Ex Parte Novak et al

Patent Trial and Appeal Board

Jun 27, 2018

13828481 (P.T.A.B. Jun. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/828,481 03/14/2013 Kevin Mark Novak
110654 7590 06/29/2018
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-004 2682
EXAMINER
RAMPHAL, LATASHA DEVI
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
06/29/2018 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 KEVIN MARK NOV AK and
TRAVIS CORDELL KALANICK
Appeal2017-002228
Application 13/828,481 1
Technology Center 3600
Before BRADLEY W. BAUMEISTER, ERIC B. CHEN, and
NABEEL U. KHAN, Administrative Patent Judges.
CHEN, Administrative Patent Judge.
DECISION ON APPEAL
1 The real party in interest is Uber Technologies, Inc. (App. Br. 3.)
Appeal2017-002228
Application 13/828,481
This is an appeal under 35 U.S.C. § I34(a) from the final rejection of
claims 1-16. 2 Claims 17-21 have been cancelled. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Appellants' invention relates to adjusting prices for services, which
includes determining the number of requesters for a service at a given time
and the number of available service providers for providing the service at the
given time. A price, relative to a default price, for using the service
provided by service providers is adjusted based on the determined number of
requesters and the determined number of available service providers.
(Abstract.)
Claims 1, 8, and 15 are independent claims. Claim 1 is exemplary,
with disputed limitations in italics and formatting added:
1. A method for determining pricing for transport services,
the method being performed by one or more processors and
compnsmg:
identifying, during a given interval of a day, individuals who
are present in a given geographic area, each individual being
identified as one of a customer or a provider;
wherein identifying individuals includes communicating
with a mobile device that is associated with each individual,
using a corresponding secure channel that enables wireless
communications with the mobile device of each individual, in
order to secure information obtained from the mobile device of
each individual against unauthorized access;
2 We refer to the Final Office Action, mailed October 8, 2015 ("Final
Act."); Appeal Brief, filed July 7, 2016 ("App. Br."); Examiner's Answer,
mailed September 30, 2016 ("Ans."); and the Reply Brief, filed November
30, 2016 ("Reply Br.").
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wherein communicating with the mobile device that is
associated with each individual includes determining
(i) position information of each customer and each
provider in real-time during the interval, the position
information of each customer and each provider being
determined from a geo-aware resource of the mobile
device associated with the respective customer or
provider;
(ii) application usage information for each
customer determined from an application that is launched
or running on the mobile device associated with each
customer, the application usage information including
(a) information that identifies a request for
transport, initiated by each customer of a first set
of one or more customers of the identified
individuals, using the application that is running on
the mobile computing device of, and
(b) information about application activity of
a second set of one or more customers of the
identified individuals, of which none initiate a
corresponding request for transport during the
given interval, the information about application
activity being predictive that the corresponding
request for transport will be generated; and
(iii) information that identifies a current state of each
provider, the current state identifying whether each provider is
available to fulfill a transport request;
for a given transport request initiated by a requesting customer,
the method further comprises:
(i) determining an amount of demand for transport
services based at least in part on position information and
application usage information as determined for each customer
that is present in the given geographic region during the given
interval of the day;
(ii) determining an amount of supply for transport
services based at least in part on position information and
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information that identifies the current state of each provider that
is present in the given geographic region during the given
interval of day;
(iii) determining an adjustment to a default price, for the
given transport request based on the respective determined
amount of demand and supply; and
(iv) causing information that identifies or indicates the
adjustment, separate or independent of the default price or of
an adjusted price, to be displayed to the mobile device
associated with the requesting customer.
Claims 1-16 stand rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter. (Final Act. 4--7.)
Claims 1, 3-8, 10-15 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over O'Sullivan (US 2008/0195428 Al, publ. Aug. 14, 2008)
and Kvamme et al. (US 2013/0090959 Al publ. Apr. 11, 2013). (Final
Act. 7-18.)
Claims 2, 9, and 16 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over O'Sullivan, Kvamme, and Brown (US 2010/0023376 Al
publ. Jan. 28, 2010). (Final Act. 18.)
ANALYSIS
§ 101 Rejection
We are unpersuaded by Appellants' arguments (App. Br. 10-21; see
also Reply Br. 2-10) that independent claims 1, 8, and 15 are directed to
patent-eligible subject matter under 35 U.S.C. § 101.
The Examiner found that "[ c ]laim( s) 1-17 ... recite a series of steps
to adjust prices for transportation services based on at least supply and
demand data, which, as a business method, is a fundamental economic
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practice and thus an abstract idea"3 (Final Act. 4) and "comparing new and
stored information and using rules to identify options has been found to be
an abstract idea, see SmartGene, as has organizing information through
mathematical relationships, see ... Digitech Image Tech" (id. at 6). In
addition, the Examiner found that "[ s ]imilar to cases found to be directed to
abstract ideas without significantly more, [the] claimed invention does not
provide a technological improvement to an existing technology beyond
applying the abstract idea on a general purpose computer utilizing data
collected from standard location and computer technology." (Id.) We agree
with the Examiner's findings and conclusions.
A patent may be obtained for "any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof." 35 U.S.C. § 101. The Supreme Court has held that this "provision
contains an important implicit exception: [l]aws of nature, natural
phenomena, and abstract ideas are not patentable." Alice Corp. v. CLS Bank
Int'!, 134 S. Ct. 2347, 2354 (2014); Gottschalkv. Benson, 409 U.S. 63, 67
(1972) ("Phenomena of nature, though just discovered, mental processes,
and abstract intellectual concepts are not patentable, as they are the basic
tools of scientific and technological work."). Notwithstanding that a law of
nature or an abstract idea, by itself, is not patentable, the application of these
concepts may be deserving of patent protection. Mayo Collaborative Servs.
v. Prometheus Labs., Inc., 566 U.S. 66, 71-72 (2012). In Mayo, the Court
stated that "to transform an unpatentable law of nature into a patent-eligible
3 As evidentiary support, the Examiner cited to Smith (ADAM SMITH, AN
INQUIRY INTO THE NATURE AND CAUSES OF THE WEALTH OF NATIONS,
book I, ch. 7, ,r,r 9, 21 (Edwin Cannan, ed. 177 6) ).
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application of such a law, one must do more than simply state the law of
nature while adding the words 'apply it."' Mayo, 566 U.S. at 72 (internal
citation omitted).
In Alice, the Supreme Court reaffirmed the framework set forth
previously in Mayo "for distinguishing patents that claim laws of nature,
natural phenomena, and 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 whether the claims at issue are directed to one
of those patent-ineligible concepts." Id.
If the claims are directed to a patent-ineligible concept, then the
second step in the analysis is to consider the elements of the claims
"individually and 'as an ordered combination'" to determine whether there
are additional elements that "'transform the nature of the claim' into a
patent-eligible application." Id. (quoting Mayo, 566 U.S. at 79, 78). In
other words, the second step is to "search for an 'inventive concept'-i.e., an
element or combination of elements that is 'sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself."' Id. (brackets in original) ( quoting Mayo, 566
U.S. at 72-73). "A claim that recites an abstract idea must include
'additional features' to ensure 'that the [claim] is more than a drafting effort
designed to monopolize the [abstract idea]."' Id. at 2357 (brackets in
original) (quoting Mayo, 566 U.S. at 77-78). The prohibition against
patenting an abstract idea "cannot be circumvented by attempting to limit the
use of the formula to a particular technological environment or adding
insignificant post-solution activity." Bilski v. Kappas, 561 U.S. 593, 610-11
(2010) (internal citation and quotation marks omitted). The Court in Alice
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noted that "' [ s ]imply appending conventional steps, specified at a high level
of generality,' was not 'enough' [in Mayo] to supply an 'inventive
concept."' Alice, 134 S. Ct. at 2357 (quoting Mayo, 566 U.S. at 82-83, 77-
78, 72-73).
Alice Step One: Are the claims at issue
directed to a patent-ineligible concept?
Independent claim 1 is a method claim, which recites, in part, the
following limitations: "identifying, during a given interval of a day,
individuals who are present in a given geographic area, each individual
being identified as one of a customer or a provider ... determining
(i) position information of each customer and each provider in real-time
during the interval ... (ii) application usage information for each customer
... the application usage information including (a) information that
identifies a request for transport ... (b) information about application
activity of a second set of one or more customers of the identified
individuals, of which none initiate a corresponding request for transport
during the given interval, the information about application activity being
predictive that the corresponding request for transport will be generated; and
(iii) information that identifies a current state of each provider, the current
state identifying whether each provider is available to fulfill a transport
request."
Such method steps of claim 1 are directed to a patent-ineligible
abstract idea of collecting, analyzing, and storing data. See, e.g., Elec.
Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) ("a process
of gathering and analyzing information of a specified content, then
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displaying the results" is "directed to an abstract idea"); Content Extraction
and Transmission LLC v. Wells Fargo Bank, National Ass 'n, 776 F.3d 1343,
1347 (Fed. Cir. 2014) ("collecting data, ... recognizing certain data within
the collected data set, and ... storing that recognized data in a memory" is
an abstract idea); Digitech Image Techs., LLC v. Electronics for Imaging,
Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014) ("Without additional limitations,
a process that employs mathematical algorithms to manipulate existing
information to generate additional information is not patent eligible");
SmartGene, Inc. v. Advanced Biological Labs., 555 F. App'x 950, 955 (Fed.
Cir. 2014) ("the claim at issue here involves a mental process excluded from
section 101: the mental steps of comparing new and stored information and
using rules to identify medical options").
Independent claim 1 further recites the following method steps of:
"(i) determining an amount of demand for transport services .. .
(ii) determining an amount of supply for transport services .. .
(iii) determining an adjustment to a default price, for the given transport
request based on the respective determined amount of demand and supply."
Such remaining method steps of claim 1 are directed to the patent-ineligible
abstract concept related "a fundamental economic practice long prevalent in
our system of commerce." See Alice, 134 S. Ct. at 2356.
Accordingly, claim 1 is directed to a patent-ineligible abstract idea.
Claim 8, a corresponding system claim, and claim 15, a corresponding non-
transitory computer readable medium claim, recite limitations similar to
those discussed with respect to claim 1. Thus, claims 8 and 15 are also
directed to a patent-ineligible abstract idea.
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Alice Step Two: Is there something else in the claims
that ensures that they are directed to significantly
more than a patent-ineligible concept?
Because claims 1, 8, and 15 are directed to an abstract idea, we next
inquire whether these claims recite an element, or combination of elements,
that is enough to ensure that the claim is directed to significantly more than
an abstract idea.
Claim 1 is a method claim, which includes "one or more processors,"
"a mobile device," and "a geo-aware resource of the mobile device."
Claim 8, a system claim, and claim 15, a non-transitory computer readable
medium claim, recite similar computer hardware limitations. With respect
to the claimed "one or more processors," "mobile device," and "geo-aware
resource of the mobile device," Appellants' Specification discloses the
following:
In one implementation, computer system 500 includes
processing resources 510, main memory 520, ROM 530, storage
device 540, and communication interface 550. Computer system
500 includes at least one processor 510 for processing
information. Computer system 500 also includes a main memory
520, such as a random access memory (RAM) or other dynamic
storage device, for storing information and instructions to be
executed by the processor 510. Main memory 520 also may be
used for storing temporary variables or other intermediate
information during execution of instructions to be executed by
processor 510. Computer system 500 may also include a read
only memory (ROM) 530 or other static storage device for
storing static information and instructions for processor 510. A
storage device 540, such as a magnetic disk or optical disk, is
provided for storing information and instructions.
(Spec. ,r 64; see also Fig. 5.)
FIG. 6 is a block diagram that illustrates a mobile computing
device upon which examples described herein may be
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implemented. In one embodiment, a computing device 600 may
correspond to a mobile computing device, such as a cellular
device that is capable of telephony, messaging, and data services.
Examples of such devices include smartphones, handsets or
tablet devices for cellular carriers. Computing device 600
includes a processor 610, memory resources 620, a display
device 630 ( e.g., such as a touch-sensitive display device), one
or more communication sub-systems 640 (including wireless
communication sub-systems), input mechanisms 650 ( e.g., an
input mechanism can include or be part of the touch-sensitive
display device), and one or more location detection mechanisms
(e.g., GPS component) 660. In one example, at least one of the
communication sub-systems 640 sends and receives cellular data
over data channels and voice channels.
(Spec. ,r 68.)
The high level of abstraction and the generalized functional terms by
which the computer components are described reasonably indicate that
Appellants' Specification discloses: (i) conventional computer system 500
having conventionally arranged processing resources 510, main memory
520, read only memory (ROM) 530, storage device 540, and communication
interface 550 (if 64; see also Fig. 5); and (ii) conventional mobile computing
device 600 having conventionally arranged processor 610, memory
resources 620, display device 630, communication sub-systems 640, input
mechanisms 650, and location detection mechanisms 660. In view of
Appellants' Specification, the claimed hardware components, including "one
or more processors," "a mobile device," and "a geo-aware resource of the
mobile device" reasonably may be determined to be generic, purely
conventional computer elements. Thus, the claims do no more than require
generic computer elements to perform generic computer functions, rather
than improve computer capabilities.
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Accordingly, appending the conventional "one or more processors,"
"mobile device," and "geo-aware resource of the mobile device" to an
abstract idea is not enough to transform an abstract idea into a patent-eligible
invention. See Alice, 134 S. Ct. at 2358 ("[T]he mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention.").
First, Appellants argue that "the Office Action overgeneralizes the
claims and ignores large portions of the claim language, thereby concluding
that they are directed to the abstract idea of 'adjust[ing] prices for
transportation services based on at least supply and demand data"' (App.
Br. 11) and "[b ]y ignoring all limitations of the claims except one, the
Examiner has failed to analyze the claims as a whole in determining whether
they are directed to an abstract idea" (id. at 13; see also Reply Br. 2-3).
Contrary to Appellants' arguments, the Examiner has identified the
appropriate judicial exceptions of "a fundamental economic practice,"
"comparing new and stored information and using rules to identify options,"
and "organizing information through mathematical relationships," and the
Examiner has compared the claimed concepts of independent claim 1 to
appropriate Supreme Court and Federal Circuit decisions (i.e., Alice,
Digitech, and SmartGene ). Appellants are improperly conflating part one of
the Alice test with part two of the Alice test, which includes consideration of
an element or combination of elements to determine if the claim recites
"additional features."
Second, Appellants argue that "the Federal Circuit [in Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)] stressed that even at the
first step of the Alice analysis, it is relevant to ask whether the invention is
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'directed to an improvement to computer functionality versus being directed
to an abstract idea."' (App. Br. 13 (emphasis omitted).) According to
Appellants, "the Examiner summarily concluded, without undertaking the
analysis required by the Federal Circuit, that the claims are directed to an
abstract idea." (Id. at 14; see also Reply Br. 5.)
While Appellants cite Enfish, Appellants have not established that
Enfish imposes a newly restrictive requirement for the Examiner to
determine whether the claims are directed to an improvement to computer
functionality versus being directed to an abstract idea. Moreover,
Appellants have not provided citations to the Specification to demonstrate
that the claimed invention is an improvement of an existing technology or
demonstrated a deficiency in the prior art. See Enfzsh, 822 F.3d at 1337
("Moreover, our conclusion that the claims are directed to an improvement
of an existing technology is bolstered by the specification's teachings that
the claimed invention achieves other benefits over conventional databases,
such as increased flexibility, faster search times, and smaller memory
requirements").
Third, Appellants argue that "when properly analyzed as a whole, the
independent claims are not directed to an abstract idea" but "[i]nstead, they
are necessarily rooted in computer technology in order to overcome a
problem specifically arising in the realm of computer and network
technology." (App. Br. 14.) In particular, Appellants argue, "the claims are
directed to computer-implemented functionalities that address problems
specific to a computerized network service for arranging on-demand
services" and "[t]he inventors recognized that with the rise of mobile
communications and the associated access to real-world services from
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mobile devices, such as on-demand transportation, demand for services can
vary drastically." (Id.) However, Appellants have not adequately explained
why the claim "purport[ s] to improve the functioning of the computer itself'
or "any other technology or technical field." Alice, 134 S. Ct. at 2359. In
particular, Appellants have not explained why determining a pricing based
on supply and demand, which is fundamental economic practice, improves
the function of a computer or other technology.
Fourth, Appellants argue that "under the appropriate analysis, the
independent claims recite several additional, meaningful limitations beyond
an abstract idea." (App. Br. 19.) In particular, Appellants argue
the independent claims recite additional novel concepts and steps
including determining "application usage information for each
customer determined from an application that is launched or
running on the mobile device associated with each customer" and
"information that identifies a current state of each provider, the
current state identifying whether each provider is available to
fulfill a transport request."
(Id.) However, Appellants improperly conflate the requirements for eligible
subject matter with the independent requirements of novelty and non-
obviousness. "The 'novelty' of any element or steps in a process, or even of
the process itself, is of no relevance in determining whether the subject
matter of a claim falls within the § 101 categories of possibly patentable
subject matter." Diamond v. Diehr, 450 U.S. 175, 188-89 (1981).
Fifth, Appellants argue that
relevant to Step 2A of the Alice inquiry is the McRo[, Inc. v.
Bandai Namco Games America, Inc. 837 F.3d 1299, (Fed.
Cir. 2016)] decision in which the Federal Circuit was asked to
examine the subject matter eligibility of a patent relating to
"automating part of a pre-existing 3-D animation method" using
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rules that determine when to set keyframes and setting those
keyframes.
(Reply Br. 5---6.) In particular, Appellants argue that "the claimed invention
is specific, requiring the performance of numerous nonconventional and
non-routine steps" and "it is the claimed method and system, not merely the
use of [a] computer, that improves the underlying technology." (Id. at 6.)
However, Appellants only provide broad conclusory statements.
Appellants have explained neither why "the claimed invention is specific,
requiring the performance of numerous nonconventional and non-routine
steps" nor why "it is the claimed method and system, not merely the use of
computer, that improves the underlying technology."
Last, Appellants argue that "Bascom Global Internet Servs., Inc. v.
AT&T Mobility LLC ... is highly relevant to Step 2B of the inquiry-the
search for an inventive step." (Reply Br. 7 .) In particular, Appellants argue
that "the Examiner failed to conduct the necessarily analysis required by
Bascom-whether 'an inventive concept can be found in the non-
conventional and non-generic arrangement of known conventional pieces'
recited in the claims." (Id. at 9.) Regardless of sufficiency of the
Examiner's analysis, Appellants' Specification, as explained above, provides
sufficient basis to support the conclusion that claim 1 does not recite
significantly more than the abstract idea.
Thus, we agree with the Examiner that claims 1, 8, and 15 are directed
towards patent-ineligible subject matter. Accordingly, we sustain the
rejection of independent claims 1, 8, and 15 under 35 U.S.C. § 101.
Claims 2-7, 9-14, and 16 depend from independent claims 1, 8, and
15. We sustain the rejection of claims 2-7, 9-14, and 16 under 35 U.S.C.
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§ 101 for the same reasons discussed with respect to independent claims 1,
8, and 15.
§ 103 Rejection-O'Sullivan and Kvamme
First, we are unpersuaded by Appellants' arguments (App. Br. 22-25;
see also Reply Br. 11-12) that the Examiner improperly combined
O'Sullivan and Kvamme.
The Examiner found that "Kvamme is reasonably within the field of
Appellant's endeavor and further, reasonably pertinent to the particular
problem with which the Appellant was concerned." (Ans. 6-7.) In
particular, the Examiner found that "Appellant's specification states that
services may include not only transport services but food services as well"
and "Kvamme provides resolution to the same problem of adjusting prices
for services based on supply and demand within a specific geolocation and
using real-time and historical data." (Id. at 7.) We agree with the
Examiner's findings.
Appellants' Specification discloses the following:
There are many real-world services that a user can access
through a mobile computing device. Typically, such services
operate under a fixed pricing scheme. With the availability of
mobile communications, however, demand for such services can
vary dramatically.
(i-f 2 ( emphasis added).)
Embodiments described herein provide for a system that
dynamically adjusts prices for services based on real-time
conditions at a particular time. The dynamically adjusted price
can be displayed to a user of a computing device that requests the
service, and the service can be provided to the user at the adjusted
pnce.
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(if 9 .)
A service that is requested by a user or requester using a
mobile computing device can include on-demand services,
geographically-based (or location-based) services, and/or
transport services. Such services can include, for example, a
delivery service, a babysitting service, an entertainment service,
a moving service, a food service, or a taxi service.
(if 10.)
Kvamme relates to "offering and managing reservations for restaurant
or other reservation-based services" such that "during fulfillment of the
reservation, and providing the data regarding items ordered during
fulfillment of the reservation for display to the consumer on a mobile device
during fulfillment of the reservation." (Abstract.) Kvamme further explains
the following:
In example embodiments, premium reservations may be
dynamically priced by the system based on demand or other
criteria specified by the restaurant or service provider who
operates the system. For off-peak reservations, discounts and
other incentives may be offered dynamically by the system based
on demand or other criteria specified by the restaurant or service
provider. Example embodiments may use current and historical
information regarding demand in determining dynamic pricing
and discounts for reservations.
(if 18 ( emphasis added).)
According to the Specification, Appellants' field of endeavor relates
to dynamically adjusted prices based on real-time conditions for services
(e.g. food service). (See ifif 9-10.) Similarly, Kvamme relates to managing
reservations for restaurant-based services (Abstract) and explains that
"premium reservations may be dynamically priced by the system based on
demand" and that "discounts and other incentives may be offered
dynamically by the system based on demand" (if 18). Accordingly,
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Kvamme is from the same field of endeavor as Appellants' claimed
invention because both Appellants' Specification and Kvamme relates to
dynamic pricing of service based on demand. See In re Bigio, 381 F.3d
1320, 1325 (Fed. Cir. 2004) (one test defining the scope of analogous prior
art is "whether the art is from the same field of endeavor, regardless of the
problem addressed").
Similarly, Appellants' Specification discloses the problem of fixed
pricing schemes for services when "demand for ... services can vary
dramatically." (i-f 2.) As a solution, Appellants propose "a system that
dynamically adjusts prices for services based on real-time conditions at a
particular time." (i-f 9.)
Kvamme explains that "premium reservations may be dynamically
priced by the system based on demand or other criteria specified by the
restaurant or service provider who operates the system" and "discounts and
other incentives may be offered dynamically by the system based on demand
or other criteria specified by the restaurant or service provider." (i-f 18.)
Accordingly, the dynamic pricing of Kvamme, which is based on demand,
provides a solution to the problem disclosed in Appellants' Specification of
fixed pricing schemes. Thus, Kvamme is reasonably pertinent to the
particular problem of dynamic adjustment of prices, based on real-time
conditions with which the inventor is involved. See In re Bigio, 381 F.3d
1320, 1325 (Fed. Cir. 2004) (another test defining the scope of analogous
prior art is "if the reference is not within the field of the inventor's endeavor,
whether the reference still is reasonably pertinent to the particular problem
with which the inventor is involved").
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Appellants argue that "[t]he Office Action appears to assert that
Kvamme is analogous art because it is directed to a field related to the
teachings of O'Sullivan, rather than to the claimed invention." (App.
Br. 23.) Contrary to Appellants' arguments, the Examiner found that
"Kvamme is reasonably within the field of Appellant's endeavor." (Ans. 6.)
Appellants further argue that "the Office Action asserts that Kvamme
is directed to the field of 'dynamically adjusting prices for a reservation-
based service,' without citing to any portion of Kvamme" and "[ t ]his
characterization, in addition to being wholly unsupported, misstates
Kvamme." (App. Br. 24.) Contrary to Appellants' arguments, Kvamme
explains that "premium reservations may be dynamically priced by the
system based on demand or other criteria specified by the restaurant" and
"[ fJor off-peak reservations, discounts and other incentives may be offered
dynamically ... by the restaurant." (i-f 18.)
Appellants also argue that "the Examiner misapplies the test of
whether a reference is analogous art" because "[t]he Examiner fails to
articulate why the field of endeavor should be so expansive as to include
'food services' or all 'on demand services' when none of the claims recite
such broad subject matter." (Reply Br. 12.) However, the "test for
analogous art requires the PTO to determine the appropriate field of
endeavor by reference to explanations of the invention's subject matter in
the patent application, including the embodiments, function, and structure of
the claimed invention." Bigio, 381 F.3d at 1325. Moreover, even if
Appellants are correct that the Examiner's findings with respect to the "field
of endeavor" are erroneous, Appellants have not adequately rebutted the
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Examiner's findings that Kvamme is also reasonably pertinent to the
particular problem with which the inventor is involved.
Thus, the Examiner has properly combined O'Sullivan and Kvamme
to reject independent claim 1 under 35 U.S.C. § 103(a).
Second, we are unpersuaded by Appellants' arguments (App. Br. 26-
27) that the combination of O'Sullivan and Kvamme would not have
rendered obvious independent claim 1, which includes the limitation "secure
channel that enables wireless communications."
The Examiner found that the personal communications device of
O'Sullivan (e.g., GPS phone), having Rider Software Interface software, and
the Private Networks for Internet access at pick-up locations, as illustrated in
Figure 3, collectively correspond to the limitation "secure channel that
enables wireless communications." (Final Act. 8; see also Ans. 7-8.) We
agree with the Examiner's findings.
0' Sullivan "relates to a ground transportation network matching
individuals with transport capacity on a supply and demand basis." (i-f 2.)
Figure 1 of O'Sullivan illustrates a network system (i-f 28), which includes
person 10 having personal communications device 11 ( e.g., GPS Phone)
with a software layer ( e.g., Rider Software Interface) to signal Shared
Transport Marketplace 12 (i-f 60). Figure 3 of O'Sullivan illustrates the rider
technology components of the network system, which includes:
(1) Location; (2) Location transmission; (3) Computing Component; and
(4) Internet. (i-f 152.) Moreover, Figure 3 illustrates that the "Internet"
component includes "Private Network at pick-up locations." Because
Figure 3 of O'Sullivan explains that one example of personal
communications device 11 is a GPS Phone and one example of an Internet
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component includes a Private Network, O'Sullivan teaches the limitation
"secure channel that enables wireless communications."
Appellants argue that "[a]ccording to the specification, 'secure access
channels' over the network may be provided 'through any number of
methods, such as web-based forms, programmatic access via restful APis,
Simple Object Access Protocol (SOAP), remote procedure call (RPC),
scripting access, etc., while also providing secure access methods including
key-based access." (App. Br. 26.) Accordingly, Appellants argue "the
Office Action fails to point out what aspects of O'Sullivan correspond to the
claimed 'secure channel."' (Id.)
However, the importation of a narrow embodiment into the broader
independent claim 1 is improper. See SuperGuide Corp. v. DirecTV Enters.,
Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) ("For example, a particular
embodiment appearing in the written description may not be read into a
claim when the claim language is broader than the embodiment.")
Moreover, as discussed previously, the limitation "secure channel that
enables wireless communications" is broad enough to encompass personal
communications device 11 of O'Sullivan (e.g., GPS Phone) and the Internet
component of O'Sullivan (e.g., a Private Network).
Appellants further argue that "O'Sullivan as a whole does not disclose
or suggest this feature" and "[a]lthough O'Sullivan recognized the issue of
security, such as the 'fear of traveling with strangers in public transit
systems' ... it went about resolving security issues in an entirely different
fashion than employing a 'secure channel."' (App. Br. 27 .) However, the
Examiner cited to personal communications device 11 of O'Sullivan ( e.g.,
GPS Phone) and the Internet component of O'Sullivan (e.g., a Private
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Network), rather than the fear of traveling with strangers in public transit
systems, for teaching the limitation "secure channel that enables wireless
communications." (Final Act. 8.)
Therefore, we agree with the Examiner that the combination of
0' Sullivan and Kvamme teaches the limitation "secure channel that enables
wireless communications."
Third, we are unpersuaded by Appellants' arguments (App. Br. 28-
29; see also Reply Br. 14) that the combination of O'Sullivan and Kvamme
would not have rendered obvious independent claim 1, which includes the
limitation "information about application activity of a second set of one or
more customers of the identified individuals, of which none initiate a
corresponding request for transport during the given interval, the
information about application activity being predictive that the
corresponding request for transport will be generated."
The Examiner found that Figure 14d of O'Sullivan, which illustrates a
street network of capacity, corresponds to the limitation "information about
application activity of a second set of one or more customers of the
identified individuals, of which none initiate a corresponding request for
transport during the given interval, the information about application activity
being predictive that the corresponding request for transport will be
generated." (Ans. 9-10.) We agree with the Examiner's findings.
Figure 14d of O'Sullivan illustrates capacities and capabilities for
overall shared transport network, on average, at various day-parts. (i-f 54.)
In particular, O'Sullivan explains that "the model would be able to
stochastically determine the likelihood of service, at any part of the day"
based on "the historical availability of transport capacity [which] is
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represented by lines in the street network." (i-f 130.) Because O'Sullivan
explains that the shared transport network can model capacities and
capabilities at any part of the day, O'Sullivan teaches the limitation "the
information about application activity being predictive that the
corresponding request for transport will be generated." Moreover, because
such modelling of capacities and capabilities is based upon historical data,
rather than requests from riders, 0' Sullivan teaches the limitation
"information about application activity of a second set of one or more
customers of the identified individuals, of which none initiate a
corresponding request for transport during the given interval."
Appellants argue that "nothing in O'Sullivan suggests that such
'historic data' is 'of a second set of one or more customers of the identified
individuals ... ' or 'predictive that the corresponding request for transport
will be generated,' as the claims require." (App. Br. 29; see also Reply
Br. 14.) However, other than provide a conclusory statement that
0' Sullivan does not teach the limitations of claim 1, Appellants have not
provided any persuasive arguments as to why the Examiner's findings with
respect to Figure 14b of O'Sullivan are improper.
Thus, we agree with the Examiner that the combination O'Sullivan
and Kvamme would have rendered obvious independent claim 1, which
includes the limitation "information about application activity of a second
set of one or more customers of the identified individuals, of which none
initiate a corresponding request for transport during the given interval, the
information about application activity being predictive that the
corresponding request for transport will be generated."
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Fourth, we are unpersuaded by Appellants' arguments (App. Br. 32;
see also Reply Br. 14) that the combination of O'Sullivan and Kvamme
would not have rendered obvious independent claim 1, which includes the
limitation "determining an adjustment to a default price, for the given
transport request based on the respective determined amount of demand and
supply."
The Examiner found that the Shared Transport Marketplace of
O'Sullivan, which determines if new capacity has become available with a
lower price option, corresponds to the limitation "determining an adjustment
to a default price, for the given transport request based on the respective
determined amount of demand and supply." (Final Act. 10-11; see also
Ans. 11-12.) We agree with the Examiner's findings.
0' Sullivan explains that "Shared Transport Marketplace 12 ...
provides to the Rider 10 and to the Driver 13 information about Transport
Capacity and Transport Demand." (i-f 64.) O'Sullivan further explains that
"Shared Transport Marketplace 12 will also monitor the Transport Capacity
to see if any new capacity has become available [that] offers a superior
service and/or a lower price option to the Rider 10." (i-f 75.) Because
O'Sullivan explains Shared Transport Marketplace 12 monitors the
Transport Capacity to see if any new capacity has become available with a
lower price than a previous price, 0' Sullivan teaches the limitation
"determining an adjustment to a default price, for the given transport request
based on the respective determined amount of demand and supply."
Appellants argue that "[ monitoring the Transport Capacity to see if
any new capacity has become available] is not 'an adjustment to a default
price based on the respective determined amount of demand and supply' as
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required by claims" and "although O'Sullivan recognizes the need to
'optimize available capacity and services,' ... it does not teach the
limitation at issue." (App. Br. 32; see also Reply Br. 14.) Instead,
Appellants argue, O'Sullivan "proposes other methods to optimize available
capacity and services by teaching that 'the Shared Transport Marketplace 12
will be working to optimize available capacity and services and will
substitute Riders and Drivers, create multiple Riders at the same Pick-up
Point to fill the Transport Capacity more efficiently."' (App. Br. 32.)
However, as discussed previously, O'Sullivan further explains that
"Shared Transport Marketplace 12 will also monitor the Transport Capacity
to see if any new capacity has become available which offers ... a lower
price option to the Rider 10," which teaches the limitation "an adjustment to
a default price."
Thus, we agree with the Examiner that the combination O'Sullivan
and Kvamme would have rendered obvious independent claim 1, which
includes the limitation "determining an adjustment to a default price, for the
given transport request based on the respective determined amount of
demand and supply."
Last, we are unpersuaded by Appellants' arguments (App. Br. 34) that
the combination of O'Sullivan and Kvamme would not have rendered
obvious independent claim 1, which includes the limitation "causing
information that identifies or indicates the adjustment, separate or
independent of the default price or of an adjusted price, to be displayed to
the mobile device associated with the requesting customer."
The Examiner found that: (i) the Shared Transport Marketplace of
O'Sullivan, which determines if new capacity has become available with a
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lower price option; (ii) Figure 4 of O'Sullivan, which illustrates a
"Smartphone/PDA"; and (iii) the Rider Experience table, as illustrated in
Figure 5B of O'Sullivan, collectively correspond to the limitation "causing
information that identifies or indicates the adjustment, separate or
independent of the default price or of an adjusted price, to be displayed to
the mobile device associated with the requesting customer." (Final Act. 11.)
We agree with the Examiner's findings.
As discussed previously, O'Sullivan explains that "Shared Transport
Marketplace 12 will also monitor the Transport Capacity to see if any new
capacity has become available which offers a superior service and/or a lower
price option to the Rider 10." (i-f 75.) Figure 4 of O'Sullivan illustrates that
Transport Request Methods 408 includes "Smartphone/PDA." Moreover,
Figure 5B of O'Sullivan illustrates a table of functional options for the Rider
Experience, which includes "sort or exclude ... by cost." Because
O'Sullivan explains that Shared Transport Marketplace 12 monitors for
lower prices, such that a rider can sort rides by cost, and the rider can use a
Smartphone/PDA, O'Sullivan, teaches the limitation "causing information
that identifies or indicates the adjustment, separate or independent of the
default price or of an adjusted price, to be displayed to the mobile device
associated with the requesting customer."
Appellants argue that "nowhere does O'Sullivan even disclose or
suggest displaying information that identifies or indicates an adjustment to a
default price at all" and "[t]his is not surprising-as discussed above,
O'Sullivan does not disclose or suggest 'determining an adjustment to a
default price,' ... thus cannot teach 'cause/causing information that
identifies or indicates the adjustment ... to be displayed."' (App, Br. 34.)
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However, as discussed previously, because O'Sullivan explains
Shared Transport Marketplace 12 monitors the Transport Capacity to see if
any new capacity has become available with a lower price than a previous
price, 0' Sullivan teaches the limitation "determining an adjustment to a
default price." Moreover, Appellants do not present any persuasive
arguments why the Examiner's finding with respect to Shared Transport
Marketplace 12, Figure 4, and Figure 5B of O'Sullivan are improper.
Thus, we agree with the Examiner that the combination O'Sullivan
and Kvamme would have rendered obvious independent claim 1, which
includes the limitation "causing information that identifies or indicates the
adjustment, separate or independent of the default price or of an adjusted
price, to be displayed to the mobile device associated with the requesting
customer."
Claims 2, 9, and 16
We are unpersuaded by Appellants' arguments (App. Br. 36; see also
Reply Br. 18) that the Examiner improperly combined O'Sullivan, Kvamme,
and Brown to reject dependent claims 2, 9, and 16 under§ 103(a).
The Examiner found that "Brown is reasonably pertinent to the
particular problem with which the Appellant was concerned[,] as Brown
relates to problem of real-time resource management, similar to the real-time
resource management of transport services as provided by Appellant."
(Ans. 14.) The Examiner further found that:
Brown solves the problem of showing easily an adjusted price
relative to a default price in the resource management based on
supply and demand, the display of the adjusted price providing a
notification to users on the current state of supply and demand,
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which is reasonably solving the same problem of which
Appellant's claimed invention provides.
(Ans. 14--15.) We agree with the Examiner's findings.
As discussed previously, Appellants' Specification discloses the
problem of fixed pricing schemes for services when "demand for ...
services can vary dramatically" and "a user can access [ such services]
through a mobile computing device." (i-f 2.) As a solution, Appellants
propose "a system that dynamically adjusts prices for services based on real-
time conditions at a particular time." (i-f 9.)
Brown relates to "to an iterative real-time auction for resource
management" (i-f 1 ), in particular, "[ m ]anaging resource consumption,
particularly for balancing demand and supply" (i-f 18). In one embodiment,
as illustrated in Figure 2B of Brown,
if the price of electrical energy is at a baseline price of $X per
kWh, the thermostat will be set to 67 degrees, if the price is raised
to 1.5 times the baseline price, the thermostat will alert the user
that the price has been changed and the user will have the
opportunity to act upon this change, if the price perk Wh is raised
to twice the baseline price, the thermostat setting will be raised
to 70 degrees (i.e. less cooling energy required), and if the price
is raised further, the thermostat setting will be correspondingly
increased or the air conditioner will be turned off.
(i-f 28.) Accordingly, the iterative real-time auction of Brown, in which
pricing is based on balancing demand and supply, provides a solution to the
problem disclosed in Appellants' Specification of fixed pricing schemes.
Thus, Brown is reasonably pertinent to the particular problem dynamic
adjustment of prices, based on real-time conditions with which the inventor
is involved. See Bigio, 381 F.3d at 1325 (another test defining the scope of
analogous prior art is "if the reference is not within the field of the
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inventor's endeavor, whether the reference still is reasonably pertinent to the
particular problem with which the inventor is involved").
Appellants argue that "nothing in Brown suggests that its teachings
are reasonably pertinent to the particular problem faced by the inventor."
(App. Br. 36.) Similarly, Appellants argue that "[t]he Examiner has not
shown why one of ordinary skill would have looked to Brown's disclosure
regarding multiplier of a baseline energy price in considering the problems
addressed by the claimed invention." (Reply Br. 18.) However, other than
providing a conclusory statement that Brown is not reasonably pertinent to
the problem faced by the inventor, Appellants have not provided any
persuasive arguments as to why the Examiner's findings with respect to
Brown are improper.
Therefore, the Examiner has properly combined O'Sullivan, Kvamme,
and Brown to reject dependent claims 2, 9, and 16 under 35 U.S.C. § 103(a).
Moreover, Appellants' arguments (App. Br. 36) do not point out with
particularity or explain why the limitations of these dependent claims are
separately patentable. Instead, Appellants merely argue that "[a]s discussed
above, 0' Sullivan and Kvamme do not render the independent claims
obvious" and "Brown does not overcome the shortcomings of O'Sullivan
and Kvamme." (Id.) We are not persuaded by these arguments for the
reasons discussed with respect to claims 1, 8, and 15, from which claims 2,
9, and 16 depend. Accordingly, we sustain this rejection.
DECISION
The Examiner's decision rejecting claims 1-16 is affirmed.
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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).
AFFIRMED
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