Josh Evnin et al.

Patent Trials and Appeals Board

Aug 2, 2019

13622659 - (D) (P.T.A.B. Aug. 2, 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.
13/622,659 09/19/2012 Josh Evnin 60421-0016 6059
29989 7590 08/02/2019
HICKMAN PALERMO BECKER BINGHAM LLP
1 ALMADEN BOULEVARD
FLOOR 12
SAN JOSE, CA 95113
EXAMINER
FRENEL, VANEL
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
08/02/2019 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):
usdocket@h35g.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOSH EVNIN, SANDRA DAINORA, JOSH NOLAN, and
MATTHEW MALONEY1
____________________

Appeal 2017-009860
Application 13/622,659
Technology Center 3600
____________________

Before ROBERT E. NAPPI, LARRY J. HUME, and CATHERINE
SHIANG, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
non-final rejection of claims 1, 5, 8 through 16, and 18 through 35. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 According to Appellants, GrubHub Holdings Inc. is the real party in
interest. App. Br. 1.
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INVENTION
The invention is directed to a mobile application which interfaces with
a server to optimize delivery routes of orders and sends delivery status to the
server to provide prompt status updates. Abstract. Claim 1 is illustrative of
the invention and is reproduced below.
1. A method for managing delivery of made-to-order food,
the method comprising the steps of:
i. a driver mobile device receiving a set of orders for
delivery from a driver server over a network interface of
the driver mobile device or an input system of the driver
mobile device, wherein the set of orders includes more
than one order, and wherein the driver mobile device
includes a Global Positioning System receiver for
determining a physical location of the driver mobile
device;
ii. the driver mobile device displaying more than one
order in the set of orders on a screen of the driver mobile
device;
iii. responsive to a user input, the driver mobile device
selecting one or more criteria from a set of criteria for
sorting the set of orders, wherein the set of criteria
includes at least one of an order reception time criterion,
a fastest delivery criterion or a closest distance criterion;
iv. the driver mobile device sorting the set of orders using
the selected one or more criteria;
v. the driver mobile device selecting, from among a
plurality of digitally stored values indicating available
modes of transportation, a delivery method for the sorted
set of orders;
vi. based on the selected delivery method, the driver
mobile device retrieving a delivery route for the sorted
set of orders from a routing server through the network
interface;
vii. the driver mobile device displaying the delivery route
on the screen of the driver mobile device;
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viii. the driver mobile device, in response to a
determination, based on the Global Positioning System
receiver, that the driver mobile device is within a
threshold distance of a delivery site that is associated
with an order of the set of orders, sending a digital
electronic delivery status message for the order using the
network interface to the driver server, wherein sending
the digital electronic delivery status message causes the
driver server to send a message to a diner computing
device that is associated with the order and the delivery
site and indicating that the order will be delivered
shortly.

EXAMINER’S REJECTIONS2
The Examiner rejected claims 1, 5, 8 through 16, and 18 through 35
under 35 U.S.C. § 101 for being directed to patent-ineligible subject matter.
Non-Final Act. 2–5.
The Examiner rejected claims 1, 5, 8 through 16, and 18 through 35
under 35 U.S.C. § 103 as being unpatentable over Heflin (US 2005/0004843
A1; publ. Jan. 6, 2005) Haken (US 2003/0125963 A1; publ. July 3, 2003),
Campbell (US 2004/0030572 A1; publ. Feb. 12, 2004), Yang (US
2009/0106124 A1; publ. Apr. 23, 2009), and Schwarz (US 2010/0076853
A1; publ. Mar. 25, 2010). Non-Final Act. 5–14.

ANALYSIS
We have reviewed Appellants’ arguments in the Briefs, the
Examiner’s rejections, and the Examiner’s response to Appellants’

2 Throughout this Decision we refer to the Appeal Brief filed January 31,
2017 (“App. Br.”); the Reply Brief filed July 14, 2017 (“Reply Br.”);
Non-Final Office Action mailed October 6, 2016 (“Non-Final Act.”); and
the Examiner’s Answer mailed May 19, 2017 (“Answer”).
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arguments. Appellants’ arguments have persuaded us of error in the
Examiner’s rejection of claims 1, 5, 8 through 16 and 18 through 35 under
35 U.S.C. § 101; however Appellants’ arguments have not persuaded us of
error in the Examiner’s rejection under 35 U.S.C. § 103.

Rejection under 35 U.S.C. § 101
PRINCIPLES OF LAW
Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the
Patent Act, which recites:
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.
There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in 35 U.S.C. § 101: “[l]aws of
nature, natural phenomena, and abstract ideas.” Alice Corp. Pty. Ltd. v. CLS
Bank Int’l, 573 U.S. 208, 216 (2014) (citation omitted); Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–77). In
accordance with that framework, we first determine what concept the claim
is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims
before us are drawn to the concept of intermediated settlement, i.e., the use
of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561
U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the
basic concept of hedging, or protecting against risk.”).
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Concepts determined to be abstract ideas, and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S.
at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
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If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim
that recites an abstract idea must include ‘additional features’ to ensure ‘that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea].’” Id. (alternations in original) (quoting Mayo, 566 U.S. at
77). “[M]erely requir[ing] generic computer implementation[] fail[s] to
transform that abstract idea into a patent-eligible invention.” Id.
The United States Patent and Trademark Office “USPTO” recently
published revised guidance on the application of § 101. USPTO’s 2019
REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50
(Jan. 7, 2019) (“Memorandum”). Under that guidance, we first determine
whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MANUAL OF PATENT EXAMINING PROCEDURE
(“MPEP”) § 2106.05(a)–(c), (e)–(h) (9th ed., Rev. 08.2017, Jan.
2018)).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
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(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Memorandum, 84 Fed. Reg. at 56.
ANALYSIS
The Examiner determines the claims are not patent eligible as they are
directed to a judicial exception without reciting significantly more.
Non-Final Act. 2–4. Specifically, the Examiner determines the claims are
directed to an abstract idea of organizing human activity and states that the
claims include concepts similar to those found abstract by the courts.
Non-Final Act. 3–4 (citing buySAFE v. Google, Inc., 765 F.3d 1350 (Fed.
Cir. 2014); Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can. (U.S.), 687
F.3d 1266 (Fed. Cir. 2012); Bilski; Alice; Accenture Global Servs. v.
Guidewire Software, Inc., 728 F.3d 1336 (Fed. Cir. 2013); Fort Props., Inc.
v. Am. Master Lease, LLC, 671 F.3d 1317 (Fed. Cir. 2012); In re Comiskey,
554 F.3d 967 (Fed. Cir. 2009); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
709, 715 (Fed. Cir. 2014); and In re Maucorps, 609 F.2d 481, 485 (CCPA
1979)).
Appellants argue that the Examiner’s rejection is in error as “the
asserted abstract idea is not similar to any concept identified in a prior court
decision” and that the “Office Action provides no explanation as to why the
Asserted Abstract Idea is considered abstract apart from merely citing,
without any real comparison, non-analogous cases.” App. Br. 7, 8. Further,
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Appellants argue that the Examiner has not discussed the features of the
claims and when the claims are properly analyzed they recite features that
are significantly more than the asserted abstract idea. Answer 9–19.
Appellants argue the “‘additional limitations’ in the present claims qualify as
‘significantly more’ at least because the ‘additional elements’ add ‘a specific
limitation other than what is well-understood, routine and conventional in
the field, or adding unconventional steps that confine the claim to a
particular useful application.’” App. Br. 18 (citing the last limitation of
claim 1).
We agree with Appellants that the Examiner has provided an
inadequate explanation of how the claims recite an abstract idea.
Nonetheless, under our de novo review, we conclude the claims recite an
abstract idea. We agree with Appellants that the Examiner has not
established that the additional limitations do not add a specific limitation
other than what is well-understood, routine, conventional, and, thus, reverse
the Examiner’s rejection.
To consider whether the Examiner erred by not establishing that the
additional limitations do not add a specific limitation other than what is
well-understood, routine, conventional, we must first consider whether and
which claim elements recite an abstract concept. As discussed above, the
USPTO has published recently revised guidance for the application of § 101
and under that guidance we first determine whether the claims recite an
abstract idea. Here, the Examiner has concluded the claims recite an
abstract idea, and merely cited numerous cases without providing an analysis
of how the claim limitations recite an abstract idea similar to that at issue in
the cases. Nonetheless, we agree with the Examiner that the claims recite an
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abstract idea. Independent claim 1 recites steps of receiving orders,
displaying the orders, responsive to the user input selecting criteria for
sorting the orders, sorting the orders, selecting a mode of transportation,
retrieving delivery route, and displaying a delivery route. Independent
claims 16 and 28 recite similar limitations. Broadly interpreted, these steps
can be construed as steps to manage personal behavior, i.e., gathering
information and routing a delivery. These limitations of routing a delivery
are similar to those performed in a mailroom, which have been considered to
be an abstract method of organizing human activity by our reviewing court.
See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1317–18
(Fed. Cir. 2016) (stating “mailrooms receive correspondence, keep business
rules defining actions to be taken regarding correspondence based on
attributes of the correspondence, apply those business rules to
correspondence, and take certain actions based on the application of business
rules” and holding that this represents an abstract concept of organizing
human activity).
Further, these limitations can also be construed as reciting a mental
process, the steps of receiving an order, receiving selections of sorting
criteria and transportation modes, and applying the selections to the order to
generate a delivery route which is displayed, when broadly constructed are
steps of collecting data, analyzing it, and displaying it. Our reviewing court,
in Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016),
has stated “we have treated analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more, as
essentially mental processes within the abstract-idea category.” Electric
Power Grp., 830 F.3d at 1354. See also Intellectual Ventures I LLC v.
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Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017) (concluding
that abstract ideas include the concepts of “collecting, displaying, and
manipulating data.”). Thus, we concur with the Examiner that the
independent claims recite an abstract concept.
Further, the Examiner finds that the additional elements of the clams
are well understood, routine and conventional and states:
the courts have recognized the following computer functions to
be well-understood, routine, and conventional functions when
performed by generic computer elements:
Flook, Bancorp: performing repetitive calculations;
Alice: receiving, processing, and storing data, also
referred to as electronical recordkeeping;
Content Extraction: electronically scanning or extracting
data from a physical document;
Ultramercial: updating an activity log; Benson, Bancorp,
CyberSource: automating mental tasks;
Ultramercial, buySAFE, Cyberfone: receiving or
transmitting data over a network such as by using the Internet to
gather data.
Non-Final Act. 4–5. The Examiner has not directly addressed Appellants’
argument directed to the claim 1 limitation of
the driver mobile device, in response to a determination, based
on the Global Positioning System receiver, that the driver
mobile device is within a threshold distance of a delivery site
that is associated with an order of the set of orders, sending a
digital electronic delivery status message for the order using the
network interface to the driver server, wherein sending the
digital electronic delivery status message causes the driver
server to send a message to a diner computing device that is
associated with the order and the delivery site and indicating
that the order will be delivered shortly.
While the recitation of a mobile device and a server may be to generic
computer components, the Examiner has not shown that using a mobile
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device to provide a message to a server in response to a determination by a
Global Positioning system that the mobile device is within a threshold
distance of the delivery site and that the server uses the message to send a
status message to the diner are well-understood, routine, conventional of
generic computers. Accordingly, we do not sustain the Examiner’s rejection
of claims 1, 5, 8 through 16, and 18 through 35 under 35 U.S.C. § 101 on
procedural grounds.

Rejections under 35 U.S.C. § 103
Appellants argue the Examiner’s rejection of independent claim 1 is in
error as the combination of Heflin, Haken, Campbell, Yang, and Schwarz do
not teach sending a message when the driver mobile device is within a
threshold distance of the delivery site. App. Br. 21–25. Appellants’
arguments are directed to the various paragraphs of Schwartz cited by the
Examiner. Appellants assert that Schwartz teaches an embodiment directed
to delivery, where there is a map of the delivery area, but in that
embodiment makes no mention of sending a status message upon
determination that the mobile device is within a threshold area of the
delivery site. App. Br. 24, Reply Br. 3–4. Further, Appellants identify that
in another embodiment, directed to dispatching taxi drivers, Schwartz
teaches sending a message from the taxi, but does not teach sending the
message based upon the taxi moving a within a threshold of the customer as
claimed. App. Br. 24–25 Reply Br. 4–5.
Appellants’ arguments have not persuaded us of error in the
Examiner’s rejection. Representative claim 1 recites that in response to a
determination based upon a GPS receiver that the mobile device is within a
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threshold of the delivery site, the user is notified the delivery will be at the
site shortly. The Examiner cites to Haken as teaching sending a delivery
notification and also to Schwartz for teaching that the notification is sent
when the driver is within a threshold distance from the delivery site. Non-
Final Act. 6 (citing Haken paras. 21, 33), Non-Final Act. 11 (citing Schwartz
Fig. 5, paras. 107, 124–135, 146). Further, the Examiner states that broadly
construed, Schwartz teaches the disputed limitation.
We concur with the Examiner, as the claim does not identify how or
what the threshold distance represents nor does the claim recite the
notification is triggered by movement to the threshold distance. Thus, as the
threshold distance is not defined, we consider Schwartz’s teaching of the
delivery range or of a taxi being within proximity will meet the threshold
distance. In the embodiment of food delivery, Schwartz teaches checking if
a merchant (where the delivery person begins their delivery) and address of
the delivery location are within the delivery range and if they are within
range, the merchant may confirm the order, thus teaching that the delivery
person who starts at the merchant is within a threshold range. Schwartz
paras. 113, 120. Further, in the embodiment of the taxi service, the taxis in
range (a threshold distance) from the request for service are queried to see if
they will accept the fare, if the driver confirms (via their mobile device) the
fare is accepted and the person requesting taxi service is notified. Schwartz
paras. 179–180.
Accordingly, there is ample evidence in Schwartz to support the
Examiner’s finding that the disputed limitation is taught. We further note
that Haken teaches a system where a delivery person and customer meet up
to complete the delivery, and that when both are at the same location (a
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threshold distance from the delivery location), a message is sent to facilitate
them finding each other. Haken para. 33. Thus, Haken also teaches the
disputed limitation. Accordingly, Appellants’ arguments have not persuaded
us the Examiner erred in finding the combination of Heflin, Haken,
Campbell, Yang, and Schwarz do teach the claimed sending a message when
the driver mobile device is within a threshold distance of the deliver site.
Appellants present the additional argument that:
there must be some suggestion in the references to distill the
claimed technique from the references and Schwartz provides
no “linking evidence” that a skilled person could have used to
formulate the claimed technique from Schwartz in combination
with everything else. The Office's rationale to combine the five
(5) references, stated in the paragraph bridging pages 11-12 of
the Office Action, would not have led a skilled person to the
claimed invention but only would have resulted in formulating
new ways of coding SMS messages.
App. Br. 25.
We are not persuaded of error by this argument. The Examiner has
provided a rationale, based upon the teachings in the reference, in the
rejection to combine each of the references with the other. See, e.g., Non-
Final Act. 6, 9, 10, 11–12. Appellants’ arguments have not addressed the
rationale or the evidence cited in the Examiner’s explanation of why the
skilled artisan would combine the references, and as such we are not
persuaded by the naked assertion that the rationale “would not have led a
skilled person to the claimed invention.” Accordingly, we sustain the
Examiner’s obviousness rejection of claim 1 and claims 5, 8 through 16 and
18 through 35, grouped with claim 1.

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DECISION
We reverse the Examiner’s rejection of claims 1, 5, 8 through 16, and
18 through 35 under 35 U.S.C. § 101.
We affirm the Examiner’s rejection of claims 1, 5, 8 through 16, and
18 through 35 under 35 U.S.C. § 103.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner’s decision. See 37
C.F.R. § 41.50(a)(1).
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). See 37
C.F.R. § 41.50(f).
AFFIRMED