Ex Parte Sweeney et al

Patent Trial and Appeal Board

Sep 21, 2018

14566148 (P.T.A.B. Sep. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/566,148 12/10/2014 Matthew Sweeney
110654 7590 09/25/2018
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-027-2 3363
EXAMINER
EPSTEIN, BRIAN M
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
09/25/2018 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 MATTHEW SWEENEY, AMOS BARRETO, SOPHIA CUI,
and LASZLO KORSOS
Appeal2017-001779 1
Application 14/566,1482
Technology Center 3600
Before TARA L. HUTCHINGS, AMEE A. SHAH, and
MATTHEWS. MEYERS, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-5 and 7-22. We have jurisdiction under 35 U.S.C.
§ 6(b ).
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed July
11, 2016), Reply Brief ("Reply Br.," filed Nov. 14, 2016), Specification
("Spec.," filed Dec. 10, 2014), and the Examiner's Answer ("Ans.," mailed
Sept. 12, 2016) and Final Office Action ("Final Act.," mailed Nov. 18,
2015).
2 Appellants identify Uber Technologies, Inc. as the real party in interest.
App. Br. 3.
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Application 14/566,148
We AFFIRM.
CLAIMED INVENTION
Appellants' claimed invention relates to "[o]n-demand services[] that
arrange for transport to be provided for a user by a driver of a vehicle," such
as providing a user with a first available driver or a closest driver to the
user's requested pickup location. Spec. ,r 2.
Claims 1, 19, and 2 0 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notation added, is illustrative of the
claimed subject matter:
1. A method for operating a transport arrangement
service, the method being performed by one or more processors
and comprising:
[(a)] communicating driver information from each of a
plurality of computing devices that are operated by a
corresponding driver of a plurality of drivers, the driver
information (i) being communicated from each computing
device through execution of a corresponding service application
and (ii) including a position of the computing device as
determined by a geoaware resource of the computing device;
[ (b)] monitoring a group of drivers in the plurality of
drivers which are located in a given area, including repeatedly
communicating with the computing device of each driver in the
group to receive the driver information and to determine, in real-
time, the position and a service state of that driver, the service
state of each driver of the group being determined from the driver
information and corresponding to one of (i) an open state,
indicating the driver is active and unassigned to any transport
request, (ii) an occupied state, indicating the driver is assigned to
a corresponding transport request, and (iii) a tentative assignment
state, indicating the driver is assigned to a corresponding
transport request, subject to a predefined condition which allows
for the transport arrangement service to reassign the driver prior
to the driver arriving to a pickup location of the transport request;
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[ ( c)] processing multiple transport requests in a given
interval of time, each of the multiple transport requests
specifying a corresponding pickup location that is within a
geographic region of the given area;
[( d)] during the given interval when each of the multiple
transport request are open, (i) determining, from the group of
drivers, a pool of candidate drivers within the geographic region
that can fulfill one or more of the multiple transport requests
within a threshold duration of time, the pool of candidate drivers
including one or more drivers that are determined to have the
open state and one more drivers that are determined to have the
tentative assignment state; and (ii) selecting, from the pool of
candidate drivers, a driver for each of the multiple transport
requests, wherein selecting the driver includes implementing an
optimization process to minimize an estimated time to pick up
for at least two of the multiple transport requests collectively;
and
[ ( e)] directing individual drivers of the group to fulfill the
respective transport request for which the driver was selected.
REJECTION
Claims 1-5 and 7-22 are rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter.
ANALYSIS
Non-Statutory Subject Matter
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. See, e.g., Alice Corp. Pty Ltd. v. CLS
Banklnt'l, 134 S. Ct. 2347, 2354 (2014).
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The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus Labs.,
Inc., 132 S. Ct. 1289, 1300 (2012), "for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of these concepts." Alice Corp., 134 S. Ct.
at 2355. The first step in that analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts," id., e.g., to an
abstract idea. If the claims are not directed to a patent-ineligible concept, the
inquiry ends. Otherwise, the inquiry proceeds to the second step where the
elements of the claims are considered "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, 132 S. Ct. at 1297).
The Court acknowledged in Mayo, that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 132 S. Ct. at 1293. We, therefore, look to whether
the claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery.
See Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
In this regard, the Federal Circuit has instructed that claims are to be
considered in their entirety to determine "whether their character as a whole
is directed to excluded subject matter." McRO, Inc. v. Bandai Namco
Games America, Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016) (quoting
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed.
Cir. 2015)).
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The Examiner finds here that independent claims 1, 19, and 20 are
directed to the concept of taxi dispatching reflected by performing steps of
"monitoring," "processing," "determining," and "directing." Final Act. 3, 5.
The Examiner concludes that the claims are directed to concepts relating to
interpersonal and intrapersonal activities, similar to other concepts that have
been held by the courts to be abstract. Id. at 5---6 (citations omitted).
Attempting to draw an analogy to the claims in Enfish, Appellants
argue that the Examiner overgeneralizes the claims as being directed to "taxi
dispatching." App. Br. 10; see also Reply Br. 7 (asserting that the Examiner
erred in determining that the claims do not include an improvement to
computer functionality analogous to the claims in Enfzsh ). Appellants argue
that the Examiner failed to consider the claims as a whole by omitting steps
entirely, such as communicating and selecting, and by ignoring large
portions of other steps, such as monitoring. Id. at 11. Appellants also argue
that the "issues confronted by the inventors are specific to a computerized
and networked on-demand service dispatch system" (id. at 15), that the
solution "requires specialized information programmatically determined"
(id.), and that the claimed invention "is not merely a traditional business
method being performed on generic hardware."
However, the relevant inquiry at step one is whether the claims are
directed to an improvement to computer functionality versus an abstract
idea, such as "economic or other tasks for which a computer is used in its
ordinary capacity." Enfish, 822 at 1336. In this case, the claims and
Specification make clear that the claims focus on an abstract idea, and not on
any improvement to computer functionality itself.
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For example, the Specification is titled "SYSTEM AND METHOD
FOR OPTIMIZING SELECTION OF DRIVERS FOR TRANSPORT
REQUESTS." The Background section of the Specification describes that
known on-demand services arrange for transport to be provided for a user by
a driver of a vehicle. Spec. ,r 2. Appellants' invention, however, "provide[s]
for an intelligent on-demand service dispatch system that optimizes the
selection of a service provider for a user requesting an on-demand service."
Id. ,r 14. The invention optimizes the selection of drivers to minimize the
time to pickup the user. Id. ,r 21.
Claim 1 provides a method for operating a transport arrangement
service by performing a series of steps including: (a) "communicating driver
information for each of a plurality of computing devices that are operated by
a corresponding driver," (b) "monitoring a group of drivers ... to receive the
driver information and to determine ... the service state of each driver,"
( c) "processing multiple transport requests," ( d)(i) "determining a pool of
candidate drivers within the geographic region that can fulfill one or more
multiple transport requests," ( d)(ii) "selecting ... a driver for each of the
multiple transport requests," and ( e) "directing individual drivers of the
group to fulfill the respective transport request." Claims 19 and 20 are
computer system and computer-readable medium claims, respectively, and
recite language similar to claim 1.
Claims 1, 19, and 20, considered as a whole and in light of the
Specification, focus on improving driver dispatch3 by performing the steps
3 Our characterization of the claimed subject matter differs slightly from
that of the Examiner. But an astract idea can be described in different ways
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of "communicating driver information," "monitoring a group of drivers,"
"processing multiple transport requests," "determining, from the group of
drivers, a pool of candidate drivers" "selecting, from the pool of candidate
drivers, a driver," and "directing individual drivers of the group to fulfill the
respective transport request." Put differently, claims 1, 19, and 20 recite
communicating and processing information (e.g., claim 1, steps (a}-(d)(i)) to
select a driver (claim 1, step (d)(ii)) for each transport request, and
communicating the results to the selected driver( s) as a directive to fulfill the
transport request for which the driver was selected ( claim 1, step ( e) ). This
concept is similar to claims found to be abstract ideas by our reviewing
courts. For example, in CyberSource Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1372-73 (Fed. Cir. 2011) the Federal Circuit held that a claim
whose "steps can be performed in the human mind, or by a human using a
pen and paper" is directed to an "unpatentable mental process[]." Similarly,
in Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed.
Cir. 2016), the court held that collecting information and "analyzing
information by steps people go through in their minds, or by mathematical
algorithms, without more, [are] essentially mental processes within the
abstract-idea category." And in Accenture Global Servs., GmbH v.
Guidewire Software, Inc., 728 F.3d 1336, 1344 (Fed. Cir. 2013), the court
held that "[ t ]he abstract idea at the heart of system claim 1 ... is 'generating
tasks [based on] rules ... to be completed upon the occurrence of an event."'
We find no specific asserted improvement in computer capabilities
analogous to Enfzsh 's self-referential table for a computer database. Nor do
and at different levels of abstraction. See Apple, Inc. v. Ameranth, Inc., 842
F.3d 1229, 1240-41 (Fed. Cir. 2016).
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we find any comparable aspect in the present claims that represents "an
improvement to computer functionality."
Appellants argue that the claims are analogous to the claims at issue in
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir.
2014). App. Br. 13. We disagree. In DDR Holdings, the Federal Circuit
determined that the claims addressed the problem of retaining website
visitors who, if adhering to the routine, conventional functioning of Internet
hyperlink protocol, would be transported instantly away from a host's
website after clicking on an advertisement and activating a hyperlink. DDR
Holdings, 773 F.3d at 1257. The Federal Circuit held that the claims were
directed to statutory subject matter because they claim a solution
"necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks." Id. Here the claims
involve communicating information from computing device, and monitoring
a group of drivers. But there is no indication that the claimed solution is
necessarily rooted in technology to overcome a problem specifically arising
in the realm of computer networks, analogous to the situation in DDR
Holdings. Instead, the claims require the routine or conventional use of
known technology to implement an improvement to a process for operating a
transport arrangement service. See, e.g., Spec. ,r,r 135-143, Figs. 7, 8
( describing and depicting generic computing devices to perform the claimed
fucntions ).
Appellants argue that the Examiner has not shown that "specialized
parameters such as the claimed 'service state' existed in the prior art-
indeed, no prior art is cited against the pending claims." App. Br. 14. Yet,
the Federal Circuit has held that claims are directed to an abstract idea where
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"[ t ]he advance they purport to make is a process of gathering and analyzing
information of a specified content, then displaying the results, and not any
particular assertedly inventive technology for performing those functions."
Elec. Power Grp., 830 F.3d at 1354. Here, gathering and analyzing
information of a specified content, such as a service state, or from a
particular source, such as a computing device operated by a driver, does not
remove the claims from the realm of the abstract. See SAP America, Inc. v.
Investpic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) ("even if a process of
collecting and analyzing information is 'limited to particular content' or a
particular 'source,' that limitation does not make the collection and analysis
other than abstract") ( citation omitted).
Appellants argue that "the claimed invention necessarily requires the
use of, for example, a plurality of computing devices that includes at least a
geo-aware resource and communicates repeatedly with the dispatch system
such that the system is able to determine, in real-time, the position and
service state of each service provider." App. Br. 15. Yet, limiting the use of
the abstract idea to a particular technological environment ( e.g., a plurality
of computing devices including a geo-aware resource that communicate with
a dispatch system) is insufficient to transform an otherwise patent-ineligible
abstract idea into patent-eligible subject matter. See Alice, 134 S. Ct.
at 2358; see also Elec. Power Grp., 830 F.3d at 1355 ("the claims'
invocation of computers, networks, and displays does not transform the
claimed subject matter into patent-eligible applications").
Appellants argue that the invention cannot be performed entirely by
the human mind or with pen or paper, further indicating that the claims are
rooted in computer technology. App. Br. 16 (identifying recitations related
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to use of "real-time" information, as well as communications with a
computing device associated with the driver). Here, even though the claims
recite the use of computing devices and require determining in "real-time,"
the underlying steps recited in claims 1, 19, and 20 (e.g., communicating,
monitoring, processing, etc.) are all acts that could be performed by a
human. "That purely mental processes can be unpatentable, even when
performed by a computer, was precisely the holding of the Supreme Court in
Gottschalkv. Benson[, 409 U.S. 63, 67 (1972)]." CyberSource, 654 F.3d at
1375.
Appellants argues that the Examiner erred in determining that the
claims do not require "significantly more" than the abstract idea, because the
Examiner does not apply any prior art reference against the pending claims.
App. Br. 18. But it is not enough for subject-matter eligibility that the
claimed techniques be novel and non-obvious in light of prior art. SAP
America, Inc. v. Investpic LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018); see
also Mayo, 566 U.S. at 90. Much like the claims at issue in SAP, the claims
here are ineligible because their innovation is in ineligible subject matter.
Id. ("No matter how much of an advance in the finance field the claims
recite, the advance lies entirely in the realm of abstract ideas, with no
plausibly alleged innovation in the non-abstract application realm."); see
also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed.
Cir. 2016) ("a claim for a new abstract idea is still an abstract idea. The
search for a § 101 inventive concept is thus distinct from demonstrating
§ 102 novelty"). Appellants have not identified, and we do not find, any
plausible alleged innovation in the non-abstract realm.
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Appellants also contend that the Examiner fails to consider whether
the combination of additional elements amount to significantly more than
the abstract idea. App. Br. 18-19. Yet, the Examiner determines that "none
of the steps/functions taken in combination amount to significantly more
than the abstract idea." Ans. 6. The Examiner determines that none of the
claim limitations, considered individually and as a combination, improve
another technology or technical field, or the functioning of a computer. Id.
Appellants further argue that the Office Action fails to properly
analyze the dependent claims under the Alice/ Mayo two-step framework.
App. Br. 19-20. Yet, the Examiner indicates that the analysis does not
change for the dependent claims. See Ans. 7. Here, the dependent claims
further specify the improved process for driver dispatching. But these
additional limitations relate to the abstract idea of driver dispatching and, as
such, do not amount to significantly more to the abstract idea, whether they
are considered individually or as an ordered combination.
In the Reply Brief, Appellants additionally attempt to analogize the
pending claims to the claims in McRO. See Reply Br. 4--7. In particular,
Appellants assert that, like the claims in McRO, the claims do not preempt
all method of "taxi dispatching." Id. at 5---6. Additionally, Appellants
contend that, like the claims in McRO, the claimed method improves
underlying technology for a networked transport arrangement service. Id.
at 6.
However, McRO does not stand for the proposition that a lack of
preemption renders the claims patent-eligible. There is no dispute that the
Supreme Court has described "the concern that drives [the exclusion of
abstract ideas from patent eligible subject matter] as one of pre-emption."
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Alice Corp., 134 S. Ct. at 2354. But characterizing pre-emption as a driving
concern for patent eligibility is not the same as characterizing pre-emption as
the sole test for patent eligibility. "The Supreme Court has made clear that
the principle of preemption is the basis for the judicial exceptions to
patentability" and "[ fJor this reason, questions on preemption are inherent in
and resolved by the § 101 analysis." Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2354).
"[P]reemption may signal patent ineligible subject matter, [but] the absence
of complete preemption does not demonstrate patent eligibility." Id.
We disagree that the claims are comparable to those in McRO. In
McRO, the Federal Circuit concluded that the claim, when considered as a
whole, was directed to a. "technological improvement over the existing,
manual 3-D animation techniques" through the "uses the limited rules in a
process specifically designed to achieve an improved technological result in
conventional industry practice." McRO, 837 F.3d at 1316. Specifically, the
Federal Circuit found that the claimed rules allow computers to produce
accurate and realistic lip synchronization and facial expressions in animated
characters that previously could only be produced by human animators; and
the rules are limiting because they define morph weight sets as a function of
phoneme sub-sequences. Id. at 1313 ( citations omitted). In contrast, here,
we do not find, and Appellants have not identified, any analogous improved
technological result. We see no parallel between the limiting rules described
in McRO and the results-based rules recited in Appellants' claims.
In the Reply brief, Appellants additionally argue that the claims are
similar to those in Bascom Global Internet Services, Inc. v. AT&T Mobility
LLC, 827 F.3d 1341 (Fed. Cir. 2016) because "they too recite a 'specific
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discrete implementation"' that "requires the performance of an ordered
combination of discrete and specific steps." Reply Br. 10. Yet, in Bascom,
the court determined that claims described an inventive concept in the
nonconventional and non-generic arrangement of known, conventional
pieces. Bascom, 827 F.3d at 1350. Specifically, the Federal Circuit
determined that the claimed installation of a filtering tool at a specific
location, remote from the end-users, with customizable filtering features
specific to each end user provided an inventive concept in that it gave the
filtering tool both the benefits of a filter on a local computer and the benefits
of a filter on the ISP server. Id. In contrast, as described above, no
technological improvement is apparent in the claimed invention, whether the
elements are considered as a combination or individually.
We are not persuaded that the Examiner erred in rejecting claims 1-5
and 7-22 under 35 U.S.C. § 101. Therefore, we sustain the Examiner's
rejection.
DECISION
The Examiner's rejection of claims 1-5 and 7-22 under 35 U.S.C.
§ 101 is affirmed.
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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