Sunil Kumar. Garg et al.Download PDFPatent Trials and Appeals BoardMay 27, 202014520095 - (D) (P.T.A.B. May. 27, 2020) 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. 14/520,095 10/21/2014 Sunil Kumar Garg UP-048 3436 110654 7590 05/27/2020 Mahamedi IP Law LLP (Uber) 910 Campisi Way, Suite 1E Campbell, CA 95008 EXAMINER ELCHANTI, ZEINA ART UNIT PAPER NUMBER 3628 NOTIFICATION DATE DELIVERY MODE 05/27/2020 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 SUNIL KUMAR GARG, STACEY CORWIN FARRELLY, RYAN DAVID McKILLEN, and MAYA PARITOSH CHOKSI Appeal 2018-008537 Application 14/520,095 Technology Center 3600 BEFORE ERIC S. FRAHM, DENISE M. POTHIER, and MICHAEL T. CYGAN, Administrative Patent Judges. POTHIER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1,2 appeals from the Examiner’s decision to reject all pending claims 1–6, 8–11, and 21–30. See Appeal Br. 3. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Uber Technologies, Inc. Appeal Br. 3. 2 Throughout this opinion, we refer to the Final Action (Final Act.) mailed November 16, 2017, the Appeal Brief (Appeal Br.) filed April 2, 2018, the Appeal 2018-008537 Application 14/520,095 2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER The claims are directed to “[a]n on-demand service arrangement system [that] can enable users to request on-demand services through [the] use of computing devices,” including transport or delivery services. Spec. ¶ 1. A business can set up an account with the system to enable the business to pay for the services for their employees associated with a business account and can create rules (e.g., Rule1–Rule7, Rule 1001, 1004, 1017) associated with the account. Id. ¶¶ 1, 5, 9–10, 34–45, 69–70, Fig 3. The system includes determining whether a user’s transport request satisfies one or more rules, including those concerning a specific transport type (e.g., the cheapest transport type) and geofence information (e.g., geographic location). Id. ¶¶ 34–36, 38–39, 68–69, 74, Figs. 3–4 (step 440) Claim 1, below, illustrates the claimed subject matter: 1. A method of managing a network-based on-demand transport service for a given geographic region, the method being performed by one or more processors of a network-computing system and comprising: [a] based on an executing client application on computing devices of users throughout the given geographic region, establishing wireless network connections to communicate with the computing devices of the users over one or more wireless networks; [b] based on an executing driver application on computing devices of drivers operating vehicles throughout the given Examiner’s Answer (Ans.) mailed June 29, 2018, and the Reply Brief (Reply Br.) filed August 28, 2018. Appeal 2018-008537 Application 14/520,095 3 geographic region, establishing wireless network connections to communicate with the computing devices of the drivers over the one or more wireless networks; [c] receiving, over the one or more wireless networks from a computing device of a user, a transport request for a transport service for the user, the transport request indicating (i) a user identifier (ID) associated with the user, (ii) a requested transport type, and (iii) a pickup location; [d] initiating a driver selection process to service the transport request for the user by (i) receiving, over the one or more wireless networks from the computing devices of the drivers, location data indicating current locations of the drivers, and (ii) based on the current locations of the drivers, selecting a proximate driver of a vehicle, in relation to the user, that satisfies the requested transport type to provide the transport service for the user; [e] determining, based on the user ID, that the user is associated with a service entity corresponding to the transport service; [f] in response to determining that the user is associated with the service entity, determining, by the network-computing system, whether the transport request satisfies a set of authorization rules for utilizing a service account of the service entity based, at least in part, on the requested transport type and the pickup location, wherein the set of authorization rules specify one or more authorized transport types and a configured geofence specifying a geographic area within which pick-up locations are authorized; [g] based, at least in part, on (i) the requested transport type being an authorized transport type, and (ii) the pick-up location being within the configured geofence, determining that the transport request satisfies the set of authorization rules; and Appeal 2018-008537 Application 14/520,095 4 [h] in response to determining that the transport request satisfies the set of authorization rules, at least partially charging the service account of the service entity for providing the transport service for the user. Appeal Br. 24–25 (Claims App.) (bracketing and lettering added) (“limitations [a]–[h]” respectively). We have reviewed the Examiner’s rejection in light of Appellant’s arguments presented in this appeal. Arguments which Appellant could have made, but did not make in the Brief are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). Except as noted, we adopt as our own the findings and reasons set forth in the rejections from which the appeal is taken and in the Examiner’s Answer. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Sullivan US 2005/0125667 A1 June 9, 2005 Lal US 2006/0149569 A1 July 6, 2006 Hill US 2009/0216600 A1 Aug. 27, 2009 Greak US 2011/0112869 A1 May 12, 2011 Lerenc US 2013/0158869 A1 June 20, 2013 Ye US 2015/0127526 A1 May 7, 2015 (filed Aug. 8, 2014) Gaitan US 2016/0292596 A1 Oct. 6, 2016 (U.S. Provisional Application No. 61/907,080 filed November 21, 2013) Appeal 2018-008537 Application 14/520,095 5 THE PATENT ELIBIGILITY REJECTION Appellant argues claims 1, 21, and 30 as a group. Appeal Br. 10–15. We select these claims as representative. See 37 C.F.R. § 41.37(c)(1)(iv). Regarding representative claim 1, the Examiner found that the claim is “directed to the abstract idea of ‘requesting a transportation service[.]’” Final Act. 6. The Examiner further stated the “claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception,” noting additional elements in the claims (e.g., computing system, processor, and memory). Id. at 7. The Examiner contended the additional elements are generic computer components performing generic computer functions. Id. The Examiner also found “the steps/functions of independent claims 1, 21, and 30 whether taken alone or in an ordered combination amount to significantly more than the abstract idea identified above,” including they do not (1) improve a technology or technical field, (2) solve a problem specifically arising in computer technology, or (3) improve the claimed processor’s function. Id. Appellant argues the Examiner did not establish a prima facie case of patent-ineligibility because the Examiner did not evaluate the claim as a whole. Appeal Br. 10–11. Appellant also argues certain emphasized features “make clear the subject matter of claim [30]3 is patent-eligible.” Id. at 13. Appellant also argues claim 30 involves wireless network communications with computing devices of users and drivers based on executed applications on the computing devices and without these devices the claimed method cannot be performed. Id. at 14. For this reason, 3 Appellant mistakenly refers to claim 1 after quoting from and referring to the emphasized features in claim 30. Appeal Br. 12–13. Appeal 2018-008537 Application 14/520,095 6 Appellant argues the additional elements in claim 30 are not generic recitations to a computer but are machines that impose meaningful limits on the claim’s scope. Id. at 14–15; Reply Br. 3–7. LEGAL PRINCIPLES 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. In Mayo and Alice, the Supreme Court explained that § 101 “contains an important implicit exception” for laws of nature, natural phenomena, and abstract ideas. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012); Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014); see also 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. Mayo, 566 U.S. at 77–80; Alice, 573 U.S. at 217–18. Under Mayo/Alice step one, we “determine whether the claims at issue are directed to” a judicial exception, i.e., an abstract idea, a law of nature, or a natural phenomenon. Alice, 573 U.S. at 217. 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.”). Step one involves looking at the “focus” of the claims at Appeal 2018-008537 Application 14/520,095 7 issue and their “character as a whole.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018). Under Mayo/Alice step two, we “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 the judicial exception. Alice, 573 U.S. at 217–18, 221–22 (quoting Mayo, 566 U.S. at 78–79). “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. at 221 (alterations 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. Step two involves the search for an “inventive concept.” Alice, 573 U.S. at 217–18, 221; Univ. of Fla. Research Found., Inc. v. Gen. Elec. Co., 916 F.3d 1363, 1366 (Fed. Cir. 2019). “[A]n inventive concept must be evident in the claims.” RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017). In January 2019, the PTO issued revised guidance for determining whether claims are directed to a judicial exception. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”).4 The Revised Guidance applies to the Board. Id. at 50–51, 57 n.42; see 35 U.S.C. § 3(a)(2)(A) (investing the Director with responsibility “for providing policy direction” for the PTO). 4 Neither the Examiner nor Appellant had the benefit of the Revised Guidance when presenting their respective positions concerning subject- matter eligibility. Appeal 2018-008537 Application 14/520,095 8 Under the Revised Guidance and the October 2019 Update: Subject Matter Eligibility (“October 2019 Update”), we first look to 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) (“Step 2A, Prong One”); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”). Revised Guidance, 84 Fed. Reg. at 52–55. Step 2A, Prong Two involves (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (b) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application. See Revised Guidance - Section III(A)(2), 84 Fed. Reg. 54–55. Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look, under Step 2B, to whether the claim: (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. Revised Guidance, 84 Fed. Reg. at 52–56. Appeal 2018-008537 Application 14/520,095 9 ANALYSIS Prima Facie Case At the outset, we disagree with Appellant that the Examiner failed to establish prima facie case of patent-ineligibility. As indicated above, Mayo and Alice set forth a two-step analytical framework for evaluating patent- eligible subject matter. Mayo, 566 U.S. at 77–80; Alice, 573 U.S. at 217–18. The Examiner has analyzed representative claims 1, 21, and 30 under this two-step framework. Final Act. 6–7. The Examiner first identified and explained that the claims are directed to a judicial exception, including to certain methods of organizing human activity and mental processes. See id. at 6; Ans. 4. The Examiner also considered the additional elements (e.g., computing system, medium, processor, and memory) individually and as a combination and determined that they do not add enough to transform the claims as a whole into significantly more than the identified judicial exception. Final Act. 7 (citing Alice, 573 U.S. 208, and its “corresponding citations” from USPTO July 2015 Update on Subject Matter Eligibility 7) (stating the additional elements perform generic computer functions and do not improve a technology or a hardware’s functions); see Ans. 4–5. The Examiner’s analysis is also consistent with the Office’s current guidelines. See October 2019 Update 15–16.5 Revised Guidance Step 1 Step 1 of the Revised Guidance asks whether the claimed subject matter falls within the four statutory categories of patentable subject matter 5 Available at https://www.uspto.gov/sites/default/files/documents/ peg_oct_2019_update.pdf (last visited May 12, 2020). Appeal 2018-008537 Application 14/520,095 10 identified by 35 U.S.C. § 101: process, machine, manufacture, or composition of matter. See Revised Guidance. Claim 1 recites “[a] method of managing a network-based on-demand transport service for a given geographic region”; claim 21 recites “[a] non-transitory computer-readable medium storing instructions that, when executed . . ., cause the network- computing system to” perform various functions; claim 30 recites “[a] network-computing system” that perform various functions. Appeal Br. 24– 25, 28–29, 32–33 (Claims App.). Appellant does not argue the Examiner erred in concluding these claims fall within the four statutory categories of patentable subject matter. Mayo/Alice Step One; Revised Guidance Step 2A, Prong 1 Under Step 2A, Prong 1 of the Revised Guidance, we determine whether the claims recite any judicial exceptions, including certain groups of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes). See Revised Guidance at 51–54. In this application, the Examiner determined that claims 1, 21, and 30 are directed to “requesting a transportation service” (Final Act. 6) as well as “requesting and providing a transportation service” (Ans. 4). The Examiner categorized the claimed concept as “certain methods of organizing human activity” and a process that “can be performed by a human using a pen and paper.” Final Act. 6. We agree with the Examiner. Representative claim 1 recites “[a] method of managing a[n] . . . on- demand transport service for a given geographic region.” Appeal Br. 24 (Claims App.). Claim 1’s body further recites limitations [c]–[h] recitations directed to requesting and processing a transport service. Id. at 23–24 Appeal 2018-008537 Application 14/520,095 11 (Claims App.). For example, claim 1 recites “receiving . . . a transport request for a transport service for the user, the transport request indicating (i) a user identifier (ID) associated with the user, (ii) a requested transport type, and (iii) a pickup location” (i.e., limitation [c]); initiating a driver selection process to service the transport request for the user by (i) receiving . . . location data indicating current locations of the drivers, and (ii) based on the current locations of the drivers, selecting a proximate driver of a vehicle, in relation to the user, that satisfies the requested transport type to provide the transport service for the user (limitation [d]); “determining, based on the user ID, that the user is associated with a service entity corresponding to the transport service” (limitation [e]); in response to determining that the user is associated with the service entity, determining . . . whether the transport request satisfies a set of authorization rules for utilizing a service account of the service entity based, at least in part, on the requested transport type and the pickup location, wherein the set of authorization rules specify one or more authorized transport types and a configured geofence specifying a geographic area within which pick-up locations are authorized (limitation [f]); “based, at least in part, on (i) the requested transport type being an authorized transport type, and (ii) the pick-up location being within the configured geofence, determining that the transport request satisfies the set of authorization rules” (limitation [g]), and “in response to determining that the transport request satisfies the set of authorization rules, at least partially charging the service account of the service entity for providing the transport service for the user” (limitation [h]). Appeal Br. 24–25 (Claim App.). Appeal 2018-008537 Application 14/520,095 12 All the above-quoted language in claim 1 (as well as similar language in claims 21 and 30) demonstrate that the focus of claim 1 is on a process for requesting a transport service and processing the request. See id. This process is analogous to the steps an employee of a company takes when requesting a taxi service using a business account over the phone and the taxi service processing the request. This claimed process essentially describes business relations or sales activities. We therefore conclude that claim 1 (and similarly, claims 21 and 30) recite commercial interactions that fall within the certain method of organizing human activity category of the judicial exceptions set forth in the Revised Guidance. See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1354–55 (Fed. Cir. 2014) (finding its claims were directed to an abstract idea of creating a contractual relationship); cf. Alice, 573 U.S. at 220–221 (determining claims drawn to the concept of an intermediated settlement or using a third party to mitigate settlement risk are abstract ideas). Additionally, the above-noted steps (e.g., limitations [c]–[h]) of claim 1 (and similar limitations in claims 21 and 30) recite concepts that can be performed in the human mind, including observations, evaluations, and judgments. For example, the above-noted limitations [c]–[d] involve “receiving . . . a transport request for a transport service for the user, the transport request indicating (i) a user identifier (ID) associated with the user, (ii) a requested transport type, and (iii) a pickup location” and “receiving . . . location data indicating current locations of the drivers.” These steps could be performed by (1) observing the current drivers’ locations as well as the user identifier (ID), requested transport type, and pickup location from a transport request and (2) storing this information mentally or writing down Appeal 2018-008537 Application 14/520,095 13 the information—steps that can involve mere observation, evaluation, and logical reasoning. See Mortg. Grader Inc. v. First Choice Loan Servs., Inc., 811 F.3d 1314, 1324 (Fed. Cir. 2016) (holding a claim reciting selecting information, upon determining a borrower wishes to obtain a loan, could be performed by humans without a computer); cf. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372–73 (Fed. Cir. 2011) (noting that a recited step that used a map of credit card numbers to determine the validity of a credit card transaction could be performed entirely mentally by merely using logical reasoning). Also, each of the limitations [d]–[g] involving a “determining” step that can be done by a person merely observing information (e.g., current drivers’ locations in limitation [d], user ID in limitation [e], and authorization rules, transport type and authorized transport type, pickup location, and configured geofence specifying an authorized geographic area for pickup locations in limitations [f]–[g]) and mentally providing or writing down the determination. These steps can involve mere judgement and logical reasoning. See Mortg. Grader, 811 F.3d at 1324 (holding a claim reciting selecting information, upon determining a borrower wishes to obtain a loan, could be performed by humans without a computer); see CyberSource, 654 F.3d at 1372–73 (noting that a recited step that used a map of credit card numbers to determine the validity of a credit card transaction could be performed entirely mentally by merely using logical reasoning). Likewise, the step of “charging the service account” (limitation [h]) involves evaluating the authorization rules. Accordingly, limitations [c]–[h] fall squarely within the mental processes category of the agency’s guidelines and, therefore, recite an Appeal 2018-008537 Application 14/520,095 14 abstract idea. See Guidance, 84 Fed. Reg. at 52 (listing exemplary mental processes include observation and evaluation). Appellant argues certain emphasized features in claim 30 “make clear the subject matter of claim [30] is patent-eligible.” Appeal Br. 13. The emphasized features are (1) “network-computing system comprising: one or more processors” and (2) “a memory storing instructions that, when executed by the one processors, cause the computer system to:” (a) “based on an executing client application on computing devices throughout a given geographic region, establish wireless network connections to communicate with the computing devices of the users over one or more wireless networks;” (b) “based on an executing driver application on computing devices of drivers operating vehicles throughout the given geographic region, establish wireless network connections to communicate with the computing devices of the drivers over the one or more wireless networks;” (c) “receive, over the one or more wireless networks from a computing device of a user, a transport request for a transport service for the user, the transport request indicating (i) a user identifier (ID) associated with the user, (ii) a requested transport type, and (iii) a pickup location” and (d) “receiv[e], over the one or more wireless networks from the computing devices of the drivers, location data indicating current locations of the drivers.” Id. at 12 (bolding the above limitations in claim 30 omitted). These limitations are similar to limitations [a]–[d] in claim 1. To be sure, claim 30, as well as claims 1 and 21, recite a network- computing system, processor(s), and other additional elements. However, Step 2A, Prong 1 of USPTO Guidance is satisfied where the claim sets forth or describes an abstract idea. October 2019 Update, 1. As further explained Appeal 2018-008537 Application 14/520,095 15 by the courts, a determination of whether a claim is directed to an abstract idea involves looking at the “focus” of the claims and their “character as a whole.” SAP, 898 F.3d at 1167. For reasons explained above, the focus of claims 1, 21, and 30 is on requesting and processing a requested transport service, not the network-computing system, the processor, memory, and establishing the wireless network connections for the user and driver computing devices to communicate as Appellant asserts. The Specification also supports this conclusion, summarizing the invention as an on-demand service arrangement system that involves requesting a transport service and processing the request subject to rules to determine whether the request is valid. See Spec. ¶¶ 1, 8–10, Abstract. In the Reply Brief, Appellant argues the emphasized features of claim 30 (e.g., executing the client and driver applications on computing devices to establish wireless connections over wireless networks for computing devices to communicate and receiving data over the wireless networks) demonstrate the method cannot be performed mentally. Reply Br. 4. Yet, cases support that a claim’s subject matter can be considered a mental process even though a claim recites elements requiring the process to be performed using computing devices or a network. See, e.g., Gottschalk v. Benson, 409 U.S. 63, 65–67 (1972) (determining the claimed process, involving a general- purpose computer, that converts BCD (binary-coded decimal) numerals to pure binary numerals is a mental process that can be performed by the human mind); see, e.g., CyberSource, 654 F.3d at 1372–73 (determining claim 3’s steps, which involve using the Internet, recite unpatentable mental processes that can be performed by the human mind). Appeal 2018-008537 Application 14/520,095 16 Alice/Mayo Step 2; Revised Guidance Step 2A, Prong 2 Under Step 2A, Prong 2 of the Revised Guidance, we next determine whether the claims recite additional elements that integrate the judicial exception into a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)). To integrate the exception into a practical application, the additional claim elements must, for example, improve the functioning of a computer or any other technology or technical field (see MPEP § 2106.05(a)), apply the judicial exception with a particular machine (see MPEP § 2106.05(b)), affect a transformation or reduction of a particular article to a different state or thing (see MPEP § 2106.05(c)), or apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment (see MPEP § 2106.05(e)). See Revised Guidance. The “additional elements” recited in claim 1, 21, and 30 include “a network-based on-demand transport service” (claim 1), “one or more processors” (claims 1, 21, and 30), “a network-computing system” (claims 1, 21, and 30), “client application on computing devices” of users (claims 1, 21, and 30), “wireless network connections to communicate with the computing devices” of users and drivers “over the one or more wireless networks” (claims 1, 21, and 30), “driver application on computing devices of drivers” (claims 1, 21, and 30), “[a] non-transitory computer-readable medium” (claim 21), and “a memory storing instructions” (claim 30). Appeal Br. 24–25, 28–29, 32–33 (Claims App.); Final Act. 7. The Examiner found these elements were nothing more “generic computer component[s] that perform . . . generic computer functions,” such as receiving, processing, storing, and transmitting information over a network. Final Act. 7; Ans. 5. Appeal 2018-008537 Application 14/520,095 17 Upon review, Appellant has not persuaded us that the Examiner erred. Our reviewing court has “made clear that mere automation of manual processes using generic computers does not constitute a patentable improvement in computer technology.” Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017). Like the claims in Credit Acceptance, the focus of claim 1 is on the business practice of processing a received transport service request “and the recited generic computer elements ‘are invoked merely as a tool.’” Id. (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)); see also Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015). Specifically, the claimed “one or more processors,” “network-computing system,” “applications” for the users and drivers, “computing devices” for users and drivers, “one or more wireless networks,” and “wireless network connections” are computer elements invoked as tools to implement processing the received transport service request and to achieve the claimed results. See Appeal Br. 24–25 (Claims App.). The Specification confirms the generic nature of the claimed “one or more processors,” “network-computing system,” “applications” for the users and drivers, “computing devices” for users and drivers, “one or more wireless networks,” and “wireless network connections.” See Spec. ¶¶ 13– 15, 17–20, Fig. 1. For example, the wireless networks and connections perform the generic function of communicating with computing devices, the client and driver applications perform the generic function of providing the framework to establish the connections between computing devices, and the network-computing system and processor perform generic functions of processing information. See id. Similarly, for claims 21 and 30, the Appeal 2018-008537 Application 14/520,095 18 Specification confirms the generic nature of the claimed “non-transitory computer-readable medium” and “memory.” See id. ¶ 18. Appellant argues claim 30 does not include generic recitations to computers and networks performing basic and generic computer functions. Appeal Br. 14–15. Instead, Appellant argues “[w]ithout [the recited] wireless network connections established via these distinct executing applications, the claimed process cannot be performed.” Id. at 14. For this reason, Appellant contends claim 30 “imposes ‘meaningful limits on the claim’s scope,’ and therefore recites features that amount to ‘significantly more’ than the alleged abstract idea of ‘requesting a transportation service.’” Id.; Reply Br. 7. We are not persuaded. Several cases have found similar recitations to those in claim 1 do not integrate the judicial exception into a practical application or transform claims into patent-eligible subject matter. As cited by the Examiner (Ans. 5), the claims in buySAFE, Inc., 765 F.3d 1350, involve a process that received a request for a service on a computer application program running on a computer, processing the request on the computer application running on the computer, and offering the service through a computer network. buySAFE, 765 F.3d at 1352. The court in buySAFE found the recited “computers add[ed] no inventive concept” and “[t]he computer functionality is generic.” Id. at 1355. The court also concluded “[t]hat a computer receives and sends the information over a network—with no further specification—is not even arguably inventive.” Id. (further discussing the computers in Alice received and sent information over networks connecting the intermediary to the other institutions and indicating the Court found the claimed role of the computers insufficient). Appeal 2018-008537 Application 14/520,095 19 Also, in OIP Technologies, Inc. v. Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir. 2015), its claims were directed to a process for pricing a product for sale that involve using a network, a machine-readable medium, a computer system, and communicating over the network. See OIP Techs., 788 F.3d at 1361. Like buySAFE, the court in OIP Technologies found these additional elements did not transform the identified abstract idea into a patent-eligible application. Id. at 1364. Similar to buySAFE and OIP Technologies, claims 1, 21, and 30’s additional elements are computing devices that perform generic computer functionality over a network with no significant further details. See Appeal Br. 24–25 (Claims App.). Although the additional elements in claims 1, 21, and 30 may permit the identified judicial exception to be achieved more quickly using computer devices and network connections, we determine the additional elements do not provide a significant role in permitting the claims to be performed. Thus, unlike the claim in SiRF Technology, Inc. v. International Trade Commission, 601 F.3d 1319 (Fed. Cir. 2010), discussed by Appellant (Appeal Br. 14), where the court found a GPS receiver essential to the operation of the claimed methods and thus, the claims were eligible under § 101, id., 601 F.3d at 1332–33, Appellant has not persuasively shown that claims 1, 21, or 30 recite a machine that imposes meaningful limits on claim 1, 21, or 30’s scope. The Examiner further found “the steps/functions of independent claims 1, 21, and 30 whether taken alone or in an ordered combination” do not improve a technology or technical field, solve a problem specifically arising in computer technology, or improve the claimed processor’s function. Final Act. 7. Appellant has not contested whether claims 1, 21, Appeal 2018-008537 Application 14/520,095 20 and 30 improve a technology other than stating it disagrees with the Examiner’s statement in this regard. See Appeal Br. 13 (stating “Appellant disagrees” but not further elaborating on whether the claims improve a technology). In any event, we agree with the Examiner. The above-identified additional elements in claims 1, 21, and 30 do not focus on “a specific means or method that improves the relevant technology.” McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016). Rather, as buySAFE explains, the additional elements “[a]t best” are an “‘attempt[ ] to limit the use’ of the abstract . . . idea ‘to a particular technological environment,’ which has long been held insufficient to save a claim in this context.” buySAFE, 765 F.3d at 1355 (citing Alice, 573 U.S. at 223). That is, claims 1, 21, and 30 do no more than generally link the identified judicial exception (e.g., processing a requested transport request) to a particular technology environment (i.e., computing devices within wireless networks). For these reasons, Appellant has not persuaded us of Examiner error with respect to Step 2A, Prong 2 of the Revised Guidance. We, therefore, conclude the judicial exception is not integrated into a practical application under the Revised Guidance. Alice/Mayo Step 2; Revised Guidance Step 2B Under Step 2B of the Revised Guidance, we next determine whether the claims recite an “inventive concept” that “must be significantly more than the abstract idea itself, and cannot simply be an instruction to implement or apply the abstract idea on a computer.” BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. Appeal 2018-008537 Application 14/520,095 21 2016). There must be more than “computer functions [that] are ‘well- understood, routine, conventional activit[ies]’ previously known to the industry.” Alice, 573 U.S. at 225 (second alteration in original) (quoting Mayo, 566 U.S. at 73). The Examiner determined that the additional elements in claims 1, 21, and 30 are not sufficient to amount to significantly more than the identified judicial exception. Final Act. 7. The Examiner found the additional elements are generic computer components “perform[ing] functions . . . that are well-understood, routine, and conventional activities previously known to the industry.” Id. (citing Alice, 573 U.S. 208, and its “corresponding citations” from USPTO July 2015 Update on Subject Matter Eligibility 7). In the Appeal Brief, Appellant does not contest the functions performed by the additional elements in claims 1, 21, and 30 are well- understood, routine, and conventional. See Appeal Br. 10–15. In the Reply Brief, however, “Appellant respectfully disagree” because the Examiner should only conclude an activity is well-understood, routine, and conventional when the element “is widely prevalent or in common use in the relevant industry.” Reply Br. 6 (citing “the ‘Berkheimer Memo”6); see id. at 6–7. We are not persuaded. The Berkheimer Memo sets forth four separate ways the Office can support an additional element is well-understood, routine, and conventional. The Berkheimer Memo 3–4. These include: (1) a 6 Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.), available at https://www.uspto.gov/sites/default/files/documents/memo-berkheimer- 20180419.PDF (“the Berkheimer Memo”). Appeal 2018-008537 Application 14/520,095 22 citation to a statement in the Specification or during prosecution that demonstrates the well-understood, routine, and convention nature of the additional elements, (2) a citation to one or more court decisions noting the well-understood, routine, and conventional nature of the additional elements, (3) a citation to a publication indicating the well-understood, routine, and conventional nature of the additional elements, or (4) a statement by the Examiner taking official notice of the well-understood, routine, and conventional nature of the additional elements. See id. Here, we find the Examiner’s position reasonable because case law supports the well-understood, routine, and conventional nature of the additional elements. For example, using computing devices to obtain data (e.g., limitations [a]–[d]), process data (e.g., limitations [d]–[g]), and issue automated instructions (e.g., limitation [h]) have been found to be well- understood, routine and conventional activities previously known in industry. See Alice, 573 U.S. at 225. Additionally, claim limitations related to programming devices to communicate and receive information (e.g., limitations [a]–[d]) as well as using a computer system to determine outcomes automatically (e.g., limitations [f]) can be considered conventional computer activities. See OIP Techs., 788 F.3d at 1363. Lastly, referring to the limitations in claim 30, Appellant contends claim 30 “does not seek to tie up every application of ‘requesting a transportation service,’ and therefore eligibility is self-evident.” Appeal Br. 13; see also Reply Br. 6 (discussing steps in claim 30 that purportedly do not tie up every application of the “alleged abstract idea”). “While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.” Ariosa Diagnostics, Appeal 2018-008537 Application 14/520,095 23 Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also Rapid Litig. Mgmt. v. CellzDirect, Inc., 827 F.3d 1042, 1052 (Fed. Cir. 2016) (citing Ariosa, 788 F.3d at 1378–79). Instead, issues related to preemption are resolved by the two-part framework set forth in Alice and Mayo. See Ariosa, 788 F.3d at 1379. As illustrated above, issues related to preemption have been resolved by these principles. We therefore agree with the Examiner that the claims do not recite an “inventive concept” sufficient to transform the claims from an abstract idea to a patent eligible application. For the foregoing reasons, Appellant has not persuaded us of error in the rejection of independent claims 1, 21, and 30 and dependent claims 2–6, 8–11, and 22–29, which are not argued separately. OBVIOUSNESS REJECTION OVER HILL, LAL, AND GREAK Claims 1, 2, 5, 8,7 10, 11, 21, 22, 25, 28, and 30 are rejected under 35 U.S.C. § 103 as being unpatentable over Hill, Lal, and Greak. Final Act. 8– 15. Regarding independent claim 1, the Examiner found that Hill teaches many of its features. Final Act. 8–9. In combination with Hill, the Examiner turned to (1) Lal to teach the “determining . . . that the user is associated with a service entity,” “determining, by the network-computing system, whether the transport request satisfies a set of authorization rules,” and “determining that the transport request satisfies the set of authorization 7 The rejection includes claim 9 in its heading. Final Act. 8. However, claim 9 is not addressed in the rejection’s body (id. at 8–15) and is separately rejected based on Hill, Lal, Greak, and Sullivan (id. at 20–21). We presume including claim 9 in the rejection’s heading is typographical error. Appeal 2018-008537 Application 14/520,095 24 rules ” steps, and (2) Greak to teach “charging the service account” step. Id. at 9–11 (citing Lal ¶¶ 40, 59–60 and Greak ¶ 143). Among other arguments, Appellant contends Lal involves a person determining that a employee is authorized to rent a car in a city and thus does not involve “determining, by a network-computing system, whether the transport request satisfies a set of authentication rules” as claim 1 requires (Appeal Br. 24 (Claims App.) (emphasis added)) and under claim 1’s broadest reasonable construction. Id. at 17–18 (citing Lal ¶¶ 59–60, code (57)). Appellant reiterates this argument in the Reply Brief, contending Lal’s portal does not determine whether the request satisfies a set of rules but rather an administrator (e.g., a human) performs this task. Reply Br. 9– 10. ISSUE Under 35 U.S.C. § 103, has the Examiner erred by finding that Hill, Lal, and Greak disclose: in response to determining that the user is associated with the service entity, determining, by the network-computing system, whether the transport request satisfies a set of authorization rules for utilizing a service account of the service entity based, at least in part, on the requested transport type and the pickup location, wherein the set of authorization rules specify one or more authorized transport types and a configured geofence specifying a geographic area within which pick-up locations are authorized (“the disputed determining step”) in claim 1 and similarly recited in claims 21 and 30? Appeal 2018-008537 Application 14/520,095 25 ANALYSIS Based on the record before us, we find error in the rejection. As presented, the Examiner acknowledges Hill does not teach the disputed determining step, turning to Lal for its teachings in this regard. Final Act. 9– 11. We therefore confine our discussion to Lal. The Examiner cites Lal to teach the disputed determining step, including that “the network-computing system” performs this step. See id. (citing Lal ¶¶ 59–60). Lal discusses an administrative portal, shown in Figure 12, that provides the administrator with options in responding to the employee requests through a web-based employee service center (ESC). Lal ¶¶ 48, 51–52, 59, Figs. 10, 12. Specifically, Lal discusses: [T]he administrative portal would allow the administrator to approve the request, ask the employee for clarification concerning the request, or reject the request. For example, the administrator may review a car rental request and determine from the employee’s user access identification code that the employee is not authorized to rent a car. In that case, the administrator would select the “rejection” option on the portal, which would, in one embodiment, be configured to send the employee an email rejection of the service. Id. ¶ 59. Lal further states A foreign employee would make a request through the ESC for a rental car in a certain city on certain dates. If the administrator determines that the employee is authorized to rent the car in the city and on the dates specified, the process administrator would approve the request for third party processing 200. Id. ¶ 60. In response to Appellant’s argument that a network-computing system in Lal does not perform the disputed determining step, the Examiner asserts paragraph 59’s teaching in Lal Appeal 2018-008537 Application 14/520,095 26 means that Lal teaches that the administrator uses a portal (i.e.[,] “network computing system”) to determine whether the request meets a set of rules and approve the request. [The] Examiner interprets the administrator portal taught by Lal to be the claimed “network computing system” and therefore Lal teaches the limitation as claimed. Ans. 9. Although the above passages discuss the administrator using the portal to gain access to employee requests, Lal describes the administrator, not the portal, as determining whether or not the employee’s request satisfies certain rules (e.g., whether or not the employee is authorized to rent a car and whether to reject the request). See id. ¶¶ 48, 59–60. Thus, like Appellant, we disagree Lal teaches or suggests a network-computing system performs the disputed determining step as recited in independent claim 1 or as similarly recited in independent claims 21 and 30. In the Final Action, the Examiner additionally stated it would have been obvious to an ordinarily skilled artisan “to check for authorization in Hill as taught by Lal” (Final Act. 11) in order to teach the disputed determining step. See id. at 10–11. The rejection thus proposes to include Lal’s teaching that an administrator uses a portal to decide whether or not the transport request satisfies certain rules to teach the disputed determining step. As discussed above, this proposed combination fails to suggest a network-computing system performing the disputed determining step. We thus are constrained on the record to conclude the rejection based on Hill and Lal as proposed8 does not teach or suggest the recited step of: 8 Hill teaches a transport transaction service (e.g., element 107 in Fig. 1) within a wireless network running on server computer 108, which performs Appeal 2018-008537 Application 14/520,095 27 determining . . . whether the transport request satisfies a set of authorization rules for utilizing a service account of the service entity based, at least in part, on the requested transport type and the pickup location, wherein the set of authorization rules specify one or more authorized transport types and a configured geofence specifying a geographic area within which pick-up locations are authorized as independent claim 1 recites and independent claims 21 and 30 similarly recite. For the foregoing reasons, Appellant has persuaded us of error in the rejection of (1) independent claim 1, (2) independent claims 21 and 30, which recite commensurate limitations, and (3) dependent claims 2, 5, 8, 10, 11, 22, 25, and 28 for similar reasons. THE REMAINING OBVIOUSNESS REJECTIONS Claims 3, 4, 6, and 9 ultimately depend from claim 1; claims 23, 24, 26, and 29 ultimately depend from claim 21. Claims 3 and 23 are rejected are rejected under 35 U.S.C. § 103 as being unpatentable over Hill, Lal, Greak, and Ye (Final Act. 15–16); claims 4 and 24 are rejected are rejected under 35 U.S.C. § 103 as being unpatentable over Hill, Lal, Greak, and Gaitan (Final Act. 16–18); claims 6 and 26 are rejected under 35 U.S.C. § 103 as being unpatentable over Hill, Lal, Greak, and Lerenc (Final Act. 18–19); claims 9 and 29 are rejected are rejected under 35 U.S.C. § 103 as various determinations using schedule manager 116 and transaction manager, for instance, when arranging a transport transaction. See Hill ¶¶ 16–20, 27–32, 65–69, Fig. 1. If prosecution continues, the Examiner should consider whether Hill’s teaching, when combined with Lal, further suggests to an ordinary skilled artisan using a network-computing system, as opposed to an a person (e.g., the administrator in Lal), to determine whether a transport request satisfies the “set of authorization rules” as claim 1 recites. Appeal 2018-008537 Application 14/520,095 28 being unpatentable over Hill, Lal, Greak, and Sullivan (Final Act. 20–21). The Examiner does not rely on the additionally cited references (i.e., Ye, Gaitan, Lerenc, and Sullivan) to cure the above-noted deficiency discussed previously related to the disputed determining step found in claim 1 and similarly recited in claims 21 and 30. See id. at 15–21. Accordingly, we do not sustain these rejections. Lastly, although reciting similar subject matter to claim 8, we note dependent claim 27 was not rejected under 35 U.S.C. § 103. See id. at 8–21. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–6, 8–11, 21–30 101 Eligibility 1–6, 8–11, 21–30 1, 2, 5, 8, 10, 11, 21, 22, 25, 28, 30 103 Hill, Lal, Greak 1, 2, 5, 8, 10, 11, 21, 22, 25, 28, 30 3, 23 103 Hill, Lal, Greak, Ye 3, 23 4, 24 103 Hill, Lal, Greak, Gaitan 4, 24 6, 26 103 Hill, Lal, Greak, Lerenc 6, 26 9, 29 103 Hill, Lal, Greak, Sullivan 9, 29 Overall Outcome 1–6, 8–11, 21–30 Appeal 2018-008537 Application 14/520,095 29 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation