processors of the transport arrangement service”
As to the above claim recitation, i.e., the preamble, Appellants
contend our Decision is erred because: “The Board Decision relies on
Paras. [0053] and [0054] of Mashinsky[.] . . . These paragraphs do not
relate to the ‘central controller 13[0]’ of Mashinsky, but rather to the manual
actions of the customer.” Req. 6. Appellants thus contend steps 380–90 of
Mashinsky’s paragraphs 53–54 are manually performed and, accordingly,
our Decision overlooks that paragraphs 53–54 cannot teach or suggest “the
method being performed by one or more processors,” i.e., the preamble. See
supra n.5. We are unpersuaded for each of two reasons.

6 The method step’s “upon detecting” condition has no antecedent-basis link
to the prior method step’s “automatically detecting when the transport is
complete.” These features can accordingly be different detections of the
transport’s completion, e.g., respectively by a taxi rider and central
controller.
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First, our Decision cannot have overlooked whether the preamble
distinguishes the claimed method over Mashinsky, because the Appeal Brief
does not meaningfully address the preamble. The Appeal Brief does not
assert, much less meaningfully argue, the preamble imparts a limitation (e.g.,
“performed by one or more processors”) not taught by Mashinsky. See
Br. 17–18 (addressing Mashinsky). The Appeal Brief rather contends that
Mashinsky does not teach the method step or resulting rating feature. Id.
Second, even assuming the Appeal Brief meaningfully argues that the
preamble imparts a limitation not taught by Mashinsky, the Request does not
show the pertinence of Mashinsky’s central controller 130. For example, the
Request does not show the preamble’s “one or more processors” must be
mapped to a central controller or are mapped to the central controller 130.
Compare Non Final-Act. 10 (“one or more processors of the transport
agreement service . . . (reservation system, Mashinsky, ¶29; central system
and automated dispatch, ¶31; computer phone, wireless access device, ¶24;
software and communication system, ¶26)”) (emphasis omitted). Nor does
the Request show the preamble’s “one or more processors” cannot be
mapped to a user device such as Mashinsky’s “computer phone.”
Conclusion
The Request does not show an error in our Decision to sustain the
rejections of claims 1–16 under 35 U.S.C. § 103(a).
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ORDER
The Request for Rehearing is granted to the extent that we have
reconsidered our Decision in light of Appellants’ contentions. We are not
persuaded of error in our Decision and maintain the rejections as set forth
therein.
DENIED