Ford Global Technologies, LLC

Patent Trials and Appeals Board

Apr 15, 2020

14699291 - (D) (P.T.A.B. Apr. 15, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/699,291 04/29/2015 Yimin Liu 83519041 5826
28395 7590 04/15/2020
BROOKS KUSHMAN P.C./FGTL
1000 TOWN CENTER
22ND FLOOR
SOUTHFIELD, MI 48075-1238
EXAMINER
HAIDER, FAWAAD
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
04/15/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YIMIN LIU, PERRY ROBINSON MACNEILLE, and
JINJING YANG
Appeal 2019-004955
Application 14/699,291
Technology Center 3600
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
PHILLIP A. BENNETT, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant,1 Ford Global
Technologies, LLC, appeals from the Examiner’s decision rejecting
claims 1–5, 7–10, and 12–19, which are all claims pending in the
application. Appellant has canceled claims 6, 11, and 20. Final Act. 2. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Ford Global
Technologies, LLC. Appeal Br. 1.
Appeal 2019-004955
Application 14/699,291

2
STATEMENT OF THE CASE2
The claims are directed to systems and methods for renting a vehicle
as a joint-rental group via a ride-sharing server. See Abstract.
Claim 10, reproduced below, is representative of the subject matter on
appeal:
Exemplary Claim
10. A computer-implemented method comprising:
identifying a vehicle matching passenger characteristics of
first and second users having matching rental criteria;
sending a rent-share request including a confirmation
identifier to the first and second users to rent-share as a joint
rental group using the vehicle;
renting the vehicle to the joint-rental group when the rent-
share request is confirmed by receipt of the confirmation
identifier from the vehicle;
determining that a better-matched vehicle is now available
for the joint rental group that was unavailable when the vehicle
was rented; and
sending a vehicle update request to the users of the joint
rental group indicating that the better-matched vehicle is now
available.

2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
Oct. 24, 2018); Reply Brief (“Reply Br.,” filed June 5, 2019); Examiner’s
Answer (“Ans.,” mailed April 5, 2019); Final Office Action (“Final Act.,”
mailed July 11, 2018); and the original Specification (“Spec.,” filed
April 29, 2015).
Appeal 2019-004955
Application 14/699,291

3
Rejection on Appeal3
Claims 1–5, 7–10, and 12–19 stand rejected under 35 U.S.C. § 101 as
being directed to a judicial exception (i.e., a law of nature, a natural
phenomenon, or abstract idea) without significantly more. Final Act. 2.
ISSUE
Under the USPTO’s Revised Guidance, informed by our governing
case law concerning 35 U.S.C. § 101, is claim 10 patent-ineligible under
§ 101?
PRINCIPLES OF LAW
A. 35 U.S.C. § 101
An invention is patent-eligible if it is a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.4
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo

3 Examiner has withdrawn the rejection of various claims under 35 U.S.C.
§ 103. Ans. 3.
4 This threshold analysis of whether a claim is directed to one of the four
statutory categories of invention, i.e., a process, machine, manufacture, or
composition of matter, is referred to as “Step 1” in the USPTO’s patent-
eligibility analysis under § 101. MPEP § 2106.
Appeal 2019-004955
Application 14/699,291

4
and Alice. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014)
(citing Mayo, 566 U.S. at 75–77). In accordance with that framework, we
first determine what concept the claim is “directed to.” See Alice, 573 U.S.
at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk . . . .”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diehr, 450 U.S. at 191); “tanning,
dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores”
(id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1853)));
and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v.
Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held “[a] claim drawn to subject matter otherwise statutory
does not become nonstatutory simply because it uses a mathematical
formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We view
respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
Appeal 2019-004955
Application 14/699,291

5
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment.”
Id. (citation omitted) (citing Benson and Flook); see, e.g., id. at 187 (“It is
now commonplace that an application of a law of nature or mathematical
formula to a known structure or process may well be deserving of patent
protection.”).
Abstract ideas may include, but are not limited to, fundamental
economic practices, methods of organizing human activities, and
mathematical formulas or relationships. Alice, 573 U.S. at 217–21. Under
this guidance, we must therefore ensure at step one that we articulate what
the claims are directed to with enough specificity to ensure the step one
inquiry is meaningful. Id. at 217 (“[W]e tread carefully in construing this
exclusionary principle lest it swallow all of patent law.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘“inventive
concept”’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim
that recites an abstract idea must include ‘additional features’ to ensure ‘that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
Appeal 2019-004955
Application 14/699,291

6
B. USPTO Revised Guidance
The PTO published revised guidance in the Federal Register
concerning the application of § 101. See 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (hereinafter
“Revised Guidance”) (https://www.govinfo.gov/content/pkg/FR-2019-01-
07/pdf/2018-28282.pdf).
Under the Revised Guidance, we first look to whether the claim
recites:
(1) any judicial exceptions, including certain groupings
of abstract ideas (i.e., mathematical concepts, certain methods
of organizing human activity such as a fundamental economic
practice, or mental processes);5 and
(2) additional elements that integrate the judicial
exception into a practical application (see Manual for Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).6
See Revised Guidance 52–53.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial
exception that is not “well-understood, routine, conventional”
in the field (see MPEP § 2106.05(d)); or

5 Referred to as “Revised Step 2A, Prong 1” in the Revised Guidance
(hereinafter “Step 2A(i)”).
6 Referred to as “Revised Step 2A, Prong 2” in the Revised Guidance
(hereinafter “Step 2A(ii)”).
Appeal 2019-004955
Application 14/699,291

7
(4) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception.7
See Revised Guidance 56.
Step 2A(i) – Abstract Idea
Informed by our judicial precedent, the Revised Guidance extracts and
synthesizes key concepts identified by the courts as abstract ideas to explain
that the abstract idea exception includes the following groupings of subject
matter, when recited as such in a claim limitation:
(a) Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical calculations;
(b) Certain methods of organizing human activity —
fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts;
legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or
relationships or interactions between people (including social
activities, teaching, and following rules or instructions); and
(c) Mental processes—concepts performed in the human
mind (including an observation, evaluation, judgment, opinion).
Revised Guidance 52 (footnotes omitted).
Under the Revised Guidance, if the claim does not recite a judicial
exception (a law of nature, natural phenomenon, or subject matter within the
enumerated groupings of abstract ideas above), then the claim is patent-

7 Items (3) and (4) continue to be collectively referred to as “Step 2B” of the
Supreme Court’s two-step framework, described in Mayo and Alice.
Appeal 2019-004955
Application 14/699,291

8
eligible at Step 2A(i). This determination concludes the eligibility analysis,
except in situations identified in the Revised Guidance.8
However, if the claim recites a judicial exception (i.e., an abstract idea
enumerated above, a law of nature, or a natural phenomenon), the claim
requires further analysis for a practical application of the judicial exception
in Step 2A(ii).
Step 2A(ii) – Practical Application
If a claim recites a judicial exception in Step 2A(i), we determine
whether the recited judicial exception is integrated into a practical
application of that exception in Step 2A(ii) by: (a) identifying whether there
are any additional elements recited in the claim beyond the judicial
exception(s); and (b) evaluating those additional elements individually and
in combination to determine whether they integrate the exception into a
practical application.
The seven identified “practical application” sections of the MPEP,9
cited in the Revised Guidance under Step 2A(ii), are:

8 In the rare circumstance in which an examiner believes a claim limitation
that does not fall within the enumerated groupings of abstract ideas should
nonetheless be treated as reciting an abstract idea, the procedure described in
of the Guidance for analyzing the claim should be followed. See Revised
Guidance, Section III.C.
9 See MPEP §§ 2106.05(a)–(c), (e)–(h). Citations to the MPEP herein refer
to revision [R-08.2017]. Sections 2106.05(a), (b), (c), and (e) are indicative
of integration into a practical application, while §§ 2106.05(f), (g), and (h)
relate to limitations that are not indicative of integration into a practical
application.
Appeal 2019-004955
Application 14/699,291

9
(1) MPEP § 2106.05(a) Improvements to the Functioning of
a Computer or To Any Other Technology or Technical
Field
(2) MPEP § 2106.05(b) Particular Machine
(3) MPEP § 2106.05(c) Particular Transformation
(4) MPEP § 2106.05(e) Other Meaningful Limitations
(5) MPEP § 2106.05(f) Mere Instructions To Apply An
Exception
(6) MPEP § 2106.05(g) Insignificant Extra-Solution Activity
(7) MPEP § 2106.05(h) Field of Use and Technological
Environment
See Revised Guidance 55.
If the recited judicial exception is integrated into a practical
application as determined under one or more of the MPEP sections cited
above, then the claim is not directed to the judicial exception, and the patent-
eligibility inquiry ends. See Revised Guidance 54. If not, then analysis
proceeds to Step 2B.
Step 2B – “Inventive Concept” or “Significantly More”
Under our reviewing courts’ precedent, it is possible that a claim that
does not “integrate” a recited judicial exception under Step 2A(ii) is
nonetheless patent eligible. For example, the claim may recite additional
elements that render the claim patent eligible even though one or more claim
elements may recite a judicial exception.10 The Federal Circuit has held
claims eligible at the second step of the Alice/Mayo test (USPTO Step 2B)
because the additional elements recited in the claims provided “significantly
more” than the recited judicial exception (e.g., because the additional

10 See, e.g., Diehr, 450 U.S. at 187.
Appeal 2019-004955
Application 14/699,291

10
elements were unconventional in combination).11 Therefore, if a claim has
been determined to be directed to a judicial exception under Revised Step
2A, we must also evaluate the additional elements individually and in
combination under Step 2B to determine whether they provide an inventive
concept (i.e., whether the additional elements amount to significantly more
than the exception itself).12
Under the Revised Guidance, we must consider in Step 2B whether an
additional element or combination of elements: (1) “Adds a specific
limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present;” or (2) “simply appends well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present.” See Revised Guidance,
Section III.B.13

11 See, e.g., Amdocs, Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1300,
1304 (Fed. Cir. 2016); BASCOM Global Internet Services, Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1349–52 (Fed. Cir. 2016); DDR Holdings v.
Hotels.com, L.P., 773 F.3d 1245, 1257–59 (Fed. Cir. 2014).
12 The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325
(Fed. Cir. 2016). In particular, “[t]he question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact.” Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
13 In accordance with existing Step 2B guidance, an Examiner’s finding that
an additional element (or combination of elements) is well understood,
routine, conventional activity must be supported with at least one of the four
specific types of evidence required by the USPTO Berkheimer
Memorandum, as shown above. For more information concerning evaluation
Appeal 2019-004955
Application 14/699,291

11
In the Step 2B analysis, an additional element (or combination of
elements) is not well-understood, routine or conventional unless the
examiner finds an evidentiary basis, and expressly supports a rejection in
writing with, one or more of the following:
1. A citation to an express statement in the
specification or to a statement made by an applicant during
prosecution that demonstrates the well-understood, routine,
conventional nature of the additional element(s). . . .
2. A citation to one or more of the court decisions
discussed in MPEP § 2106.05(d)(II) as noting the well-
understood, routine, conventional nature of the additional
element(s).
3. A citation to a publication that demonstrates the
well-understood, routine, conventional nature of the additional
element(s). . . .
4. A statement that the examiner is taking official
notice of the well-understood, routine, conventional nature of
the additional element(s). . . .
See Berkheimer Memo 3–4.
If the Examiner or the Board determines under Step 2B that the
element (or combination of elements) amounts to significantly more than the
exception itself, the claim is eligible, thereby concluding the eligibility
analysis.

of well-understood, routine, conventional activity, see MPEP § 2106.05(d),
as modified by the USPTO Berkheimer Memorandum (USPTO
Commissioner for Patents Memorandum dated Apr. 19, 2018, “Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)” (hereinafter
“Berkheimer Memo”).
Appeal 2019-004955
Application 14/699,291

12
However, if a determination is made that the element and combination
of elements do not amount to significantly more than the exception itself, the
claim is ineligible under Step 2B, and the claim should be rejected for lack of
subject matter eligibility.
ANALYSIS
Step 1 – Statutory Category
Claim 10, as a method (process) claim, recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. Therefore, the issue
before us is whether it is directed to a judicial exception without
significantly more.
Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined that the claims are directed to “the abstract
idea of ride-sharing joint rental groups, a fundamental economic practice or
method of organizing human activities, which is considered an abstract
idea.” Final Act. 2.
We conclude claim 10 does not recite the judicial exceptions of either
natural phenomena or laws of nature. We evaluate, de novo, whether
claim 10 recites an abstract idea based upon the Revised Guidance.
First, we look to the Specification to provide context as to what the
claimed invention is directed to. In this case, the Specification discloses that
the invention relates to “a multi-modal transportation system allowing for
trip planning, bidding, displaying, and trip reservation, including joint-rental
groups.” Spec. ¶ 1.
Appeal 2019-004955
Application 14/699,291

13
Appellant’s Abstract describes the invention as follows:
A ride-sharing server may receive, from a user, a vehicle-rental
request including trip characteristics specifying an origin
location, a destination location, and time constraints; identify
another user having rental criteria matching that of the vehicle-
rental request; send a rent-share request to the user and the
other user to rent-share as a joint-rental group; and rent a
vehicle to the joint-rental group when the rent-share request is
confirmed. A mobile device of a ride-sharing user may send, to
a rent-sharing server, a vehicle-rental request including trip
characteristics specifying an origin location, a destination
location, and time constraints; receive, from the rent-sharing
server, a rent-share request to rent-share a vehicle as a joint-
rental group including another user having rental criteria
matching that of the vehicle-rental request; and responsive to
the rent-share request, rent the vehicle as the joint-rental group.
Spec. 37 (Abstract).
Appellant cites to a May 4, 2016 Memorandum released by the PTO
as guidance, Federal Circuit cases, and makes various arguments against the
Examiner’s determination the claims are directed to an abstract idea. Appeal
Br. 7. In the Appeal Brief, Appellant argues they are “unaware of any
precedential opinions that describe an abstract idea with such identical detail
to that of the recitations of claim 1.” Appeal Br. 7. Appellant argues
BuySafe, Bilski, and Alice, cited by the Examiner (Final Act. 4–5) all relate
to fundamental economic practices, but the claims do not. Appeal Br. 7.
In view of the Revised Guidance, we find claim 10 recites a certain
method of organizing human activity in the form of a commercial
interaction, i.e., renting vehicles, or ride-sharing. Ans. 4.
Appeal 2019-004955
Application 14/699,291

14
Representative Claim 10
In TABLE 1 below, we identify in italics the specific claim
limitations in claim 10 that we conclude recite an abstract idea. :
TABLE 1
Independent Claim 10 Revised Guidance
A computer-
implemented method
comprising:
A process (method) is a statutory subject
matter class. See 35 U.S.C. § 101.
[L1] identifying a
vehicle matching
passenger
characteristics of
first and second
users having
matching rental
criteria;
identifying a vehicle that matches passengers
with matching rental criteria is an abstract
idea, i.e., a certain method of organizing
human activity in the form of a commercial
interaction or, alternatively, it can be
considered an abstract idea in the form of an
observation, evaluation, judgment, opinion”
which could be performed as a mental
process. See Revised Guidance 52.
[L2] sending a rent-
share request including a
confirmation identifier to
the first and second users
to rent-share as a joint
rental group using the
vehicle
Sending a ride-share request is an abstract
idea, i.e., a commercial interaction. Revised
Guidance 52.
[L3] renting the vehicle
to the joint-rental group
when the rent-share
request is confirmed by
receipt of the
confirmation identifier
from the vehicle;
Renting the vehicle upon confirmation is an
abstract idea, i.e., a commercial interaction.
Revised Guidance 52.
[L4] determining that a
better-matched vehicle is
now available for the
Although we conclude determining that a
better-matched vehicle is now available
when it was not available earlier is an
Appeal 2019-004955
Application 14/699,291

15
Independent Claim 10 Revised Guidance
joint rental group that
was unavailable when
the vehicle was rented;
abstract idea, we further conclude this step
represents integration of the abstract idea
into a practical application, as discussed
below with respect to Step 2(ii), below.
[L5] sending a vehicle
update request to the
users of the joint rental
group indicating that the
better-matched vehicle is
now available.
We conclude sending a vehicle update
request indicating that a better-matched
vehicle is now available is a practical
application of the abstract idea.
For the reasons provided in TABLE 1, above, we identify limitations
[L1] – [L3] as representing various abstract ideas of commercial interaction
in renting a vehicle.14
Thus, under Step 2A(i), we agree with the Examiner that claim 10’s
computer-implemented method recites a judicial exception. We conclude
claim 10, under our Revised Guidance, recites a judicial exception of renting
vehicles, i.e., a commercial interaction, and thus is an abstract idea.

14 Our reviewing court recognizes that “[a]n abstract idea can generally be
described at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in this case does
not, “impact the patentability analysis.” Id. at 1241. Further, “[t]he Board’s
slight revision of its abstract idea analysis does not impact the patentability
analysis.” Id. Moreover, merely combining several abstract ideas does not
render the combination any less abstract. RecogniCorp, LLC v. Nintendo
Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea (math)
to another abstract idea . . . does not render the claim non-abstract.”); see
also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed.
Cir. 2016) (determining the pending claims were directed to a combination
of abstract ideas).
Appeal 2019-004955
Application 14/699,291

16
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
If the claims are directed to a judicial exception, as we conclude
above, we proceed to the “practical application” Step 2A(ii) in which we
determine whether the recited judicial exception is integrated into a practical
application of that exception by: (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception(s); and
(b) evaluating those additional elements individually and in combination to
determine whether they integrate the exception into a practical application.
Appellant argues “While the Final Office Action states that ‘[c]laims
1–5, 7–10, and 12–19 disclose a generic computer performing generic
computing functions to implement the abstract idea,’ no analysis is provided
of the combination of elements of the claims.” Appeal Br. 8.
“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 Tex., LLC v. DIRECTTV, 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)); see also Enfish, 822 F.3d at 1335.
In addition to the abstract limitations identified above, we conclude
limitations [L4] (“determining that a better-matched vehicle is now available
for the joint rental group that was unavailable when the vehicle was
rented”); [L5] (“sending a vehicle update request to the users of the joint
rental group indicating that the better-matched vehicle is now available”)
integrate the abstract idea of vehicle rental into a practical application of that
abstract idea. Appellant’s Specification describes the ride-sharing server
Appeal 2019-004955
Application 14/699,291

17
determining whether there is a change in the composition of the rental group
and changing the needs for the size and other characteristics of the vehicle
accordingly. Spec. ¶¶104–106. If a better matched vehicle is available, a
vehicle update request is sent to the rental group. Spec. ¶¶106-107. Under
the Revised Guidance, we conclude this is a practical application of the
abstract idea of vehicle rental and/or ride sharing.
While we determine that Appellant’s claims recite an abstract idea, we
are persuaded by Appellant’s arguments that the claims integrate the abstract
idea into a practical application. In our view, the claim as a whole reflects a
practical application that is an improvement to existing vehicle rental
systems. We find sufficient evidence in the record before us that the
claimed subject matter reflects a specific asserted improvement in
technology over that which was practiced in the art and for that reason we
determine that independent claim 10, and the claims depending therefrom,
are not directed to an abstract idea.15 See, e.g., MPEP § 2106.05(a)
(Improvements to the Functioning of a Computer or To Any Other
Technology or Technical Field). Accordingly, in consideration of the
Revised Guidance, we determine there is an integration of the abstract idea
into a practical application.
Accordingly, we conclude the abstract idea is integrated into a
practical application, and thus the claim is not directed to the judicial
exception. Even though the analysis may stop here, we continue to Step 2B
for a second and alternative reason to not sustain the Examiner’s rejection of
representative claim 10.

15 We make similar findings and conclusions for independent claims 1
and 15, and claims depending therefrom.
Appeal 2019-004955
Application 14/699,291

18
Alternative Grounds of Reversal: Step 2B – “Inventive Concept”
or “Significantly More”
If the claims are directed to a judicial exception, and assuming the
abstract idea or ideas are not integrated into a practical application, we
proceed to the “inventive concept” step. For Step 2B we must “look with
more specificity at what the claim elements add, in order to determine
‘whether they identify an “inventive concept” in the application of the
ineligible subject matter’ to which the claim is directed.” Affinity Labs, 838
F.3d at 1258.
In applying step two of the Alice analysis, our reviewing court guides
we must “determine whether the claims do significantly more than simply
describe [the] abstract method” and thus transform the abstract idea into
patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed. Cir. 2014). We look to see whether there are any “additional
features” in the claims that constitute an “inventive concept,” thereby
rendering the claims eligible for patenting even if they are directed to an
abstract idea. Alice, 573 U.S. at 221. Those “additional features” must be
more than “well-understood, routine, conventional activity.” Mayo, 566
U.S. at 79.
Limitations referenced in Alice that are not enough to qualify as
“significantly more” when recited in a claim with an abstract idea include, as
non-limiting or non-exclusive examples: adding the words “apply it” (or an
equivalent) with an abstract idea16; mere instructions to implement an

16 Alice, 573 U.S. at 221–23.
Appeal 2019-004955
Application 14/699,291

19
abstract idea on a computer17; or requiring no more than a generic computer
to perform generic computer functions that are well-understood, routine and
conventional activities previously known to the industry.18
The patent-eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, 811 F.3d at 1325. In particular, “[t]he question of whether a
claim element or combination of elements is well-understood, routine and
conventional to a skilled artisan in the relevant field is a question of fact.”
Berkheimer, 881 F.3d at 1368. See Berkheimer Memo.
In particular, the Berkheimer Memo points out that a combination of
elements is found to be well-understood, conventional, or routine, only if an
examiner expressly finds 1) a citation to an express statement in the
specification, 2) a citation to a court decision noting the well-understood,
routine, conventional nature of the combination of elements, 3) a citation to
a publication that demonstrates the well-understood, routine, conventional
nature of the combination of elements, or 4) a statement of official notice of
the well-understood, routine, conventional nature of the combination. Id. at
pp. 3–4.
Appellant argues the Examiner failed to provide sufficient evidence
showing the routine, conventional, or well-understood nature of the claim
limitations as a whole. Appeal Br. 8. Appellant specifically argues “[a]s no
factual support is provided for the assertion that the claims recite only

17 Alice, 573 U.S. at 222–23, e.g., simply implementing a mathematical
principle on a physical machine, namely a computer.
18 Alice, 573 U.S. at 225 (explaining using a computer to obtain data, adjust
account balances, and issue automated instructions involves computer
functions that are well-understood, routine, conventional activities).
Appeal 2019-004955
Application 14/699,291

20
conventional or generic technology, the rejection should be withdrawn.” Id;
Reply Br. 3.
We agree with Appellant that the Examiner erred by not making at
least one of the four types of factual findings required by Berkheimer. Final
Act. 2–8; Ans. 3–7.
Accordingly, on the record before us, for essentially the reasons
articulated by Appellant, we alternatively do not sustain the Examiner's
rejection of representative claim 10 under 35 U.S.C. § 101, and dependent
claims 12–14, which stand therewith. Similarly, we do not sustain the § 101
rejection of independent claims 1 and 15 and dependent claims 2–5, 7–9,
and 15–19 depending therefrom, and which are of commensurate scope.
CONCLUSION
Under our Revised Guidance, governed by relevant case law,
claims 1–5, 7–10, and 12–19 are patent-eligible under 35 U.S.C. § 101, and
we do not sustain the rejection.
DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Basis /
References Affirmed Reversed
1–5, 7–10,
12–19 101
Subject Matter
Eligibility
1–5, 7–10,
12–19
REVERSED