BEIJING DIDI INFINITY TECHNOLOGY AND DEVELOPMENT CO., LTD.

Patent Trials and Appeals Board

Dec 2, 2021

2021003553 (P.T.A.B. Dec. 2, 2021)

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.
15/972,314 05/07/2018 Bo LIU 20615-0054US00 1028
143988 7590 12/02/2021
METIS IP LLC
PO Box 423
McLean, VA 22101
EXAMINER
VETTER, DANIEL
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
12/02/2021 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):
docketing@metis-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BO LIU
____________

Appeal 2021-003553
Application 15/972,314
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
BRADLEY B. BAYAT, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134 of the Examiner’s
Final Rejection of claims 1–13 and 15–21. We have jurisdiction under
35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.

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
BEIJING DIDI INFINITY TECHNOLOGY AND DEVELOPMENT CO.,
LTD (Appeal Br. 3).
Appeal 2021-003553
Application 15/972,314

2

THE INVENTION
Appellant claims an online on demand transportation service system
and more particularly, methods and systems for modifying location
information for a request for transportation. (Spec. ¶ 2, Title).
Claim 1 is representative of the subject matter on appeal.
1. A system, comprising:
a service requester interface configured to input by a
service requester, an original service request comprising at least
one of an original pickup location and an original destination
and subsequently at least one modified service request
comprising at least one of a modified pickup location and a
modified destination;
a service provider interface configured to operably
communicate with the service requester interface through an
online network;
a bus;
at least one storage media, electronically connected to the
bus, comprising a set of instructions; and
a processor configured to communicate with the service
requester interface and the service provider interface through
the online network, and the at least one storage media via the
bus to execute the set of instructions to:
use a service information generation module of the
processor to obtain, from the service requester interface,
the original service request and subsequently at least one
modified service request;
use the service information generation module of
the processor to identify a service provider associated
with the original service request based on the original
service request and the location and information related
to the service provider;
generate an updated route based on the at least one
modified service request and the location of the identified
service provider, and send, to the service provider
interface, the updated route, with the service provider
Appeal 2021-003553
Application 15/972,314

3

interface configured to operably communicate with the
service requester interface through the online network;
calculate a modified distance based on the updated
route;
compare the modified distance with its
corresponding original distance to generate a distance
difference between the modified distance and its
corresponding original distance;
compare the distance difference with a preset
threshold stored in the storage media;
generate an updated cost based on the comparison
between the distance difference and the threshold; and
send through the online network, at least to the
service requester interface, at least the updated cost.

THE REJECTION
Claims 1–13 and 15–21 are rejected under 35 U.S.C. § 101 as directed
to a judicial exception without significantly more.

ANALYSIS
35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 1–13 and 15–21 under
35 U.S.C. § 101.
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, . . .
determine whether the claims at issue are directed to one of those
patent-ineligible concepts. If so, . . . then ask, “[w]hat else is there
in the claims before us?” To answer that question, . . . consider
the elements of each claim both individually and “as an ordered
combination” to determine whether the additional elements
“transform the nature of the claim” into a patent-eligible
application. [The Court] described step two of this analysis as a
Appeal 2021-003553
Application 15/972,314

4

search for an “‘inventive concept’”—i.e., an element or
combination of elements that is “sufficient to ensure that the
patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.”
Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217–218 (citations
omitted) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 72–73 (2012)).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. The Federal Circuit has
explained that “the ‘directed to’ inquiry applies a stage-one filter to claims,
considered in light of the [S]pecification, based on whether ‘their character
as a whole is directed to excluded subject matter.’” See Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir.
2015)). It asks whether the focus of the claims is on a specific improvement
in relevant technology or on a process that itself qualifies as an “abstract
idea” for which computers are invoked merely as a tool. See id. at 1335–36.
In so doing we apply a “directed to” two-prong test: 1) evaluate
whether the claim recites a judicial exception, and 2) if the claim recites a
judicial exception, evaluate whether the judicial exception is integrated into
a practical application. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50, 50–57 (Jan. 7, 2019) (“Guidance”).
The Examiner determines that the claims recite a method for
generating and communicating updated information regarding a modified
transportation service request. (Final Act. 4). The Examiner determines that
the recited claims qualify as methods of organizing human activity and a
mental process (Final Act. 5). The Examiner finds that the judicial
Appeal 2021-003553
Application 15/972,314

5

exception is not integrated into a practical application because there are no
meaningful limitations that transform the exception into a patent eligible
application. The Examiner further finds that the elements merely serve to
provide a general link to a technological environment (e.g., computers and
the Internet) in which to carry out the judicial exception (“interface,” “bus,”
“storage media,” “online network,” “system,” “processor,”
“computer-readable medium”—all recited at a high level of generality). The
Examiner finds that the claims only manipulate abstract data elements and
do not set forth improvements to another technology field or the functioning
of the computer itself and instead use computer elements as tools to improve
the functioning of the identified abstract idea (id at 6–7). The Examiner
further finds that the claims do not include additional elements that are
sufficient to amount to significantly more than the judicial exception
because the additional elements do no more than generally link the abstract
idea to a particular technological environment with instructions to “apply it”
there.
The Specification discloses that the invention relates to online
transportation services and more particularly to a method to modify an origin
and/or a destination of a request and send the modified origin and/or the
modified destination to a service provider (e.g., a driver) through a server of
an online on-demand transportation platform (Spec. ¶ 5).
Consistent with this disclosure, claim 1 recites “a service provider
interface configured to operably communicate with the service requester
interface through an online network,” “storage media, electronically
connected to the bus,” “a processor configured to communicate with the
service requester . . . and . . . to execute the set of instructions,” “to obtain
Appeal 2021-003553
Application 15/972,314

6

. . . one modified service request,” “to identify a service provider associated
with the original service request,” “generate an updated route based on the
. . . modified service request,” and “calculate a modified distance based on
the updated route.”
We thus agree with the Examiner’s findings that the claims recite a
method for generating and communicating update information regarding a
modified transportation service request and that this qualifies as a method of
organizing human activities because it recites the concepts of tracking and
organizing information for the transportation behaviors of people and related
transactional/commercial relationships with service providers.
Also, we agree with the Examiner that the steps recited in claim 1, for
example, of the service requester interface configured to “input . . . the
original service request,” “identify a service provider,” “generate an updated
route,” “calculate a modified distance based on the updated route,”
“compare the modified distance,” “compare the distance difference,”
“generate an updated cost” constitute “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.” Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016); see also
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (claims
directed to certain arrangements involving contractual relations are directed
to abstract ideas). Thus, we agree that claim 1, for example, recites the
judicial exception of a method of organizing human activity and in the
alternative, a mental process.
Turning to the second prong of the “directed to test,” claim 1 requires
a “service requester interface,” a “service provider interface,” a “storage
Appeal 2021-003553
Application 15/972,314

7

media,” a “processor” and “a service information generation module of the
processor.” These recitations do not impose “a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception.” Guidance, 84 Fed. Reg. at 53. We
find no indication in the Specification, nor does Appellant direct us to any
indication, that the operations recited in claim 1 invoke any inventive
programming, require any specialized computer hardware or other inventive
computer components, i.e., a particular machine, or that the claimed
invention is implemented using other than generic computer components to
perform generic computer functions. See DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there
can remain no doubt: recitation of generic computer limitations does not
make an otherwise ineligible claim patent-eligible.”).
We also find no indication in the Specification that the claimed
invention affects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
argument, that attributes any improvement in computer technology and/or
functionality to the claimed invention or that otherwise indicates that the
claimed invention integrates the abstract idea into a “practical application,”
as that phrase is used in the revised Guidance. See Guidance, 84 Fed. Reg.
at 55.
In this regard, the recitations do not affect an improvement in the
functioning of the service requester interface, service provider interface,
storage media, processor or service information module or other technology,
do not recite a particular machine or manufacture that is integral to the
claims, and do not transform or reduce a particular article to a different state
Appeal 2021-003553
Application 15/972,314

8

or thing. Id. Thus, claim 1 recites judicial exceptions that are not integrated
into a practical application and therefore claim 1 is directed to abstract ideas.
Turning to the second step of the Alice analysis, because we find that
claim 1 is directed to abstract ideas, the claim must include an “inventive
concept” in order to be patent-eligible, i.e., there must be an element or
combination of elements that is sufficient to ensure that the claim in practice
amounts to significantly more than the abstract idea itself. See Alice, 573
U.S. at 217–18 (quoting Mayo, 566 U.S. at 72–73).
The introduction of computer elements such as the requester and
provider interfaces, the storage media, and the processor into claim 1 does
not alter the analysis at Alice step two.
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is not
enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implemen[t]” an abstract idea
“on . . . a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption concern
that undergirds our § 101 jurisprudence. Given the ubiquity of
computers, wholly generic computer implementation is not
generally the sort of “additional featur[e]” that provides any
“practical assurance that the process is more than a drafting effort
designed to monopolize the [abstract idea] itself.”
Alice, 573 U.S. at 223 (alterations in original) (citations omitted).
Instead, “the relevant question is whether [claim 1] here do[es] more
than simply instruct the practitioner to implement the abstract idea[s]
[recited in the claim] on a generic computer.” Id. at 225. It does not.
Appeal 2021-003553
Application 15/972,314

9

Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to retrieve, select, and apply decision criteria to data and modify
the data as a result amounts to electronic data query and retrieval—one of
the most basic functions of a computer. All of these computer functions are
well-understood, routine, conventional activities previously known to the
trading industry. See Elec. Power Grp., 830 F.3d at 1354; see also In re
Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed.
Cir. 2011) (“Absent a possible narrower construction of the terms
‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved
by any general purpose computer without special programming.”). In short,
each step does no more than require a generic computer to perform generic
computer functions. As to the data operated upon, “even if a process of
collecting and analyzing information is ‘limited to particular content’ or a
particular ‘source,’ that limitation does not make the collection and analysis
other than abstract.” SAP Am. Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168
(Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellant’s claim 1 adds nothing that is not already present when the steps
are considered separately. The sequence of data reception-analysis-access-
display is equally generic and conventional or otherwise held to be abstract.
See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014)
(sequence of receiving, selecting, offering for exchange, display, allowing
access, and receiving payment recited an abstraction); Inventor Holdings,
LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017)
(holding that sequence of data retrieval, analysis, modification, generation,
Appeal 2021-003553
Application 15/972,314

10

display, and transmission was abstract); Two-Way Media Ltd. v. Comcast
Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (holding
sequence of processing, routing, controlling, and monitoring was abstract).
The ordering of the steps is, therefore, ordinary and conventional.
Claim 1 does not, for example, purport to improve the functioning of
the computer elements themselves. As we stated above, claim 1 does not
affect an improvement in any other technology or technical field. The
Specification spells out different generic equipment and parameters that
might be applied using this concept and the particular steps such
conventional processing would entail based on the concept of information
access under different scenarios (see, e.g., Spec. ¶¶ 46–47). Thus, claim 1 at
issue amounts to nothing significantly more than instructions to apply the
abstract ideas recited in claim 1 using some unspecified, generic computers.
Under our precedents, that is not enough to transform an abstract idea into a
patent-eligible invention. See Alice, 573 U.S. at 226.
We have reviewed all the arguments (Appeal Br. 9–15; Reply Br. 2–
9) Appellant has submitted concerning the patent eligibility of the claims
before us that stand rejected under 35 U.S.C. § 101. We find that our
analysis above substantially covers the substance of all the arguments, which
have been made. But, for purposes of emphasis, we will address various
arguments in order to make individual rebuttals of same.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the recited invention enhances the performance of
the online transportation service system because an updated route and an
updated cost are determined and received/sent out in real time through
electrical devices based on timely service request modification and location
Appeal 2021-003553
Application 15/972,314

11

tracking of an identified service provider and that this is done without the
driver inputting information (Appeal Br. 11; Reply Br. 7). However, this
argument relies on the ineligible concept of a method for generating and
communicating update information regarding a modified transportation
service request itself, to establish that claim 1 recites the inventive concept.
But “[i]t has been clear since Alice that a claimed invention’s use of the
ineligible concept to which it is directed cannot supply the inventive concept
that renders the invention ‘significantly more’ than that ineligible concept.”
BSG Tech LLC v. Buyseasons, Inc, 899 F.3d 1281, 1290 (Fed. Cir. 2018).
Moreover, “[n]o matter how much of an advance in the finance field the
claims recite, the advance lies entirely in the realm of abstract ideas, with no
plausibly alleged innovation in the non-abstract application realm.” SAP
Am., 898 F.3d at 1163; see also id. at 1168.
Appellant argues that the claims do not recite a method of organizing
human activity or a mental process because the pending claims are directed
to digital communications that involve transferring exchangeable data sets or
user data between different computing systems. (Appeal Br. 11; Reply Br.
4). However, the Federal Circuit has made clear, “the basic character of a
process claim drawn to an abstract idea is not changed by claiming only its
performance by computers, or by claiming the process embodied in program
instructions on a computer readable medium.” CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (citing In re Abele,
684 F.2d 902 (CCPA 1982)).
We are also not persuaded of error on the part of the Examiner by
Appellant’s argument that the instant invention focuses on processing,
updating and transmitting information for an online transportation. This
Appeal 2021-003553
Application 15/972,314

12

argument is not persuasive because the Examiner has determined that the
invention focuses on the processing, updating, and transmitting information
and that is why the Examiner has determined that claim 1 recites a mental
process. (Appeal Br. 11).
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the claims are not directed to a purely mental
process because the claimed method recites multiple tangible elements such
as “service requester interface,” “service provider interface,” “bus,” “storage
media,” “network,” and “processor” (Appeal Br. 12). We note that our
reviewing court has found that if a method can be performed by human
thought, these processes remain unpatentable even when automated to
reduce burden to the user. CyberSource, 654 F.3d at 1375 (“That purely
mental processes can be unpatentable, even when performed by a computer,
was precisely the holding of the Supreme Court in Gottschalk v. Benson,
[409 U.S. 63 (1972)].”).
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the present invention enables automation of
specific tasks that previously could only be performed subjectively by
humans (Appeal Br. 13). Relying on a computer to perform routine tasks
more quickly or more accurately is insufficient to render a claim patent
eligible. OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed.
Cir. 2015) (citing Alice, 573 U.S. at 225). In short, Appellant has not
demonstrated how these cited disclosures reflect an improvement to
computer capabilities or functionality.
We do not agree with Appellant that the steps related to
communicating with a service requestor, identifying and communicating a
Appeal 2021-003553
Application 15/972,314

13

route, calculating an updated cost and communicating the update are
additional elements (Appeal Br. 13). Rather, in our view, these steps are
part of the abstract idea of a method for generating and communicating
update information regarding a modified transportation service request
because these steps are done in furtherance of the abstract idea.
Appellant argues that the claimed invention improves how the
computer stores and retrieves data in real time in combination with
transmitting and receiving data automatically in real time with both service
provider and service requester (Appeal Br. 13). Although Appellant lists
various advantages of the instant invention, no technological implementation
details are recited in the claims. Claim 1 is focused on providing
information not on improving computers or technology. Trading Techs.
Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019). (Like Electric
Power, the purported advance ‘is a process of gathering and analyzing
information of a specified content, then displaying the results, and not any
particular assertedly inventive technology for performing those functions.)
Id. at 1385 (quoting Elec. Power Grp., 830 F.3d at 1354).
We also do not find Appellant’s argument that the claimed invention
improves performance and efficiency of the online transportation service
platform persuasive of error on the part of the Examiner (Appeal Br. 14).
An improvement in efficiency alone does not render it patent eligible. See
FairWarning IP, LLC v. Iatric Sys., 839 F.3d 1089, 1095 (Fed. Cir. 2016)
(“While the claimed system and method certainly purport to accelerate the
process of analyzing audit log data, the speed increase comes from the
capabilities of a general-purpose computer, rather than the patented method
itself. See Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.),
Appeal 2021-003553
Application 15/972,314

14

687 F.3d 1266, 1278 (Fed. Cir. 2012) (‘[T]he fact that the required
calculations could be performed more efficiently via a computer does not
materially alter the patent eligibility of the claimed subject matter.’).”).
We find untimely Appellant’s argument in the Reply Brief that the
Examiner did not provide the evidence required by Berkheimer v. HP, Inc.,
881 F.3d 1360 (Fed. Cir. 2018). (Reply Br. 7). We note that these new
arguments were raised by Appellant for the first time in the Reply Brief, and
they are not in response to a new issue brought up by the Examiner in the
Answer. Appellant is reminded that
The purpose of a reply brief is to ensure the Appellant the
opportunity to have the last word on an issue raised by the
Examiner. The reply brief enables the Appellant to address any
new grounds of rejection the Examiner may have raised in the
answer, or to address changes or developments in the law that
may have occurred after the principal brief was filed. The reply
brief is not an opportunity to make arguments that could have
been made during prosecution, but were not. Nor is the reply
brief an opportunity to make arguments that could have been
made in the principal brief on appeal to rebut the Examiner’s
rejections, but were not.
Giving cognizance to belated arguments in a reply would
vitiate the force of the requirement in Board Rule 37(c)(1)(vii)
that “[a]ny arguments or authorities not included in the brief . . .
will be refused consideration by the Board, unless good cause is
shown.” The reference in that section to the “reply brief filed
pursuant to § 41.41” does not create a right for the Appellant to
raise an argument in the reply brief that could have been raised
in the principal brief but was not. Rather, that reference merely
puts Appellants on notice that arguments that could be made in
the reply brief, but are not, are waived.
Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative). We
therefore consider Appellant’s argument raised in the Reply Brief regarding
Berkheimer to be waived.
Appeal 2021-003553
Application 15/972,314

15

In view of the foregoing, we will sustain the Examiner’s rejection of
claim 1. We will also sustain the rejection as it is directed to the remaining
claims because Appellant does not argue the separate eligibility of these
claims.

CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1–13 and
15–21 under 35 U.S.C. § 101.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–13, 15–21 101 Eligibility 1–13, 15–21
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