Cox Enterprises, Inc.

Patent Trials and Appeals Board

Jan 6, 2021

2020004929 (P.T.A.B. Jan. 6, 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.
14/604,166 01/23/2015 Jose Puente 26454-0371 7663
101373 7590 01/06/2021
Eversheds Sutherland (US) LLP / CEI
999 Peachtree Street
Suite 2300
Atlanta, GA 30309
EXAMINER
NGUYEN, TAN D
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
01/06/2021 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):
CoxCommPatents@eversheds-sutherland.us
CoxEnterprisesPatents@eversheds-sutherland.us
patentdocket@eversheds-sutherland.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOSE PUENTE, MARIAN PITTMAN,
ED SHRUM, RICH COUTU, and STEVE ROSENBORO
____________

Appeal 2020-004929
Application 14/604,166
Technology Center 3600
____________

BEFORE DONALD E. ADAMS, JEFFREY N. FREDMAN, and
MICHAEL A. VALEK, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from Examiner’s
decision to reject claims 11–21 (Non-Final Act.2 2).3 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as “FlexDrive
Services, LLC” (Appellant’s November 2, 2020 Appeal Brief (Appeal Br.)
2).
2 Examiner’s October 3, 2019 Non-Final Office Action.
3 Pending claims 1–10 stand withdrawn from consideration (Non-Final Act.
2).
Appeal 2020-004929
Application 14/604,166

2
STATEMENT OF THE CASE
Appellant’s disclosure “relates to vehicle sharing across multiple
retailers, fleet providers, and/or consumers” (Spec. ¶ 2). Appellant’s claim
11 is reproduced below:
11. A method comprising:
identifying, by a computer system comprising one or
more processors and memory, a set of vehicles available for
exchange in a vehicle subscription service, wherein users of the
vehicle subscription service can exchange vehicles in the set of
vehicles with other users;
receiving, by the computer system, a vehicle exchange
request from a first user device associated with a first user, the
vehicle exchange request comprising a first user identifier
indicative of the first user, a first vehicle identifier indicative of
a first vehicle in use by the first user, a second vehicle identifier
indicative of a second vehicle desired by the first user, and a
desired length of time for a vehicle exchange of the first vehicle
for the second vehicle, wherein the first vehicle identifier is
associated with the first user;
determining that the second vehicle is in use by a second
user;
determining, using the first user identifier, that the first
user is an active member of the vehicle subscription service;
sending, by the computer system, vehicle exchange
information to a second user device associated with the second
user, the vehicle exchange information comprising a request to
exchange vehicles with the first user for the desired length of
time;
receiving, by the computer system, a vehicle exchange
approval notification from the second user device indicating the
second user approves the exchange of the second vehicle for the
first vehicle for the desired length of time;
sending, by the computer system, an indication of the
vehicle exchange approval notification to the first user device;
Appeal 2020-004929
Application 14/604,166

3
determining, by the computer system, a first location of
the first user device and a second location of the second user
device;
based at least in part on the first location and the second
location, determining, by the computer system, a vehicle
exchange location at which the first user and the second user
are to exchange vehicles;
determining that the first vehicle and the second vehicle
are exchanged; and
associating the first vehicle identifier with a second user
identifier of the second user, and the second vehicle identifier
with the first user identifier.
(Appeal Br. 19–20.)

Grounds of rejection before this Panel for review:
Claims 11–21 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Raubenheimer,4 Stremsdoerfer,5 Ohler,6 and
Lavian.7
Claims 11–21 stand rejected under 35 U.S.C. § 101.

OBVIOUSNESS:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?

4 Raubenheimer et al., US 8,712,909 B1, issued Apr. 29, 2014.
5 Stremsdoerfer et al., US 2015/0170261 A1, published June 18, 2015.
6 Ohler et al., US 6,424,910 B1, issued July 23, 2002.
7 Lavian et al., US 9,083,728 B1, issued July 14, 2015.
Appeal 2020-004929
Application 14/604,166

4
FACTUAL FINDINGS (FF)
FF 1. Raubenheimer relates “to systems and methods for managing fleet
services” (Raubenheimer 1:16–17; see Non-Final Act. 15–16).
FF 2. Raubenheimer discloses that “a comprehensive financial institution
is one that offers several financial products or services. Examples of a
comprehensive financial institution include institutions that offer fleet
services and lending, ones that offer fleet services and insurance, or others
that offer fleet services, banking, and insurance” (Raubenheimer 1:66–2:4;
see Non-Final Act. 15–16).
FF 3. Raubenheimer discloses that “[o]ne or more elements of a fixed price
package may be offered in various tiers,” wherein
tiers are established based on a vehicle model and price range.
For example, Tier 1 may be for “inexpensive sedans,” Tier 2
may be for “moderately expensive sedans,” and Tier 3 may be
for “expensive sedans.” Tier 1 may include vehicles such as the
Ford® Fiesta®, the Hyundai® Elantra®, and the Toyota®
Yaris®; Tier 2 may include vehicles such as the Hyundai®
Sonata®, the Toyota® Camry®, and the Volkswagen® Jetta®;
and Tier 3 may include vehicles such as the Mercedes-Benz®
E-Class®, the Cadillac® DTS, and the Lexus® GS350.
(Raubenheimer 4:12–28; see Non-Final Act. 16–17.)
FF 4. Raubenheimer discloses:
[T]he fixed price may be based on the selected tiers of each
component in a package, the tiers being established by the
comprehensive financial institution. . . . For example, a person
may select Tier 1 of vehicles, Tier 3 of maintenance, and Tier 2
of insurance, resulting in a calculated fixed price of $300 a
month. Choosing other combinations of tiers would result in a
different fixed monthly (or other periodic) price.
In an embodiment, the person is able to research lease
options online. The person may be presented with a single-price
option (e.g., fixed price) and be able to compare the single-price
Appeal 2020-004929
Application 14/604,166

5
option with cost of each component. For example, a person
may choose a single-price package for a midsize coupe in a
moderately expensive category. The single-price package may
include other products such as insurance and a maintenance
contract (e.g., covering all repair and maintenance for the term
of the lease). A user interface may be provided that breaks out
the costs of each component (e.g., lease, insurance, and
maintenance). The user interface may be further configured to
display the cost of each product if purchased separately (e.g., a
la carte). Further, the user interface may be configured to allow
the user to choose which products to include and then provide a
single price for the selected products.
In an embodiment, the comprehensive financial
institution . . . may enable vehicle telematics at the origination
of the lease. Telemetric data such as vehicle speed, travel
distance, vehicle maintenance, fuel use, and other data is useful
for various reasons including configuring insurance risks and
costs, enabling the comprehensive financial institution . . . to
provide maintenance recommendations and reminders, or
inventory control. In an embodiment, the comprehensive
financial institution . . . may offer a reduction in cost to the
lessee, such as a lower insurance premium, in exchange for
enabling the vehicle telematics. In another embodiment,
because the lessor owns the vehicle, the lessor has the right to
modify the vehicle to design. Thus, the lessor may enable
vehicle telematics and inform potential lessees of the data being
collected such that the lessee enters into the lease with full
disclosure.
(Raubenheimer 4:45–5:16; see generally Non-Final Act. 17–18.)
FF 5. Raubenheimer exemplifies:
[A] lessee Dave, who is married to Diane, is involved in an
accident at work, and is placed on disability. During disability,
Dave cannot afford to maintain an existing lease of a Mercedes-
Benz®, a Tier 3 vehicle. To avoid having to default on the
lease, Dave is able to adjust the existing lease by moving to
Tier 1 vehicle, such as a Ford® Fiesta®. Depending on the
lease terms, Dave may be considered to have terminated the
Appeal 2020-004929
Application 14/604,166

6
existing lease early and originated a new lease with the Ford®.
Alternatively, Dave may be adjusting the existing lease terms of
price (by way of the selected vehicle tier), but maintaining the
previously established lease period.
(Raubenheimer 5:29–40; see generally Non-Final Act. 17–18 and 19.)
FF 6. Raubenheimer discloses:
[T]he financial institution system . . . may obtain information
from the vehicle . . ., for example, by way of an onboard vehicle
telematics system. The financial institution system . . . may
analyze gathered information for various reasons, such as to
ensure that the lessee is using the vehicle . . . in conformance to
terms of the lease, provide reminders for service or
maintenance, or adjust insurance rates or coverage based on
vehicle telematics.
(Raubenheimer 8:7–15.)
FF 7. Raubenheimer discloses that, inter alia, the term of a vehicle lease
may be modified (Raubenheimer 10:47–48).
FF 8. Raubenheimer discloses:
[A] request to exchange the vehicle for a second vehicle in a
second vehicle tier is received. The request may be received by
a computing system or device. The request may be in response
to an event, such as an insurance claim. For example, when a
lessee is in an accident and the vehicle is considered less than a
total loss (i.e., repairable), the lessee may be provided the
opportunity to exchange the repaired or repairable vehicle for a
different vehicle.
The vehicle exchange may be within a tier or between
two tiers. Thus, in an embodiment, the first vehicle tier is the
same as the second vehicle tier. In another embodiment, the
first vehicle tier is not the same as the second vehicle tier.
. . . Approval [of the request to exchange the vehicle]
may depend on several factors, such as whether the lessee is in
good standing, whether the vehicle being exchanged is in
Appeal 2020-004929
Application 14/604,166

7
appropriate condition or under a certain mile-age, or whether
the lease terms provide for the exchange.
. . . [U]pon approval of the request to exchange, the
vehicle is exchanged for the second vehicle. Vehicle exchange
may be performed at an automobile dealer. This provides
convenience to the lessee and may provide benefits to the auto
dealer and financial institution as well.
In a further embodiment, approving the request
comprises determining an allowable number of times the lessee
can exchange vehicles, and if the request to exchange the
vehicle is less than or equal to the allowable number of times
the lessee can exchange vehicles, then approving the request to
exchange the vehicle. The number of allowable times may be a
negotiable contract term in the lease. For example, a lessee
may choose to increase the number of allowable times that a
vehicle may be exchanged. This choice may increase the cost
of the lease. As another example, an exchange may be
considered an ancillary service and each time the lessee
exchanges a vehicle, a cost is assessed and billed to the lessee
outside of the regular lease payments.
In a further embodiment, determining the allowable
number of times comprises determining an allowable number of
times the lessee can exchange vehicles in a particular time
period, and wherein approving the request comprises approving
the request when the request to exchange the vehicle is less than
or equal to the allowable number of times the lessee can
exchange vehicles for the particular time period.
(Raubenheimer 11:10–51; see Non-Final Act. 18–19.)
FF 9. Examiner finds that Raubenheimer fails to disclose a second vehicle
that belongs to a second user, the step of determining, by the computer
system, a first location of the first user device and a second location of the
second user device, the step that based at least in part of the first location
and the second location, determining, by the computer system, a vehicle
exchange location at which the first user and the second user are to exchange
Appeal 2020-004929
Application 14/604,166

8
vehicles, and the step of associating the first vehicle identifier with a second
user identifier of the second user, and the second vehicle identifier with the
first user identifier (see Non-Final Act. 20; see also Appeal Br. 19–20.)
FF 10. Stremsdoerfer discloses:
[A] system and a method for renting portable property, which
can be a pre-purchase sample. The invention includes catering
identification of an article onto the Internet. Receiving a
plurality of requests via network from potential lessees to rent
the article for requested rental periods then occurs. Sorting
occurs for the requests to rent the article according to a
chronology of the requested rental periods. Then, agreeing via
network to rent the article to a plurality of lessees occurs.
Transferring possession of the article from a lessor to a first
lessee occurs such that the first lessee is the first in the
chronology of the sorted, requested rental periods. Transferring
sequentially the article between lessees according to the
chronology of the sorted, requested rental periods is performed.
Monitoring each rental and transfer of the article is done. Then,
distributing a payment for each rental of the article occurs.
(Stremsdoerfer, Abstract; see id. ¶ 2 (Stremsdoerfer “relates to a system and
a method for transferring an item, especially a physical article, through a
series of consecutive renters”); Non-Final Act. 20–21.)
FF 11. Stremsdoerfer discloses that it’s system and method has a number of
advantages including: “[R]educ[ing] the requirement for transporting an
item or article back and forth to the lessee’s or owner’s location or approved
site”; transferring an article “from user to user without intervention by a
third party or the owner”; providing system access to “any user who is a[]
potential purchaser of an article”; and “automatically manag[ing] the
inventory of the article without requiring the intervention of the lessor”
(Stremsdoerfer ¶¶ 23–24; see also id. ¶ 79 (Stremsdoerfer discloses that an
article “transfer can be an in-person meeting, or lessee . . . can be directed to
Appeal 2020-004929
Application 14/604,166

9
the location of the article . . . and provided with instructions for unlocking
any security device protecting the article”); ¶ 96 (Stremsdoerfer discloses the
transfer or an article in person or at a location wherein a lessee is provided
with instructions for unlocking any security device protecting the article); id.
¶¶ 80–83 (Stremsdoerfer describes the exchange of an article between users,
which allows a potential lessee to accept or reject the article, wherein upon
acceptance the article is automatically assigned by the system to the lessee);
id. ¶ 99 (Stremsdoerfer discloses that the system automatic assigns an article
to a lessee); see Non-Final Act. 21–24).
FF 12. Stremsdoerfer discloses that the article may be automatically
available for request by the next user at the end of a rental period or lessee
may retain possession of the article at the end of the rental period
(Stremsdoerfer ¶ 99).
FF 13. Stremsdoerfer discloses that its “system and method . . . desirably
include[s] a tracking system to monitor the location of an article for its
lessor” (Stremsdoerfer ¶ 156).
FF 14. Examiner finds that the combination of Raubenheimer and
Stremsdoerfer suggests Appellant’s claimed invention with the exception of
the steps of determining, by the computer system, a first location of the first
user device and a second location of the second user device and based at
least in part of the first location and the second location, determining, by the
computer system, a vehicle exchange location at which the first user and the
second user are to exchange vehicles (see generally Non-Final Act. 25; see
also Appeal Br. 19–20).
Appeal 2020-004929
Application 14/604,166

10
FF 15. Ohler discloses
a navigation system or a navigation services provider [that]
provides navigation-related services for plural users who have
related needs. In one embodiment, a first user specifies a type
of place at which to meet a second user who is at a location
some distance away from the first user. The navigation feature
identifies one or more places of the specified type that are
convenient for both users to travel to. The navigation feature
may also provide the users with instructions for traveling to a
selected place.
(Ohler, Abstract; see id. at 1:13–17 (Ohler “relates to computer-based
systems that provide navigation features and more particularly the present
invention relates to providing navigation features that take into account the
related requirements of two or more end users.”); see Non-Final Act. 25–
26.)
FF 16. Ohler discloses a process wherein a “navigation services
provider . . . receives data indicating the locations of [a] first user, [a] second
user, and the type of point of interest at which the users would like to meet”
and then, through the use of a “geographic database” and “place search
application . . . finds one or more places of the specific type that take
approximately the same driving time for both users to reach” (Ohler 6:36–
42; see also id. at 9:15–55; Non-Final Act. 25–26).
FF 17. Ohler discloses that “when one of the users reaches the selected
meeting place and the other user is still traveling, the user who is still
traveling is notified about the arrival of the first user at the selected meeting
place” (Ohler 14:5–8).
FF 18. Lavian “relates to leveraging social networks by sharing and
exchanging activities, services and resources” (Lavian 1:8–10).

Appeal 2020-004929
Application 14/604,166

11
FF 19. Lavian discloses that a
server . . . may be a host for a social networking website that
may utilize the system . . . for supporting the users of the social
networking website to share and/or exchange various activities
and resources, such as vehicles, equipment[], services, among
themselves. Further, in another embodiment, the social
networking may be a part of the system . . . that may require the
users to register, therewith, for facilitating the users with
various support services of sharing and exchanging in the
system of social network. Further, in an embodiment, the users
of the client devices . . . may need to register with the system . .
. for sharing and exchanging at least one of activity, product, or
service (hereinafter ‘activity’, ‘product’ and ‘service’ may
collectively be referred to as ‘resources’) in the network. . . .
The user may be registered, to create a profile, by submitting
information, such as personal information, academic
information, professional information and the like, to the
system. . . . The personal information of a user may include,
but is not restricted to, name, location, and hobbies. Further,
the academic information of the user may include, but is not
restricted to, qualification details and any academic
achievement. Similarly, the professional information may
include details corresponding to the profession (if any) such as
industry, designation and the like, of the user.
(Lavian 4:34–59; see Non-Final Act. 28.)
FF 20. Lavian discloses:
[I]f the sharable activity, service or product is vehicle sharing or
ride sharing with one or more second users then the conditions
corresponding to the ride (or vehicle) sharing may include, but
are not restricted to, date of the ride, time of the ride, maximum
time window for pick-up, and maximum time window for drop
off corresponding to the ride.
(Lavian 8:29–34; see Non-Final Act. 28.)
FF 21. Lavian discloses that its
system may utilize some pre-set algorithms in determining the
credit points for the first user and the second user(s). For
Appeal 2020-004929
Application 14/604,166

12
example, the credit points may be calculated based on the type
and duration of the activity. Further, in another embodiment,
the credit points may be pre-set (by the system) for
sharing/exchanging a particular activity. Furthermore, in yet
another embodiment, the credit points may be set between the
first users and the second users before sharing/exchanging the
activity/service or product corresponding to the post (as
accepted by the second user).
(Lavian 24:3–13; see Non-Final Act. 29.)
ANALYSIS
Based on the combination of Raubenheimer, Stremsdoerfer, Ohler,
and Lavian, Examiner concludes that, at the time Appellant’s invention was
made, it would have been prima facie obvious to modify Raubenheimer’s
“flexible vehicle sharing” method to include Stremsdoerfer’s method of
“sending of the item exchange information and approval notification and
‘association’ of item/user . . . for all the benefits,” disclosed in
Stremsdoerfer, “such as reduc[ing] the requirement for transporting a
device/vehicle between the renter/lessee and the owner/manufacturer or
dealer, easy access for all parties involved in a convenient platform and
more efficiently” (Non-Final Act. 25 (citing Stremsdoerfer ¶¶ 0022−0024);
see FF 1–13). Examiner finds that it would have been further obvious, at the
time of Appellant’s claimed invention, to modify the method suggested by
the combination of Raubenheimer and Stremsdoerfer to include Ohler’s
method of determining first and second user locations to determine “a
vehicle exchange location for the first and second users to exchange
vehicles” and Lavian’s method of “determining that the first vehicle and the
second vehicle are exchanged and the second vehicle is in use by a second
user” (Non-Final Act. 27 and 29; see FF 1–21).
Appeal 2020-004929
Application 14/604,166

13
In sum, Examiner further reasons that Appellant’s “claimed invention
is merely a combination of old elements, and in the combination each
element merely would have performed the same function as it did separately,
and one of ordinary skill in the art would have recognized that the results of
the combination were predictable” (Non-Final Act. 25; see also id. at 27 and
29–35 (citing In re Harza, 274 F.2d 669 (CCPA 1960) (“It is well settled
that the mere duplication of parts has no patentable significance unless a
new and unexpected result is produced.”))). See KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.”).

Claim 11:
Appellant’s claim 11 is reproduced above.
We are not persuaded by Appellant’s contention that Raubenheimer
fails to disclose a “‘desired length of time for a vehicle exchange of the first
vehicle for the second vehicle’” (Appeal Br. 8; see also id. at 9; see
generally Reply Br. 3). As Examiner explains, Raubenheimer discloses,
inter alia, “leases with a conditional duration,” “maintaining the previously
established lease period,” “modifying the vehicle lease comprises modifying
the lease term,” “the [lease] term normally comprising the duration or length
of time” (Ans. 5 (citing Raubenheimer 2:45–50, 5:35–40, 10:45–48, and
11:35–50); see FF 5, 7, and 8).
We are not persuaded by Appellant’s contention that because
Raubenheimer describes the exchange of vehicles “between a user and a
dealer of leased cars,” “[t]here is no ‘second user’ in Raubenheimer” and,
Appeal 2020-004929
Application 14/604,166

14
thus, “Raubenheimer fails to contemplate user-to-user vehicle exchanges,”
which, as Examiner explains, are disclosed by Stremsdoerfer (see Appeal Br.
8; cf. Ans. 5–6; FF 1–13). In addition, because Lavian discloses the
exchange of, inter alia, resources, including vehicle sharing, we are not
persuaded by Appellant’s contention that none of Raubenheimer,
Stremsdoerfer, Ohler, and Lavian disclose the exchange of vehicles between
first and second users (see FF 18–21; cf. Appeal Br. 8–9).
Appellant recognizes that Ohler “describes various scenarios in which
a mutually agreeable location can be determined based on two individual
user locations” (Appeal Br. 10). Appellant contends, however, that Ohler
“has nothing to do with exchanging property or vehicles,” and, therefore,
none of Raubenheimer, Stremsdoerfer, Ohler, and Lavian disclose
“determining, by the computer system, a first location of the
first user device and a second location of the second user
device,” and “based at least in part on the first location and the
second location, determining, by the computer system, a vehicle
exchange location at which the first user and the second user
are to exchange vehicles.”
(id. at 10–11.) We are not persuaded by Appellant’s contentions because
Appellant failed to address the combined disclosures of Raubenheimer,
Stremsdoerfer, Ohler, and Lavian. See In re Merck & Co. Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986) (Each reference “must be read, not in isolation,
but for what it fairly teaches in combination with the prior art as a whole.”).

Appeal 2020-004929
Application 14/604,166

15
Claim 13:
The method of Appellant’s claim 13 depends from and further limits
Appellant’s claim 11 to further comprise:
receiving, by the computer system, a first arrival
notification from the first user device indicating that the first
user has arrived at the vehicle exchange location;
receiving, by the computer system, a second arrival
notification from the second user device indicating that the
second user has arrived at the vehicle exchange location;
based at least in part on the first arrival notification and
the second arrival notification, sending, by the computer
system, a first access signal to the first user device configured
to facilitate access to the second vehicle via the first user
device;
based at least in part on the first arrival notification and
the second arrival notification, sending, by the computer
system, a second access signal to the second user device
configured to facilitate access to the first vehicle via the second
user device; and
receiving, by the computer system, vehicle exchange
confirmation from the first user device, the vehicle exchange
confirmation indicating that the first user is using the second
vehicle and the second user is using the first vehicle.
(Appeal Br. 20–21.)
Appellant contends that Ohler “teaches nothing about exchanging
property, about sending access signals to facilitate such an exchange, or
about sending confirmation that such an exchange was successful,”
Stremsdoerfer “nowhere teaches that a different user is provided an access
signal allowing them to bypass security measures and to take possession of
an article previously possessed by the other user,” and “Lavian and
Raubenheimer do not cure these deficiencies” (Appeal Br. 12). Initially, we
note that Appellant failed to address the combined disclosures of
Appeal 2020-004929
Application 14/604,166

16
Raubenheimer, Stremsdoerfer, Ohler, and Lavian. See Merck, 800 F.2d at
1097 (Fed. Cir. 1986) (Each reference “must be read, not in isolation, but for
what it fairly teaches in combination with the prior art as a whole.”).
Further, as discussed above, Appellant concedes, on this record, that Ohler
“describes various scenarios in which a mutually agreeable location can be
determined based on two individual user locations” (Appeal Br. 10; see FF
15–17). In addition, Stremsdoerfer discloses that a “transfer can be an in-
person meeting, or lessee . . . can be directed to the location of the article . . .
and provided with instructions for unlocking any security device protecting
the article,” wherein upon a user’s acceptance of the article, the article is
automatically assigned by the system to that user (FF 11; see FF 10–13; see
also Ans. 6–8; Appeal Br. 3 (Appellant recognizes that the prior art relied
upon discloses “the ability to provide instructions to unlock a security
device”)).
Thus, we find no error in Examiner’s finding that a person of ordinary
skill in this art would understand that the prior art relied upon by Examiner
makes obvious a method wherein instructions for unlocking any security
device protecting the article, i.e. vehicle, are transmitted to a user’s device
(see FF 11; cf. Reply Br. 3 (Appellant contends that “there is not even a
suggestion in . . . [the prior art relied upon] of at least the claimed operations
related to sending access signals to a device”)). To be complete, we
recognize Appellant’s contention that the prior art’s disclosure of “the ability
to provide instructions to unlock a security device, . . . is distinguished from
the claimed elements recited” in Appellant’s claim 13 (Reply Br. 3). We
find, however, that Appellant failed to provide persuasive evidence or
argument to support Appellant’s contention.
Appeal 2020-004929
Application 14/604,166

17
Claim 14:
The method of Appellant’s claim 14 depends from and further limits
Appellant’s claim 13 to further comprise:
monitoring, by the computer system, driving behavior of
the second user in the first vehicle;
receiving, by the computer system, a vehicle purchase
request from a third user device, the vehicle purchase request
indicative of a request to purchase the first vehicle; and
generating, by the computer system, a vehicle purchase
price indicative of a cost to purchase the first vehicle based at
least in part on monitored driving behavior of the second user in
the first vehicle.
(Appeal Br. 21.)
Appellant contends that although Raubenheimer discloses a method,
wherein a vehicle lease is modified based on “monitor[ed] driving behavior
like ‘vehicle speed, travel distance,’ etc.,” Raubenheimer fails to disclose
“that a different user altogether may request to purchase the vehicle
currently being used by the first user or lessee” or “modifying a purchase
price for that vehicle based on driving behavior data––it only teaches
modifying the lease itself” (Appeal Br. 13). Appellant contends that
although Stremsdoerfer discloses “that a user’s profile or behavior can be
monitored, and that this information can then be used to deny approval of a
request to rent an article, . . . it fails to teach or suggest that the price of the
article itself is affected by such behavior information” (id.; see Reply Br. 4).
Appellant further contends that Lavian and Ohler “fail to cure the[]
[foregoing] defiencies” (Appeal Br. 13). We are not persuaded.
Appellant concedes that the combination of Raubenheimer,
Stremsdoerfer, Ohler, and Lavian discloses monitoring driving behavior,
Appeal 2020-004929
Application 14/604,166

18
such as travel distance, i.e. mileage (see id.). At the time of Appellant’s
claimed invention, a person of ordinary skill in this art would have
understood that, inter alia, a vehicle’s mileage affects its purchase price.
Thus, as Examiner explains, “[t]he use of [a] user’s behavior profile for
other business transaction[s] such the value of the driven car would have
been obvious” to those of ordinary skill in this art (Ans. 8; see FF 4).
KSR, 550 U.S. at 418 (It is proper to “take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.”). See
also id. at 421 (“A person of ordinary skill is also a person of ordinary
creativity, not an automaton.”).

Claim 15:
The method of Appellant’s claim 15 depends from and further limits
Appellant’s claim 14 to further comprise:
receiving, by the computer system, acceptance of the
vehicle purchase price from the third user device; and
sending, by the computer system, a vehicle sold
notification to the second user device indicating the first vehicle
is sold.
(Appeal Br. 21.)
Appellant contends that Stremsdoerfer does not disclose the third
party purchase of a vehicle while a “user is still using the vehicle” (Appeal
Br. 14; see generally Reply Br. 4). We are not persuaded. As Appellant
recognizes, Stremsdoerfer discloses that an article, i.e., vehicle may be
returned to the lessor or retained for use by a lessee at the end of a lease
period (see FF 12). In addition, Stremsdoerfer contemplates the use of its
system by potential purchasers (see FF 11). Thus, Stremsdoerfer discloses
Appeal 2020-004929
Application 14/604,166

19
that transactions, including potential purchases, may take place, e.g., at the
end of lease periods. Appellant’s claim 15 does not require a purchase
transaction to occur during a lease period.

Claim 16:
The method of Appellant’s claim 16 depends from and further limits
Appellant’s claim 15 to further comprise:
sending, by the computer system, a vehicle exchange
request to the second user device, the vehicle exchange request
comprising a selection of a third vehicle from the set of one or
more vehicles;
determining, by the computer system, a location of the
first vehicle;
determining, by the computer system, a vehicle exchange
location based at least in part on the location of the first vehicle;
and
sending, by the computer system, the vehicle exchange
location to the second user device.
(Appeal Br. 22.)
Appellant’s claimed invention does not require the purchase/sale of a
leased vehicle prior to the end of a lease period (see Appeal Br. 22).
Therefore, we are not persuaded by Appellant’s contention that
“Stremsdoerfer does not teach providing a list of replacement articles for one
user to select from upon a different user purchasing the article that the first
user is actively enjoying” (Appeal Br. 15; see generally Reply Br. 4). For
the reasons discussed above with regard to, inter alia, Appellant’s claim 13,
we are not persuaded by Appellant’s contention that Ohler in combination
with Raubenheimer, Stremsdoerfer, and Lavian fails to make obvious the
determination of a mutually convenient location based on user location for
Appeal 2020-004929
Application 14/604,166

20
exchanging vehicles or other property (see Appeal Br. 15; cf. FF 1–21; see
generally Ans. 9).

Claims 18–20:
The method of Appellant’s claim 18 depends from and further limits
Appellant’s claim 13 to further comprise:
receiving, by the computer system, a maintenance
notification from the first vehicle, the maintenance notification
comprising vehicle maintenance information; and
sending, by the computer system, a maintenance
indicator to the second user device, the maintenance indicator
comprising maintenance service provider location information.
(Appeal Br. 22 (emphasis added).)
Appellant contends, inter alia, that although “Raubenheimer does
teach the inclusion of maintenance contracts,” “monitoring vehicle
information to ensure the lessee conforms to the lease’s terms, to provide
reminders about service or maintenance,” and “the generation of
notifications indicating that maintenance is required;” Raubenheimer “does
not teach that such user notifications will include locations where
maintenance can be provided” (Appeal Br. 15–16 (emphasis added); see
also Reply Br. 4). Although Examiner recognizes that Raubenheimer
discloses “procedures for carrying out the maintenance monitoring
procedures between parties involved,” Examiner failed to establish that any
of Raubenheimer, Stremsdoerfer, Ohler, or Lavian, alone or in combination,
disclose, or make obvious, a method, wherein a maintenance indicator
comprises maintenance service provider location information, as required by
Appellant’s claim 18.
Appeal 2020-004929
Application 14/604,166

21
Appellant’s claims 19 and 20 depend directly or indirectly from
Appellant’s claim 18 and, therefore, suffer the same deficiency as discussed
above with respect to Appellant’s claim 18.

Claim 21:
The method of Appellant’s claim 21 depends from and further limits
Appellant’s claim 11 to further comprise:
receiving, by the computer system, a vehicle availability
notification from the first user device indicating that the first
vehicle is available for a period of time;
presenting, by the computer system, a set of available
vehicles to a fourth user via a fourth user device, the set of
available vehicles comprising the first vehicle;
receiving, by the computer system, a reservation request
from the fourth user device, the reservation request indicating
that the fourth user is requesting to reserve the first vehicle; and
transmitting, by the computer system, an access signal to
the first vehicle configured to facilitate access of the first
vehicle by the fourth user; and
transmitting, by the computer system, an access
confirmation signal to the fourth user device configured to
enable the first vehicle to become accessible upon the first
vehicle receiving the access confirmation signal from the fourth
user device.
(Appeal Br. 23–24.)
Appellant contends that Stremsdoerfer fails to suggest “that a current
user or renter may, prior to the expiration of any rental period or other length
of time, signal that the article is available for a different user to acquire,”
wherein “a first user holds onto the article until the rental period expires and
another user requests to rent it––the article is automatically available after
Appeal 2020-004929
Application 14/604,166

22
the [rental] period ends” (Appeal Br. 17; see Reply Br. 5). We are not
persuaded.
Stremsdoerfer discloses a method wherein a plurality of requests are
received from potential lessees to rent a lessor’s, e.g., first user’s, article,
e.g., vehicle (FF 10). After receiving requests to rent a vehicle,
Stremsdoerfer’s method sorts the requests “according to a chronology of the
requested rental periods” (id.). Then after agreeing to rent the vehicle to a
plurality of lessees, Stremsdoerfer’s method transfers possession of the
vehicle from a first user, e.g., “lessor to a first lessee . . . such that the first
lessee is the first in the chronology of the sorted, requested rental periods.
Transferring sequentially the article between lessees according to the
chronology of the sorted, requested rental periods is performed” (id.). Thus,
we are not persuaded by Appellant’s contention that “Stremsdoerfer does not
teach or suggest at least the operation of ‘receiving, by the computer system,
a vehicle availability notification from the first user device indicating that
the first vehicle is available for a period of time’” and that Raubenheimer,
Ohler, and Lavian, “cannot cure this deficiency, as none deal with one user
signaling the availability for another user to acquire possession of an article
or vehicle held by the first user” (Appeal Br. 17).
CONCLUSION
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness. The rejection of claims 11, 13–16, and 21 under
35 U.S.C. § 103(a) as unpatentable over the combination of Raubenheimer,
Stremsdoerfer, Ohler, and Lavian is affirmed. Claim 12 is not separately
argued and fall with claim 11. Claim 17 is not separately argued and falls
with claim 15.
Appeal 2020-004929
Application 14/604,166

23
The preponderance of evidence relied upon by Examiner fails to
support a conclusion of obviousness with respect to Appellant’s claims 18–
20. The rejection of claims 18–20 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Raubenheimer, Stremsdoerfer, Ohler, and Lavian is
reversed.

SUBJECT MATTER ELIGIBILITY:
ISSUE
Does the preponderance of evidence of record support Examiner’s
finding that Appellant’s claimed invention is directed to patent-ineligible
subject matter?
PRINCIPLES OF LAW
A. Section 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). 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
Appeal 2020-004929
Application 14/604,166

24
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.”).
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.
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
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 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. (citation omitted)
(citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that
Appeal 2020-004929
Application 14/604,166

25
an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
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 (internal quotation marks
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. (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.
B. USPTO Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Guidance”).8 “All USPTO personnel are, as a matter of internal agency
management, expected to follow the guidance.” Id. at 51; see also October
2019 Update at 1.
Under the Guidance and the October 2019 Update, we first look to
whether the claim recites:

8 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).
Appeal 2020-004929
Application 14/604,166

26
(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”).9
Guidance, 84 Fed. Reg. at 52–55.
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.
Guidance, 84 Fed. Reg. at 52–56.
ANALYSIS
Appellant’s claim 11 is representative and reproduced above.
(Step 1)
We first consider whether the claimed subject matter falls within the
four statutory categories set forth in § 101, namely “[p]rocess, machine,
manufacture, or composition of matter.” Guidance, 84 Fed. Reg. at 53–54;

9 This evaluation is performed by (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 Guidance — Section III(A)(2), 84 Fed. Reg. at
54–55.
Appeal 2020-004929
Application 14/604,166

27
see 35 U.S.C. § 101. Examiner finds that Appellant’s claim 11 is directed to
a method, i.e. processes, and, therefore, is directed to statutory subject matter
(see Non-Final Act. 6). We agree and, therefore, proceed to the next steps of
the analysis.
(Step 2A, Prong 1)
The method of Appellant’s claim 11 comprises the steps of:
identifying, by a computer system comprising one or
more processors and memory, a set of vehicles available for
exchange in a vehicle subscription service, wherein users of the
vehicle subscription service can exchange vehicles in the set of
vehicles with other users;
. . .
determining that the second vehicle is in use by a second
user;
determining, using the first user identifier, that the first
user is an active member of the vehicle subscription service;
. . .
determining, by the computer system, a first location of
the first user device and a second location of the second user
device;
based at least in part on the first location and the second
location, determining, by the computer system, a vehicle
exchange location at which the first user and the second user
are to exchange vehicles;
determining that the first vehicle and the second vehicle
are exchanged; and
associating the first vehicle identifier with a second user
identifier of the second user, and the second vehicle identifier
with the first user identifier.
(Appeal Br. 19–20.)
Examiner finds that the foregoing elements of Appellant’s claim 11
recite mental processes, which are abstract ideas under the Guidance (see
Appeal 2020-004929
Application 14/604,166

28
Final Act. 4–6). See also 84 Fed. Reg. at 52–55. We find no error in
Examiner’s finding that Appellant’s claim 11 “recite[s] an abstract idea”
(Final Act. 6). See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1373 (Fed. Cir. 2011) (“a method that can be performed by human
thought alone is merely an abstract idea and is not patent-eligible under
§ 101.”); see also Fair Warning IP, LLC v. Iatric Systems, Inc., 839 F.3d
1089, 1093 (Fed. Cir. 2016) (“analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more,” are
“essentially mental processes within the abstract-idea category”);.
Appellant failed to establish an evidentiary basis to support a finding
that the steps of identifying, determining, and associating cannot practically
be performed in the mind. Therefore, we are not persuaded by Appellant’s
contention that claim 11 does not recite mental processes (see Appeal Br. 6–
7).
(Step 2A, Prong 2)
Having determined that Appellant’s claims recite a judicial exception,
the Guidance requires an evaluation as to whether the claim as a whole
integrates the recited judicial exception into a practical application of the
exception. See Guidance, 84 Fed. Reg. at 54. The Guidance explains:
[C]ourts have . . . identified examples in which a judicial
exception has not been integrated into a practical application:
• An additional element . . . merely uses a computer as
a tool to perform an abstract idea;
• an additional element adds insignificant extra-solution
activity to the judicial exception; and
• an additional element does no more than generally
link the use of a judicial exception to a particular technological
environment or field of use.
Id. at 55 (footnotes omitted).
Appeal 2020-004929
Application 14/604,166

29
The method of Appellant’s claim 11 comprises the additional steps of:
receiving, by the computer system, a vehicle exchange
request from a first user device associated with a first user, the
vehicle exchange request comprising a first user identifier
indicative of the first user, a first vehicle identifier indicative of
a first vehicle in use by the first user, a second vehicle identifier
indicative of a second vehicle desired by the first user, and a
desired length of time for a vehicle exchange of the first vehicle
for the second vehicle, wherein the first vehicle identifier is
associated with the first user;
. . .
sending, by the computer system, vehicle exchange
information to a second user device associated with the second
user, the vehicle exchange information comprising a request to
exchange vehicles with the first user for the desired length of
time;
receiving, by the computer system, a vehicle exchange
approval notification from the second user device indicating the
second user approves the exchange of the second vehicle for the
first vehicle for the desired length of time;
sending, by the computer system, an indication of the
vehicle exchange approval notification to the first user device.
(Appeal Br. 19–20.) The receiving and sending steps of Appellant’s claim
11 are data gathering and transmitting steps, which add insignificant extra-
solution activity to the judicial exception, and, therefore, are not sufficient to
integrate the recited judicial exception into a practical application of the
exception (see Non-Final Act. 8–9). See Guidance, 84 Fed. Reg. at 55; see
also MPEP § 2106.05(g).
The “computer system” limitation recited in Appellant’s claim 11
merely uses the computer as a tool to perform the abstract, mental processes
and is, therefore, not sufficient to integrate the recited judicial exception into
Appeal 2020-004929
Application 14/604,166

30
a practical application of the exception (see Non-Final Act. 9–10). See
Guidance, 84 Fed. Reg. at 55.
We are not persuaded by Appellant’s contention that “the pending
claims are clearly directed to a practical application – that of determining
locations for vehicle exchanges – that cannot reasonably be construed as
abstract” (Appeal Br. 7; see also Reply Br. 3). Notwithstanding Appellant’s
contention to the contrary, we find that determining locations for vehicle
exchanges does no more than generally link the use of the judicial exception
to a particular technological environment or field of use, which is not
sufficient to integrate the recited judicial exception into a practical
application of the exception. See Guidance, 84 Fed. Reg. at 55.
(Step 2B)
Having determined that Appellant’s claims: (1) recite a judicial
exception and (2) do not integrate that exception into a practical application,
the Guidance requires that we evaluate whether Appellant’s claims: (a) add
a specific limitation beyond the judicial exception that is not “well-
understood, routine, conventional” in the field or (b) simply appends well-
understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.
Guidance, 84 Fed. Reg. at 52–56.
On this record, Examiner finds, and we agree, that when considered
individually and in combination Appellant’s claim 11 recites “a generic
processor performing . . . generic computer functions of: identifying,
determining, and associating relevant information” (Non-Final Act. 10).
Examiner further finds that the steps set forth in Appellant’s claim 11 are
well-known, routine, conventional activities (id. at 10–13 (citing MPEP
Appeal 2020-004929
Application 14/604,166

31
§ 2106.05(d)); see also the combination of Raubenheimer, Stremsdoerfer,
Ohler, and Lavian discussed above).
CONCLUSION
The preponderance of evidence of record supports Examiner’s finding
that Appellant’s claimed invention is directed to patent ineligible subject
matter. The rejection of claim 11 under 35 U.S.C. § 101 is affirmed. Claims
12–21 are not separately argued and fall with claim 11.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
11–21 103 Raubenheimer,
Stremsdoerfer,
Ohler, Lavian
11–17,
21
18–20
11–21 101 Eligibility 11–21
Overall
Outcome
11–21

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).

AFFIRMED