Radhakrishnan, Mina et al.Download PDFPatent Trials and Appeals BoardSep 3, 201913837592 - (R) (P.T.A.B. Sep. 3, 2019) Copy Citation 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. Appeal 2018-003071 Application 13/837,592 2 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 Appeal 2018-003071 Application 13/837,592 3 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 Appeal 2018-003071 Application 13/837,592 4 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 . . .”). Appeal 2018-003071 Application 13/837,592 5 [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 Appeal 2018-003071 Application 13/837,592 6 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 Appeal 2018-003071 Application 13/837,592 7 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. Appeal 2018-003071 Application 13/837,592 8 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). Appeal 2018-003071 Application 13/837,592 9 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. Appeal 2018-003071 Application 13/837,592 10 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). Appeal 2018-003071 Application 13/837,592 11 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 Copy with citationCopy as parenthetical citation