Ex Parte Amin et al

Patent Trial and Appeal Board

Oct 25, 2018

13672651 (P.T.A.B. Oct. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/672,651 11/08/2012 ShalinAmin
110654 7590 10/29/2018
Mahamedi IP Law LLP (Uber)
910 Campisi Way, Suite IE
Campbell, CA 95008
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
UP-015 7806
EXAMINER
ZEROUAL, OMAR
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
10/29/2018 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 SHALIN AMIN, MINA RADHAKRISHNAN,
PAUL-PHILLIP HOLDEN, and TRAVIS CORDELL KALANICK
Appeal2017-007097
Application 13/672,651 1
Technology Center 3600
Before LARRY J. HUME, JENNIFER L. McKEOWN, and
CARLL. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-18, 21, and 22, which constitute all pending
claims. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The real party in interest is identified as Uber Technologies, Inc. App.
Br. 3.
Appeal2017-007097
Application 13/672,651
STATEMENT OF THE CASE
The invention relates to providing on-demand transport services
utilizing portable computing devices. Abstract, Spec. ,r 2, Fig. 2. Claim 1,
reproduced below, is exemplary of the subject matter on appeal ( emphasis
added):
1. A computer-implemented method for operating a
network service to arrange transport services, the method being
performed on a computing system and comprising:
providing data for a service application executing on a
computing device of a user in connection with enabling the user
to make a transport request for a transport service;
determining a fare adjustment over a given duration for a
geographic region that includes a current location of the user,
wherein determining the fare adjustment includes:
(A) establishing a secure communication link with each of
a plurality of users that are within the geographic region to
determine, over the respective secure communication link of
each of the plurality of users, an aggregation representing each
of (i) a group of providers who are available to provide the
transport service within the geographic region, and (ii) a group
of customers who are within the geographic region to request or
receive the transport service;
(B) determining the fare adjustment based on input that
identifies each of the group of providers and the group of
customers; and
receiving, from over one or more networks, data
corresponding to the transport request from input by the user
interacting with one or more confirmation user interfaces, the
transport request specifying a pickup location for the user that is
within the geographic region;
prior to communicating information about the transport
request to any provider in the group of providers, providing data
for the one or more confirmation user interfaces, to display
information corresponding to the transport request before the
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user transmits confirmation of the transport request to secure a
provider for the transport request;
wherein providing the data for the one or more
confirmation user interfaces includes causing the one or more
confirmation user interface to display (i) a map that is relevant
to the pickup location, the map including a graphic feature
showing a position on the map corresponding to the pickup
location, (ii) textual information corresponding to the pickup
location, (iii) information corresponding to a fare for the
transport request, the information including the fare adjustment
that is determined for the given duration in response to the user
input, and (iv) a selectable prompt, that when selected by the
user, causes the computing device to transmit confirmation of the
transport request to the network service over the one or more
networks; and
upon receiving the confirmation from the user,
communicating information about the transport request to one
or more providers of the group.
App. Br. 36-37 (Claims Appendix).
THE REJECTIONS
Claims 1-18, 21, and 22 are rejected under 35 U.S.C. § 101 because
the claimed inventions are directed to a judicial exception (i.e., a law of
nature, a natural phenomenon, or an abstract idea) without significantly
more. Final Act. 6-7.
Claims 1, 3, 6, 7, 9, 10, 15, 16, and 18 are rejected under pre-AIA 35
U.S.C. § I03(a) as being unpatentable over Tuoriniemi (US 2002/0034292
Al; pub March 21, 2002) ("Tuoriniemi"), Bishop (US 2009/0192851 Al;
pub. July 30, 2009) ("Bishop"), Mashinsky (US 2006/0059023 Al; pub.
March 16, 2006) ("Mashinsky") and McGrath (US 2006/0178949 Al; pub
August 10, 2006) ("McGrath"). Final Act. 8-19.
Claims 2, 8, 11, 12 and 17 are rejected under pre-AIA 35 U.S.C.
I03(a) as being unpatentable over Tuoriniemi, Bishop, Mashinsky,
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McGrath, and Wei (US 2009/0326991 Al; December 31, 2009) ("Wei").
Final Act. 20-21.
Claims 4 and 13 are rejected under pre-AIA 35 U.S.C. § I03(a) as
being unpatentable over Tuoriniemi, Bishop, Mashinsky, McGrath, Wei, and
Hill (US 2009/0216600 Al; pub August 27, 2009) ("Hill")). Final Act. 21-
22.
Claims 5 and 14 are rejected under pre-AIA 35 U.S.C. § I03(a) as
being unpatentable over Tuoriniemi, Bishop, Mashinsky, McGrath, and
Grigg et al. (US 2012/0197793 Al; pub. August 2, 2012) ("Grigg"). Final
Act. 22-23.
Claims 21 and 22 are rejected under pre-AIA 35 U.S.C. § I03(a) as
being unpatentable over Tuoriniemi, Bishop, Mashinsky, Wurster (US
2008/0189207 Al; pub. August 7, 2008) ("Wurster"), and McGrath. Final
Act. 23-29.
ANALYSIS
The§ 1 OJ Rejection
The Examiner determines the claims are directed to the abstract idea
of "requesting a transport service" and the additional elements in the claims
are not sufficient to amount to significantly more than the judicial exception.
Final Act. 6-7 (citing SmartGene, Inc. v. Advanced Biological Labs, 555
Fed. Appx. 950 (Fed. Cir. 2014); Cybersource Corp v. Retail Decisions,
Inc., 654 F.3d 1366 (Fed. Cir. 2011); Alice Corp.Pty. Ltd. v. CLS Bank lnt'I,
134 S. Ct. 2347, 2360 (2014); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350,
1355 (Fed. Cir. 2014); Gametek LLC v. Zynga Inc., 597 Fed. Appx. 644
(Fed. Cir. 2015). The Examiner concludes:
The claims do not include additional elements that are sufficient
to amount to significantly more than the judicial exception
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Id.
because the computing device and network as recited are generic
computer components that perform functions (i.e. providing,
determining, receiving and displaying data) that are generic
functions (i.e. providing, determining, and receiving) that are
well-understood, routine, and conventional activities previously
known to the industry. These generic functions are similar to the
receiving, processing, and storing data that was held to be well-
understood, routine, and conventional in [Alice] to the receiving
and transmitting data over a network function in [buySAFE], to
the "tracking, displaying, creating, permitting, determining,
presenting and supplying" functions in [ Gametek].
Appellants argue the claims are not directed to an abstract idea and the
Examiner errs by overgeneralizing and oversimplifying the claims because
"[a]t some level, all inventions ... embody, use, reflect, rest upon, or apply
laws of nature, natural phenomena, or abstract ideas." App. Br. 12 (citing
Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S.Ct. 2347, 2354.) According to
Appellants, the Examiner's finding that the claims are directed to the
abstract idea of "requesting a transport service" is untethered from the claim
language and ignores the requirements of the individual limitations/steps of
the claims." Id. at 12 (citing McRo, Inc. v. Bandai Namco Games Am., No.
2015-1080, Slip. Op. at 21-22 (Fed. Cir. Sept. 13, 2016)). In particular,
Appellants argue the Examiner overlooks the following limitations ( also
referred to as "overlooked limitations"):
determining a fare adjustment over a given duration for a
geographic region that includes a current location of the user,
wherein determining the fare adjustment includes:
(A) establishing a secure communication link with each of
a plurality of users that are within the geographic region to
determine, over the respective secure communication link of
each of the plurality of users, an aggregation representing each
of (i) a group of providers who are available to provide the
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transport service within the geographic region, and (ii) a group
of customers who are within the geographic region to request or
receive the transport service;
(B) determining the fare adjustment based on input that
identifies each of the group of providers and the group of
customers;
receiving, from over one or more networks, data
corresponding to the transport request from input by the user
interacting with one or more confirmation user interfaces, the
transport request specifying a pickup location for the user that is
within the geographic region;
prior to communicating information about the transport
request to any provider in the group of providers, providing data
for the one or more confirmation user interfaces, to display
information corresponding to the transport request before the
user transmits confirmation of the transport request to secure a
provider for the transport request;
wherein providing the data for the one or more
confirmation user interfaces includes causing the one or more
confirmation user interface to display (i) a map that is relevant
to the pickup location, the map including a graphic feature
showing a position on the map corresponding to the pickup
location, (ii) textual information corresponding to the pickup
location, (iii) information corresponding to a fare for the
transport request, the information including the fare adjustment
that is determined for the given duration in response to the user
input, and (iv) a selectable prompt, that when selected by the
user, causes the computing device to transmit confirmation of the
transport request to the network service over the one or more
networks.
Id. at 12-13 (emphasis added).
Appellants argue SmartGene and Cybersource, cited by the Examiner,
are not related to the alleged abstract idea and the claims present no
preemption concerns. Id. at 14--16. According to Appellants:
[T]he Specification describes that, in preexisting technology and
systems, devices to dispatch drivers and monitor fares are not
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communicative to customers waiting for pickup and little
information is tracked about individual fares. See Specification
at ,r [0003]. The pending claims improve upon the pre-existing
technology and are directed to a specific way of providing a
confirmation panel showing relevant and important information
( e.g., a map, textual information, fare adjustment information,
etc.) after receiving a request for transport service from a user.
See, e.g., Abstract. Just like in McRo, it is the incorporation of
the specific steps and limitations of the pending claims, not the
use of computer, that improves pre-existing technology and
systems.
Id.at 16.
Appellants argue the claims are rooted in technology and represent a
technological improvement over prior art. Id. at 17 ( citing DDR Holdings,
LLC v. Hotels.com, LP, 773 F.3d 1245, 1248 (Fed. Cir. 2014). Appellants
argue the claims constitute more than the alleged abstract idea and the
Examiner's conclusory assertion that '"the computing device and network as
recited are generic computer components that perform functions ... that are
generic functions ... that are well-understood, routine, and conventional
activities previously known to the industry' is unsupported by any analysis
or any citation to intrinsic or extrinsic evidence." Id. at 19.
According to Appellants, many of the claim limitations embody
patentable inventive concepts (referring to arguments presented regarding
the§ 103 rejection at App. Br. 22-33). Id. at 19-20. Appellants argue
Bascom is applicable because, like the specific method of filtering Internet
content determined to be neither conventional nor generic, which the court
found the claims "recite a specific discrete implementation of the abstract
idea of filtering content," the overlooked claim elements are similar. Id.
at 20-21 (citing Bascom Global Internet Services, Inc. v. AT&T Mobility
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LLC, 827 F.3d 1341 (Fed. Cir. 2016); DDR Holdings, Inc. v. Hotels.com,
LP, 773 F.3d 1245 (Fed. Cir. 2014)).
In the Answer, the Examiner points out that, although the Final Action
stated the verbs of the claim for brevity, the Examiner considered the
limitations as a whole and as an ordered combination. Ans. 3. According to
the Examiner:
[T]he abstract idea of "requesting a transport service" is similar
to the abstract idea of comparing new and stored information and
using rules to identify options because the claims describe the
process of receiving user location data and comparing the data to
the service providers data which is already tracked by the system
to determine a fare adjustment and using the fare adjustment and
the location data as rules to forward the user's request to the right
service provider.
The abstract idea of "requesting a transport service" is similar to
the abstract idea of comparing intangible data because in
requesting a transport service, the location data of the users and
service providers is being compared in order to determine a fare
adjustment and to also forward the request to the right service
provider.
Id. at 4.
The Examiner finds McRo claims were essentially rooted in computer
technology because there is no analog method to accomplish the specific
limitations described in the claims whereas "[t]he current claims, on the
other hand, are not rules that enable the automation of specific tasks that
previously could not be automated or limitations necessarily rooted in
computer technology." Id. at 6. The Examiner also finds "requesting a
transport service" is an idea of itself because it can be performed through
pen and paper. Id.
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The Examiner determines DDR's claims being rooted in computer
technology is not applicable because to merge the "look and feel" of two
different websites, a computer is an essential component as there is no
method of merging two websites other than through a computer. Id. at 7
(citing DDR Holdings, LLC v. Hotels.com, LP., 773 F.3d 1245 (Fed. Cir.
2014)). Regarding DDR, the Examiner finds
Id.
the claims solved a technical problem that was essentially rooted
in computer technology (i.e. "internet"). However, in the current
claims, the internet is not necessary to perform the claims [and],
[a]s tedious as it would be, if the computers were to be removed,
the claims would still be performed through pre-internet
technology such as telephones, recordkeeping logs, and location
sensors.
The Examiner finds the additional elements are no more than "well-
understood, routine, conventional activity" because the additional features
(i.e. determining of the fare and provision of data) are not more than the
automation of a manual process which in itself has been found not to be a
"significantly more" limitation. Id. at 9. The Examiner also finds the
computing devices that simply receive, process and transmit data over a
network have been found not to be a "significantly more" limitation. Id.
The Examiner finds Bascom's internet centric problem of filtering
internet content is not applicable because, in Bascom, "[t]he internet as
computer technology as well as the computers are a necessary components
of the claims" and "it is impossible to perform the claims without the use of
the internet because no analog version of the problem existed prior to the
internet." Id. at 10 (citing Bascom Global Internet Services, Inc. v. AT&T
Mobility LLC, 827 F.3d 134). In particular, the Examiner finds:
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As stated above and as tedious as it can be, the current claims represent
a manual process that is merely linked to the internet and computers to
solve the problem of requesting a transport service. The removal of the
internet and the computers from the current claims and the use of pre-
internet technology does not affect the performance of the abstract idea
of "requesting a transport service". Therefore, while both Bascom and
the current claims use a combination of conventional and routine
computer components, Bascom is distinguishable from the current
claims because current claims are merely linking the combination of
the conventional and routine computer components to the abstract idea,
while in Bascom, the abstract idea is necessarily rooted in the
combination of the conventional and routine computer components.
Id. at 10.
In the Reply Brief, in addition to arguments discussed supra,
Appellants argue the Examiner's analysis is incorrect because the Examiner
fails to consider the claims as a whole, particularly referring to the
"overlooked limitations." See Reply Br. 4--7. Appellants argue the current
claims, "like those in McRo and DDR, perform functions using steps not
available in a pre-computer equivalent approach." Id. at 7. Appellants argue
the claims are rooted in technology and the Examiner does not explain how
the steps in the "overlooked limitations" can be performed without
technology. Id. at 8-10.
As discussed below, we are not persuaded by Appellants' arguments
and agree, instead, with the Examiner's findings and conclusions.
The Supreme Court in Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 134 S.
Ct. 2347 (2014) reiterated the framework set out in Mayo Collaborative
Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012) for
"distinguishing patents that claim ... abstract ideas from those that claim
patent-eligible applications of those concepts." Alice, 134 S. Ct. at 2355.
The first step in the analysis is to determine if the claim is directed toward a
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patent-ineligible concept and, if so, the second step is to determine whether
there are additional elements that transform the nature of the claim into a
patent eligible application. Id. (citing Mayo, 566 U.S. at 79, 78). The
second step searches for an inventive concept that is sufficient to ensure that
the patent amounts to significantly more than a patent on the patent-
ineligible concept. Id. (citing Mayo, 566 U.S. at 72-73).
The question is not whether claims mention a computing environment
but what they are "directed to." The "directed to" inquiry applies a stage-
one filter to claims, considered in light of the specification, based on
whether "their character as a whole is directed to excluded subject matter."
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed.
Cir. 2015); see Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376,
(Fed. Cir. 2016) (inquiring into "[t]he focus of the claimed advance over the
prior art"); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir.
2016). "The 'abstract idea' step of the inquiry calls upon us to look at the
'focus of the claimed advance over the prior art' to determine if the claim's
'character as a whole' is directed to excluded subject matter." Affinity Labs
of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016)
(quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016) ). "In determining the eligibility of respondents' claimed process
for patent protection under § 101, their claims must be considered as a
whole." Diamond v. Diehr, 450 U.S. 175, 188 (1981).
Initially, we note that we are not persuaded by Appellants' arguments
that the Examiner oversimplifies the claims and did not correctly address the
"overlooked limitations." The Examiner determined these limitations
"perform functions (i.e. providing, determining, receiving and displaying
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data) that are generic functions (i.e. providing, determining, and receiving)
that are well-understood, routine, and conventional activities previously
known to the industry." See Final Act. 6. The Examiner determined these
generic functions are similar to the receiving, processing, and storing data
that was held to be well understood, routine, and conventional, and cited
relevant case law. Id. Moreover, as discussed infra regarding the§ 103
rejections, the "overlooked limitations" are described in the cited prior art
references.
We conclude each of Appellants' claims on appeal is distinguishable
from the type of claim considered by the court in Enfzsh, DDR, Bascom, and
McRO. We conclude none of Appellants' claims is "directed to an
improvement in the functioning of a computer," as was found by the court
regarding the subject claim in Enfish, 822 F.3d at 1338. To the extent that
the recited steps or acts may be performed faster or more efficiently using a
computer, our reviewing court provides applicable guidance:
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.), 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.").
Fair Warning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir.
2016) (emphasis added). See also Electric Power Grp., 830 F.3d 1350 (Fed.
Cir. 2016), to the extent that Appellants' claims similarly collect
information, analyze it in some fashion, and present or communicate the
result.
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Applying this reasoning to Appellants' claims on appeal, we similarly
find any purported faster or more efficient performance of the claimed steps
or acts merely comes from the capabilities of a general-purpose computer
and/ or computer related elements, rather than from Appellants' claimed
steps or functions.
Appellants' reliance on DDR is unpersuasive because the claims
provide no improvement of the operation of a computer system
commensurate with improvement to computer technology, and there is no
ordered arrangement set forth which is non-conventional. The Specification
supports the view that the elements recited in the claims are conventional.
See, e.g., Spec. ,r,r 23-29 and 118-122. In DDR, the claims at issue
involved, inter alia, "web page[] displays [with] at least one active link
associated with a commerce object associated with a buying opportunity of a
selected one of a plurality of merchants." DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1249 (Fed. Cir. 2014) (claim 19 of US
7,818,399). The Federal Circuit found the claims in DDR to be patent
eligible under step two of the Mayo/Alice test because "the claimed solution
is necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks." Id. at 1257.
Specifically, the Federal Circuit found the claims addressed the "challenge
of retaining control over the attention of the customer in the context of the
Internet." Id. at 1258. The rejected claims are dissimilar to DDR's web
page with an active link, and the Specification does not support the view that
the computer related claim elements are unconventional, supra.
The claims before us are dissimilar to McRO 's technical improvement
because, in contrast to McRO, these claims cover a process that was
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previously performed in the same way by humans. McRO, Inc. v. Bandai
Namco Games Am. Inc., 23 F. Supp. 3d 1113 (Fed. Cir. 2013).
We additionally conclude Appellants' claims are analogous to the
method claim considered by the court in Electric Power Group, LLC v.
Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016), at least to the extent that
Appellants' claims are similarly directed to "merely selecting information,
by content or source, for collection, analysis, and display [which] does
nothing significant to differentiate a process from ordinary mental
processes." Id. at 1355. The claims do not require any nonconventional
computer or network components, or even a "non-conventional and non-
generic arrangement of known, conventional pieces," but merely call for
performance of the claimed information collection, analysis, and display
functions on generic computer components and display devices. Id.
Applying the first step of Alice, we agree with the Examiner that the
claims are directed to the identified abstract idea. In addition, we agree the
Examiner has considered the abstract ideas in the aggregate. Accordingly,
we find that the claims are directed to a patent-ineligible concept.
Having determined that the claims are directed to a patent-ineligible
concept, step 2 of the analysis considers whether the claims contain an
inventive concept such as additional limitations that add significantly more
to the claim so that it does not fully cover the abstract idea itself. See Alice,
134 S. Ct. at 2357. Here, we agree with the Examiner that no inventive
concept is present. Moreover, the hardware features are the type of generic
element that has been determined to be insufficient by the Supreme Court to
transform a patent-ineligible claim into one that is patent-eligible. See Alice,
134 S. Ct. at 2358. The claims include no limitations that prevent it from
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covering the abstract idea itself. Therefore, we are unpersuaded by
Appellants' argument that the claims constitute an inventive concept that is
significantly more than a patent on the patent-ineligible concept.
Regarding preemption, "[ w ]hile preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility .... Where a patent's claims are deemed only
to disclose patent ineligible subject matter under the Mayo framework, as
they are in this case, preemption concerns are fully addressed and made
moot." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015); see also OIP Techs. Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1362-63 ("that the claims do not preempt all price optimization or
may be limited to price optimization in the e-commerce setting do not make
them any less abstract").
In view of the above, we sustain the rejection of claim 1, and
independent claims 10 and 21 which are commensurate in scope with
claim 1. We also sustain the rejection of dependent claims 2-9, 11-18,
and 22 as these claims are not argued separately. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
The§ 103 Rejections
Appellants argue the Examiner errs in finding the combination of
Tuoriniemi, Bishop, Mashinsky, and McGrath teaches the claim 1
limitations, and that one of ordinary skill in the art would have combined the
references. App. Br 23-33; Reply Br. 10-18. Appellants also argue,
regarding the rejection of dependent claims 5 and 14, that Grigg is non-
analogous art. App. Br. 34--35; Reply Br. 18-19.
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The Examiner finds Tuoriniemi teaches a computerized system for
operating a network service transport system. Final Act. 8-9 ( citing
Tuoriniemi ,r,r 47---60, 68-79; Figs. 5a-8d). The Examiner finds Bishop
discloses "(iii) information corresponding to a fare for the transport request,
the information including the fare adjustment that is determined for the
given duration in response to the user input." Id. at 9-10). The Examiner
refers to Mashinsky for "determining a fare adjustment over a given duration
for a geographic region that includes a current location of the user, wherein
determining the fare adjustment includes determining a fare
adjustment. ... " Id. at 10-11 (citing Mashinsky ,r,r 24--31, 33--42). In
particular, the Examiner finds Mashinksy teaches a fare is determined based
on the number of taxi and customer requests available, the system monitors
the availability of service providers through GPS tracking and receives
transport request through internet connection. Id. at 11.
The Examiner refers to McGrath's teaching wherein:
McGrath discloses prior to communicating information about the
transport request to any provider in the group of providers,
providing data for the one or more confirmation user interfaces
to display information corresponding to the transport request
before the user transmits confirmation of the transport request to
secure a provider for the transport request and upon receiving the
confirmation from the user, communicating information about
the transport request to one or more providers of the group and
upon receiving the confirmation from the user, communicating
information about the transport request to one or more providers
of the group (fig. 11, paragraph 0140-144, validating the
transport request details before submitting the request to the
service providers).
Id. at 12.
The Examiner's basis for combining Tuoriniemi and Bishop is:
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[Because] the 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 in order to request
transportation services from one or more transportation service
providers.
Id. at 10.
The Examiner presents a similar analysis for the further combinations
with Mashinsky and McGrath. Id. at 11-13. Regarding the combination
with Mashinsky, the Examiner adds one of ordinary skill in the art would
have recognized that the results of the combination were predictable in order
to facilitate a better taxi experience. Id. at 11-12. Regarding the
combination with McGrath, the Examiner adds one of ordinary skill in the
art would have recognized that the results of the combination were
predictable in order to broker commuter transactions initiated by individuals.
Id. at 12-13.
Appellants argue Mashinsky ( and any of the other cited references)
does not teach "determining the fare adjustment based on input that
identifies each of the group of providers and the group of customers"
because Mashinsky teaches users and taxis bid and settle on a price. App.
Br. 24--25 (citing Mashinsky ,r,r 3, 11, 23, 24, 28, 29, 30 34, 39, 42).
Appellants argue Mashinsky does not teach "establishing a secure
communication link with ... " because "Mashinsky is entirely silent on a
'secure communication link."' Id. at 26-27. Appellants argue Bishop does
not teach "information corresponding to a fare for the transport request, the
information including the fare adjustment that is determined for the given
duration in response to the user input" because the Examiner does not
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explain how Bishop's bid from transportation services meets the claim
limitation and, moreover, Bishop does not teach any "fare adjustment that is
determined for the given duration in response to the user input." Id.
at 27-28.
Appellants argue the Examiner errs in combining the cited references
because there is inadequate articulated reasoning lacking some rational
underpinnings to support the legal conclusion of obviousness, particularly
the failure of the Examiner to explain why one of ordinary skill in the art
would have been motivated to make the combinations. Id. at 28-29 ( citing
KSR Int'! v. Teleflex Inc., 550 U.S. 398,418 (2007). In particular,
Appellants argue the Examiner's findings that the references could be
combined is not sufficient as it does not provide a basis for why the
references would be combined. See, e.g., Id. at 29-30.
In the Answer, the Examiner finds Mashinsky explicitly discloses a
plurality of taxi drivers are provided with a computer having a GPS monitor
and wireless communication in their automobile. Ans. 11-13 ( citing
Mashinsky ,r,r 24, 26, 28, 29, 30). The Examiner finds a person of ordinary
skill in the art would understand that a central system collects the location
data of each of the plurality of taxi automobiles and the requests for a
transport service from taxi customers in order to match taxi customers with
the appropriate taxi automobile. Id. at 13. The Examiner interprets each of
the location data of the taxi automobile and the request for a transport
service from the taxi customer (which includes starting position of the
customer) as an input into the system that identifies each one of the taxi
drivers and taxi customers, respectively. Id. The Examiner finds Mashinsky
teaches that supply and demand considerations are taken into consideration
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by the system in establishing pricing information. Id. at 14 ( citing
Mashinsky ,r 29).
According to the Examiner:
in order to take supply and demand into consideration to establish
pricing information, a person of ordinary skill in the art would
understand that the system takes into consideration "the
location data of the taxi drivers as the supply data and "the
transport requests presented by the taxi customers" as the
demand data.
Id. at 14. Because the Examiner interprets each of the location data of the
taxi drivers and the transport request presented by the taxi customers as an
input identifying each of the taxi drivers and taxi customers respectively, the
Examiner finds a person of ordinary skill in the art would understand that the
supply and demand considerations for establishing a price in Mashinsky are
based on these inputs in the system. Id.
The Examiner alternatively identifies Mashinsky' s teaching that "an
estimated route distance and travel time of the trip requested by the customer
may be calculated. Then, the cost of the trip for cars charging based on
distance traveled can be compared with cars charging for travel time."
Id. ( citing Mashinsky ,r 30). The Examiner then finds:
It is implicit that in order to calculate the estimated route distance
and travel time of the trip requested by each one of the customers,
the location data of the cars, the starting position and ending
position included in each one of the customer's request are taken
as inputs by the system in order to calculate the estimate travel
distance and time of the trip. Once the travel time and distance
are calculated based on those inputs, a cost is calculated based
on the travel time and distance. Therefore, a cost, interpreted here
by the Examiner as fare adjustment, is determined based on
inputs identifying the taxi drivers (i.e. location data of taxi
drivers) and customers (i.e. transportation requests including a
starting and ending position of a trip).
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Id. at 14--15.
Regarding "establishing a secure communication link with ... ," the
Examiner finds the claim does not specify how or which method is used to
secure the communication link. Id. 15-16. The Examiner finds:
[i]n view of the broad scope of the "secure" limitation in the
claim and the fact that, Mashinsky, as shown above, teaches that
the taxi drivers and taxi customers use their wireless devices via
the internet to connect to the main server, a person of ordinary
skill in the art would understand that it is implicit within the
teaching of Mashinsky that an internet connection is a secure
communication link between the wireless devices of the taxi
drivers, the taxi customers and the main server.
Id. at 16.
Regarding Bishop, the Examiner finds Bishop teaches a taxi customer
inputting starting and ending position of a trip and, based on these inputs, the
taxi customer receives monetary bids from taxi service providers to compete
for the taxi customer's business. Id. at 16. The Examiner interprets bids as
fare adjustment because a bid and fare adjustment are both a representation
of monetary value and this fare adjustment is determined based on the given
duration that it will take the service provider to travel from the starting to the
ending position inputted by the customer. Id. ( citing Bishop ,r 48).
Regarding the combination of the references, the Examiner refers to
multiple rationales provided by KSR, including combining prior art elements
according to known methods to yield predictable results. Id. at 16-22 ( citing
KSR Int'! v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Regarding dependent claims 5 and 14, which address allowing the
user to modify financial account information, the Examiner refers to Grigg' s
teaching of an electronic page on a mobile device which allows a user to
change/add/delete/modify his/her financial account information. Id. 22-23
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( citing Grigg ,r 7 4 ). The Examiner finds Grigg is analogous art because it is
reasonably pertinent to the problem faced by the inventor. Id.
In the Reply Brief, Appellants argue "nothing in Mashinsky or any of
the other references suggests that 'location data' and 'transport requests' may
be considered as 'supply data' and 'demand data,' respectively" and "[t]hus, it
is not surprising that Mashinksy does not disclose any 'fare adjustment'
determined based on the 'location data' or the 'transport requests.'" Reply
Br. 12-13. Appellants argue one of ordinary skill in the art would not
modify Mashinsky as suggested by the Examiner because Mashinsky
already teaches a bidding system and would render Mashinsky inoperable.
Id. at 13-15. Regarding a "secure communication" Appellants argue "[o]ne
of ordinary skill in the art would instead understand that an internet
connection, without more, is inherently not secure." Id. at 16. Appellants
argue the Examiner's interpretation of "bids as fare adjustment because a bid
and fare adjustment are both a representation of monetary value" is incorrect
because "a bid in an auction process is not a 'fare adjustment."' Id. at 17
( citing Bishop ,r 9). Appellants argue, regarding dependent claims 5 and 14,
that Grigg is non-analogous art because the Examiner has not shown it is
pertinent to the entire problem solved by the claimed invention. Id. at 18-19
(citing In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011).
We are not persuaded by Appellants' arguments and agree, instead,
with the Examiner's findings, claim interpretation, and conclusions. On the
record before us, we find no persuasive arguments that the Examiner's
findings and claim interpretations are unreasonable, overbroad, or
inconsistent with Appellants' Specification. Here, the phrases "fare
adjustment," "determining a fare adjustment," and "secure communication
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link" are not explicitly defined and Appellants' arguments are based on
unreasonably narrow claim interpretations. Applying a broad, but
reasonable claim interpretation, we agree with the Examiner that the
combination of the cited references teaches the claim 1 limitations, including
the disputed limitations. Claim terms in a patent application are given the
broadest reasonable interpretation consistent with the specification, as
understood by one of ordinary skill in the art. In re Crish, 393 F.3d 1253,
1256 (Fed. Cir. 2004).
Moreover, Appellants argue the references individually while the
rejection is based on the combination of the teachings of the cited references.
In re Keller, 642 F.2d 413,426 (CCPA 1981) ("[O]ne cannot show non-
obviousness by attacking references individually where, as here, the
rejections are based on combinations of references." (citations omitted)); In
re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellants also argue an unreasonably narrow teaching of the cited
references and an overly demanding standard of obviousness.
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill in
the art.
Keller, 642 F.2d at 425.
Here, the Examiner provides sufficient evidence as required for
obviousness. As stated by the Supreme Court, the Examiner's obviousness
rejection must be based on:
[S]ome articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness .... [H]owever, the
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analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007) (quoting In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)).
The Examiner's findings are reasonable because the skilled artisan
would "be able to fit the teachings of multiple patents together like pieces of
a puzzle" since the skilled artisan is "a person of ordinary creativity, not an
automaton." KSR, 550 U.S. at 420-21.
Based upon the teachings of the references and the fact that each
claimed element was well-known in the art, we agree with the Examiner
because the combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.
Id. at 415-16. We note Appellants present no persuasive arguments that the
results are unpredictable. Moreover, as discussed supra, the Examiner
additionally provided reasons why one of ordinary skill in the art would
combine each of the references in the manner suggested.
Furthermore, on this record, Appellants do not present sufficient or
persuasive evidence that the combination of the cited references was
"uniquely challenging or difficult for one of ordinary skill in the art" or
"represented an unobvious step over the prior art." Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 419-21). Nor have Appellants provided objective evidence of
secondary considerations, which our reviewing court guides "operates as a
beneficial check on hindsight." Cheese Sys., Inc. v. Tetra Pak Cheese &
Powder Sys., Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
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Regarding the rejection of dependent claims 5 and 14, we are not
persuaded by Appellants' argument that Grigg is non-analogous art because,
on the record before us, it is not disputed that Grigg is pertinent to the
problem of allowing the user to change/add/delete/modify financial account
information, and that is sufficient. Therefore, we sustain the rejection of
claims 5 and 14.
In view of the above, we sustain the rejection of claim 1, and
independent claims 10 and 21 as these claims are argued together with
claim 1. We sustain the rejection of dependent claims 5 and 14 supra, and
dependent claims 2--4, 6-9, 11-18, and 22 as these claims are not argued
separately. See 37 C.F.R. § 4I.37(c)(l)(iv).
DECISION
We affirm the Examiner's decision rejecting claims 1-18, 21, and 22
under 35 U.S.C § 101.
We affirm the Examiner's decision rejecting claims 1-18, 21, and 22
under 35 U.S.C § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37
C.F.R. § 41.50(±).
AFFIRMED
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