Lambert, Chris et al.

Patent Trials and Appeals Board

Jan 7, 2020

13828952 - (D) (P.T.A.B. Jan. 7, 2020)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/828,952 03/14/2013 Chris Lambert
149525 7590 01/15/2020
Keller Jolley Preece/ Lyft
1010 North 500 East
Suite 210
North Salt Lake, UT 84054
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.
20077.102 1577
EXAMINER
NELSON, FREDA ANN
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
01/15/2020 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@kjpip.com
gjolley@kjpip.com
ljohnson@kjpip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRIS LAMBERT, CHRISTOPHER SHOLLEY, and
GRAYSON McCLURE BADGLEY
Appeal2019-002674
Application 13/828,952
Technology Center 3600
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal 1,2 under 35 U.S.C. § 134(a) involving claims to a
system for dispatching a driver. The Examiner rejected the claims as
reciting non-statutory subject matter. We have jurisdiction under 35 U.S.C.
§ 6(b ). We affirm but designate our affirmance as a New Ground of
Rejection.
1 We use the word "Appellant" to refer to "applicant" as defined in
37 C.F.R. § 1.42. Appellant identifies the Real Party in Interest as Lyft, Inc.
(see Appeal Br. 2).
2 We have considered and herein refer to the Specification of Mar. 14, 2013
("Spec."); Non-Final Office Action of Mar. 22, 2018 ("Non-Final Act.");
Appeal Brief of Aug. 21, 2018 ("Appeal Br."); Examiner's Answer of Dec.
27, 2018 ("Ans."); and Reply Brief of Feb. 14, 2019 ("Reply Br.").
Appeal2019-002674
Application 13/828,952
Statement of the Case
Background
The invention is drawn to a "system for dispatching a driver" (Spec.
,r 17). The Specification explains that
when a potential rider places a ride request to a system for
connecting a driver and a rider, the system selects a driver and
delivers the ride request to the selected driver. The driver either
accepts the ride request and begins driving to meet the rider; or
ignores the ride request. If the driver ignores the ride request, a
next driver is selected, and the process is repeated until a driver
accepts the request or there are no more drivers to deliver the
request to.
(id. ,r 18). The Specification teaches "ordering of drivers to deliver the
request to in order to maximize system efficiency, i.e., to maximize the total
fraction of drivers carrying passengers over the course of a day" (id.).
The Claims
Claims 1-8, 11-14, and 20-24 are on appeal. Independent claim 1 is
representative and reads as follows:
1. A system, comprising:
at least one server computer comprising at least one non-
transitory computer readable storage medium storing
instructions that, when executed by the at least one server
computer, cause the system to:
receive, from a computing device of an available driver, a
location of the computing device of the available driver; and
position the computing device of the available driver by:
determining, for the available driver, a first
expected ride request wait time for a first region of a
geographical area and a second expected ride request
wait time for a second region of the geographical area;
identifying a first driving path from the location of
the computing device to the first region and a second
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driving path from the location of the computing device to
the second region;
determining a first system inefficiency score for
the computing device of the available driver based at
least in part on the first expected ride request wait time
for the first region and a first estimated driving time for
the available driver to travel along the first driving path
to the first region;
determining a second system inefficiency score for
the computing device of the available driver based at
least in part on the second expected ride request wait
time for the second region and a second estimated driving
time for the available driver to travel along the second
driving path to the second region;
selecting a driving path for the available driver
based at least on the lesser of the first system inefficiency
score and the second system inefficiency score; and
sending the driving path to the computing device
of the available driver such that a system inefficiency
score of a plurality of computing devices of a plurality of
drivers is minimized upon the available driver following
the driving path.
The Re} ection
The Examiner rejected claims 1-8, 11-14, and 20-24 under 35 U.S.C.
§ 101 as directed to an abstract idea (Non-Final Act. 10-12).
The Examiner finds "the claims are directed to the abstract idea of
'determining an available driver based on a minimized system inefficiency'"
(Ans. 4). The Examiner finds this abstract idea "is analogous to human
mental work" (id.).
Appellant contends "the claims here are not directed to an abstract
idea, but concrete limitations that improve on-demand transportation
matching systems" (Appeal Br. 10).
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Because we rely on new evidentiary references not cited by the
Examiner, we will designate the rejection as a new ground of rejection in
order to provide Appellant a fair opportunity to address these teachings and
new position.
Principles of Law
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the 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. See, e.g., Alice Corp. v. CLS Bank Int'!, 573 U.S.
208,216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.").
Concepts determined to be abstract ideas, and therefore 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) and mental processes (Gottschalkv. Benson, 409 U.S. 63, 67
(1972)). Concepts determined to be patent eligible include physical and
chemical processes, such as "molding rubber products" (Diamond v. Diehr,
450 U.S. 175, 191 (1981)) or software "purporting to improve the
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functioning of the computer itself' (Enfish, LLC v. Microsoft Corp., 822
F.3d 1327, 1335 (Fed. Cir. 2016)).
If the claim is "directed to" an abstract idea, we tum 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 ( quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. (alteration 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.
The United States Patent and Trademark Office published revised
guidance on the application of 35 U.S.C. § 101. USPTO's 2019 Revised
Patent Subject Matter Eligibility Guidance ("Revised Guidance"). 3 Under
the Guidance, in determining what concept the claim is "directed to," 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) (Guidance Step 2A, Prong 1);
and
(2) additional elements that integrate the judicial
exception into a practical application (see MPEP
§§ 2106.05(a}-(c), (e}-(h)) (Guidance Step 2A, Prong 2).
3 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
50-57 (January 7, 2019).
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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 contains an "'inventive concept' sufficient to 'transform"'
the claimed judicial exception into a patent-eligible application of the
judicial exception. Alice, 573 U.S. at 221 ( quoting Mayo, 566 U.S. at 82).
In so doing, we thus consider whether the claim:
(3) adds a specific limitation beyond the judicial
exception that are not "well-understood, routine and
conventional in the field" (see MPEP § 2106.05(d)); or
( 4) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception.
(Guidance Step 2B). See Guidance, 84 Fed. Reg. at 54--56.
Analysis
Applying the Revised Guidance to the facts on this record, we find
that Appellant's claims 1-8, 11-14, and 20-24 are directed to patent-
ineligible subject matter. Because the same issues are present in each of the
claims, we focus our consideration on representative claim 1. The same
analysis applied below to claim 1 also applies to the other rejected claims.
A. Guidance Step 2A, Prong 1
The Revised Guidance instructs us first to determine whether any
judicial exception to patent eligibility is recited in the claim. The Revised
Guidance identifies three judicially-excepted groupings identified by the
courts as abstract ideas: (1) mathematical concepts, (2) certain methods of
organizing human behavior such as fundamental economic practices, and (3)
mental processes.
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Claim 1 reasonably falls within two of the three of the judicially-
excepted groupings listed in the Revised Guidance: mental processes and
fundamental economic practices involving dispatching drivers to pick up
riders.
It is well established that mental processes are abstract ideas.
CyberSource instructs that "a method that can be performed by human
thought alone is merely an abstract idea and is not patent-eligible under
§ 101." CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373,
13 7 5 (Fed. Cir. 2011) ("That purely mental processes can be unpatentable,
even when performed by a computer, was precisely the holding of the
Supreme Court in Gottschalk v. Benson.").
Similarly, the Federal Circuit has found automation of well-
established methods of organizing human activity to be ineligible. See, e.g.,
In re Salwan, 681 Fed. App'x 938, 941 (Fed. Cir. 2017) (finding automation
of a method of organizing human activity with respect to medical
information an abstract idea); see also Intellectual Ventures I LLC v.
Symantec Corp., 838 F.3d 1307, 1314--15 (Fed. Cir. 2016) ("it was long-
prevalent practice for people receiving paper mail to look at an envelope and
discard certain letters, without opening them, from sources from which they
did not wish to receive mail based on characteristics of the mail" and noting
that applying that well-known idea using generic computers was abstract).
Claim 1 performs both the mental process and method of organizing
the human activity of taxicab dispatching. The taxicab dispatcher
receives incoming telephone requests for taxis and relays the
information on slips of paper to the radio operator. The radio
dispatcher calls the vacant cab that is closest to the location of
the pickup and records the information on a slip of paper of
another color. Both slips are filed on a board which contains
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numbered receptacles corresponding to the cab numbers. These
slips are a record of the position and status of every cab in the
fleet.
(Vallarino4 233). The steps of determining the location of the driver and
identifying wait times based on that location were steps necessarily
performed by human dispatchers in selecting the vacant cab closest to the
pickup of the customer (id.). Thus, these are mental steps as well as a well-
established method of organizing human activity.
We find the instant claims similar to those in Smart Systems, where
the Federal Circuit held that claims directed to a method for "validating
entry into a first transit system using a bankcard terminal" did not satisfy
Alice step one. See Smart Sys. Innovations, LLC v. Chicago Transit Auth.,
873 F.3d 1364, 1372 (Fed. Cir. 2017). Smart Systems found the claims were
"not directed to a combined order of specific rules that improve any
technological process, but rather invoke computers in the collection and
arrangement of data. Claims with such character do not escape the abstract
idea exception under Alice step one." Id. at 1372-3.
Similarly, the instant claims are directed to the use of a computer to
determine the location of a driver and then determining the wait time of the
rider based on the driving paths available and then select the most efficient
route directions and send that route information to the driver (see Claim 1 ).
Other than by use of a computer, this method does not substantively differ
from the mental process of a taxicab dispatcher selecting the closest cab and
4 Vallarino et al., Radio Dispatching System for Operation of a Large
Taxicab Fleet, https://ieeexplore.ieee.org/stamp/stamp.jsp?amumber=
6438006, 232-35 (1952).
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telling the driver to take a different route in order avoid a traffic jam or
accident. "[M]erely limiting the field of use of the abstract idea to a
particular ... environment does not render the claims any less abstract."
Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1259 (Fed.
Cir. 2016). Accordingly, we conclude that the steps of claim 1 recite
judicial exceptions of mental processes and organizing human activities.
B. Guidance Step 2A, Prong 2
Having determined that the claims are directed to a judicial exception,
the Revised Guidance directs us to next consider whether the claims
integrate the judicial exception into a practical application. Guidance Step
2A, Prong 2. "[I]ntegration into a practical application" requires that the
claim recite an additional element or a combination of elements, that when
considered individually or in combination, "apply, rely on, or use the
judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception." Guidance at 54.
A judicial exception is not integrated into a practical application when
the claims are drawn to the mere use of "a computer as a tool to perform an
abstract idea." Guidance, 84 Fed. Reg. at 55; see Electric Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (finding that "the focus
of the claims is not on ... an improvement in computers as tools, but on
certain independently abstract ideas that use computers as tools"); Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327, 1335---6 (Fed. Cir. 2016)
( determining whether the claims at issue were focused on a "specific
asserted improvement in computer capabilities" or "a process that qualifies
as an 'abstract idea' for which computers are invoked merely as a tool").
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Here, there is no integration into a practical application of the abstract
idea. Other than the limitations directed to the abstract idea, discussed
above, the invention is claimed at a very high level of generality and relies
upon standard computing devices (see Spec. ,r 21) and not "a particular
machine ... that is integral to the claim." See Revised Guidance, 84 Fed.
Reg. at 55 n. 7.;
We appreciate that simply because standard devices are used is not
solely dispositive of whether there is an integration into a practical
application. However, we do not find integration under any analysis. In
addition to using standard computer technology, the instant claims do not
recite anything unconventional regarding the process of identifying driving
paths (see Spec. ,r 22, "processor 204 uses map information from map
database 212 to plan routes"); determining wait times based on the driver
locations and routes; or the calculated "system inefficiency score." We note
that the Specification does not recite any specific algorithms for calculating
a "system inefficiency score" but just provides the general concept of
estimating the time taken by a driver to accept and pick up a passenger. See
Spec. ,r 19 ("[I]nefficiency score for a given driver comprises an estimate of
the time until that driver is carrying a passenger, i.e., the sum of the
estimated time until that driver receives and accepts a driver request and the
estimated time for the driver to drive to the location of the request").
Thus, claim 1 does not recite elements that integrate the abstract idea
into a practical application that is more than the abstract idea itself. Instead,
the claims recite conventional computer components that are used to apply
the mental process and organization of human activity of taxicab
dispatching.
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Appellant contends the "claims here are not directed to an abstract
idea but a series of concrete elements for improving computing systems
positioning computing devices of a plurality of drivers. Accordingly, the
claims are analogous to the Federal Circuit's decision in Enfzsh" (Appeal Br.
11 ). Appellant contends that
Similar to Enfzsh, the focus of the claims as a whole is not an
abstract idea, but limitations that improve computer
functionality and/or a technological process. As outlined in the
Specification ( and as recited in the claims), the claimed
invention can significantly improve overall system inefficiency.
For example, by efficiently positioning computing devices of
available drivers, the claimed invention can reduce inefficiency
in overall travel, travel time, driver wait times, and/or requester
wait times.
(Appeal Br. 11 ).
We are unpersuaded by Appellant's reliance on Enfzsh, 822 F.3d at
1327. Enfzsh explains that "the first step in the Alice inquiry in this case
asks whether the focus of the claims is on the specific asserted improvement
in computer capabilities ... or, instead, on a process that qualifies as an
'abstract idea' for which computers are invoked merely as a tool." Enfzsh,
822 F.3d at 1335-6. Applied to claim 1, the claimed software product does
not provide for a technical improvement in a computer processor or in the
electrical components of a driver dispatch system, but rather uses the
computer as a tool to perform data analysis on driver location and
availability data "for determining an ordering of drivers to deliver the
request to in order to maximize system efficiency" (Spec. ,r 18). That is, the
current claims simply use the computer and software as tools to perform a
mental process and process of organizing human activity as routinely
performed by a taxicab dispatcher as discussed above. See Elec. Power
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Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016) ("[M]erely
selecting information, by content or source, for collection, analysis, and
display does nothing significant to differentiate a process from ordinary
mental processes.") Appellant does not identify any teaching in the
Specification that actually improves either the computer or the physical
components of the dispatch system.
Appellant contends the "Office Action relies an over-generalized
concept that is completely untethered from the actual claim language"
(Appeal Br. 13). Appellant contends they "are not claiming an abstract idea,
but specific limitations that improve functionality of computing systems"
(Appeal Br. 14). Appellant contends "the claims expressly recite limitations
for positioning computing devices of available drivers to improve overall
system efficiency. In addition, the claims include numerous detailed steps
for accomplishing these improvements and functions. Electric Power Group
does not apply here" (Appeal Br. 15).
We do not agree that the Examiner over-generalized the abstract idea.
Prior art evidences limitations of claim 1 that were known and routine prior
to the submission of the instant application. Felt5 teaches a taxi dispatch
system comprising a network, a user device, a mobile taxi dispatch system,
and one or more taxi devices (see Felt ,r 15). Felt explains the taxi system
"may include information about how far a particular taxi is located from the
customer that is requesting the taxi. This information may be computed, for
example, from information about the location of the customer making the
request and from information about the current location of taxis" (Felt ,r 61 ).
5 Felt et al., US 2011/0099040 Al, published Apr. 28, 2011.
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Felt also teaches that selection may be "based on an estimated time it would
take a taxi to reach the customer's location" (Felt ,r 78).
Firantas6 teaches the traditional taxicab dispatch system (Firantas 4)
and teaches the "Unit should arrive to Object as soon as possible. In order to
achieve that, Dispatcher has to evaluate time of arrival ... and select the best
match. We refer to 'route' as any of the possible routes and 'best route' as
the best one of them" (Firantas 11 ). Firantas teaches the use of "real-time
routing algorithms" that include traffic parameters and route configuration to
identify the best route (see Firantas 11-12) and that the taxicab "should
receive prepared routes from the server" (Firantas 13).
Thus, the evidence demonstrates that the only element of the claim
that may not be expressly provided for in the prior art is the express
requirement to use a mental process in organizing human activity of
determining two routes, where Firantas may sometimes suggest only a single
best route be identified and transmitted to the taxi (see Firantas 11-13).
We note that none of the detailed steps represent anything other than
taking the abstract idea of determining an available driver based on a
minimized system inefficiency and applying it using a computer system.
Alice makes clear that "[ s ]tating an abstract idea while adding the words
'apply it with a computer' simply combines those two steps, with the same
deficient result." Alice, 573 U.S. at 223.
6 Firantas et al., Automated taxi request, dispatch, and routing.·conceptual
design, http://citeseerx.ist.psu.edu/viewdoc/download?doi=10.1.1.658.7373
&rep=repl&type=pdf (2006). We number the pages sequentially from the
first page.
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Appellant contends that "[l]ike the patent eligible claims in McRO, the
present claims reflect an approach to position computing devices of
available drivers utilizing a sequence of unconventional steps" (Appeal Br.
18).
We find this argument unpersuasive. McRO was a computer based
process that improves operations on the computer animation process itself,
while claim 1 uses mental processes in the well-established method of
organizing human activity of dispatching taxis by determining an available
driver based on a minimized system inefficiency and sending the route
information to the driver. See McRO, Inc. v. Bandai Namco Games Am.
Inc., 837 F.3d 1299 (Fed. Cir. 2016).
Unlike McRO, the computer in claim 1 is simply used as a tool to
perform the same method performed in the mind of a taxicab dispatchers and
drivers. That is, these humans identify the closest taxi, based upon factors
including traffic and route accordingly (see Vallarino 233; Firantas 4
"Operator informs the customer about ... estimated time of arrival ...
Driver plans his route of arrival"). The claim does not improve the
computer itself. Claim 1 does not integrate the process steps into a practical
improvement because the steps simply computerize known mental processes
in a well-established method of organizing human activity. Therefore,
contrary to McRO, where the ultimate product produced was a synchronized
computer animation that was itself the transformative use, the result of the
presently claimed method is a drawn to a method of taxicab dispatch and
sending route information, which do not improve the computer itself.
Appellant also contends that "[l]ike Bascom, although the claimed
invention may utilize known computer components, the ordered combination
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of elements utilized to position a plurality of computing devices in an
improved manner comprises a concrete, inventive concept that is patent
eligible" (Appeal Br. 20).
We are not persuaded by Appellant's arguments. In Bascom, the
Federal Circuit found the patent claimed "a technology-based solution (not
an abstract-idea-based solution implemented with generic technical
components in a conventional way) to filter content on the Internet that
overcomes existing problems with other Internet filtering systems." Bascom
Global Internet Serv., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1351
(Fed. Cir. 2016). Unlike Bascom, claim 1 recites an abstract-idea-based
solution, i.e., a mental process for dispatching taxis and sending route
information but does not indicate or identify any unconventional
components or unconventional placement of components in the analysis, or
indeed, any aspect that cannot be performed in the human mind.
While Appellant states that the "claims include a unique ordered
combination of steps that improve the accuracy and efficiency of computing
systems", we are not persuaded that the evidence of record supports this
position because, as discussed above, the process is identical to that
performed by an ordinary taxicab dispatcher and driver (Vallarino 233;
Firantas 11-13; Felt ,r,r 61, 78). Therefore, unlike Bascom, the invention at
issue is not "a software-based invention that improves the performance of
the computer system itself." 827 F.3d at 1351.
Appellant contends "[ s ]imilar to DDR, independent claim 1 of the
present application addresses the computer and network-specific challenge
of accurately and efficiently providing rides through a distributed, on-
demand transportation matching system. Dynamic, on-demand
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transportation matching systems create new and unique problems for
providing rides at a point of service" (Appeal Br. 20).
We are not persuaded that this fact pattern is similar to that in DD R
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014).
DDR Holdings 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, thus,
held that the claims were directed to patent-eligible 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. The instant claim 1 does not identify a specific problem in the realm of
computer networks, or indeed, in computer technology at all. Instead, claim
1 applies computer technology to the mental processes ordinarly used in a
well-understood method of organizing human activity of taxicab dispatch
and routing.
Instead, we find the claimed invention more akin to the claims in
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714 (Fed. Cir. 2014) than
those in DDR Holdings. In Ultramercial, like the instant case, the patentee
argued that its claims were "directed to a specific method of advertising and
content distribution that was previously unknown and never employed on
the Internet before." Ultramercial, 772 F.3d at 714. However, Ultramercial
found that the majority of the steps were directed to the abstract idea of
offering media content in exchange for viewing an advertisement, and the
"routine additional steps[,] such as updating an activity log, requiring a
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request from the consumer to view the ad, restrictions on public access, and
use of the Internet[,]" and, as such, were insufficient to transform the patent-
ineligible abstract idea into patent-eligible subject matter. Id. at 715-16.
Here, while the claims recite a specific abstract idea implemented in
software, that software does not alter the computer itself, but rather falls into
the category of methods "that can be performed by human thought alone ...
and is not patent-eligible under§ 101." CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1373, 1375 (Fed. Cir. 2011) ("That purely
mental processes can be unpatentable, even when performed by a computer,
was precisely the holding of the Supreme Court in Gottschalk v. Benson.").
Therefore, on this record, we conclude that the ineligible subject
matter in Appellant's claim 11 is not integrated into a practical application.
C. Guidance Step 2B
Having determined that the judicial exception is not integrated into a
practical application, the Revised Guidance requires us to evaluate the
additional elements individually and in combination to determine whether
they provide an inventive concept, such as a specific limitation beyond the
judicial exception that is not well-understood, routine, conventional in the
field, or simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception. See 84 Fed. Reg. 51.
Appellant contends "in light of the Federal Circuit's decision in
Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018), Examiners must
expressly support a finding that additional elements are well-understood,
routine or conventional" (Appeal Br. 17).
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We agree with Appellant that Berkheimer mandates evidence showing
the claim elements were well-understood, routine, and conventional in the
prior art is necessary to satisfy Alice step two. The Examiner does provide
evidence demonstrating that the structural components of the claim were
recognized by the Specification including the computing device and
processor are well-understood, routine, conventional in the field (see Ans. 5,
Spec. ,r,r 15, 21 ). The Examiner does not provide evidence that taxicab
dispatch or identifying optimal routes was known in the prior art. However,
as discussed above, Vallarino, Firantas, and Felt all teach taxicab dispatch
based on the location of the rider and taxicab was well known (Vallarino
233; Firantas 11-13; Felt ,r,r 61, 78). Moreover, Firantas teaches that
computerized route selection was known, and indeed suggests that a server
determine that route information and send it to the taxicab (Firantas 13).7
We, therefore, find that Appellant's claims do not require anything
other than the use of conventional and well-understood techniques and
equipment to dispatch a taxi using the mental process of determining an
available driver based on a minimized system inefficiency according to the
recited judicial exception. The addition of this mental process cannot supply
the requisite inventive concept. BSG Tech LLC v. BuySeasons, Inc., 899
F.3d 1281, 1290 (Fed. Cir. 2018) ("It has been clear since Alice that a
claimed invention's use of the ineligible concept to which it is directed
cannot supply the inventive concept that renders the invention 'significantly
more' than that ineligible concept."). Accordingly, the preponderance of
7 We note, but do not rely, on the fact that Google Maps was publicly
available in February 2005 (see https://www.theguardian.com/technology/
2015/feb/08/google-maps-10-anniversary-iphone-android-street-view).
18
Appeal2019-002674
Application 13/828,952
evidence of record supports the Examiner's finding that Appellant's claimed
invention is directed to patent-ineligible subject matter. The rejection of the
claims under 35 U.S.C. § 101 is affirmed.
CONCLUSION
In summary:
1-8
'
101 Eligibility 1-8
' 11-14, 11-14,
20-24 20-24
1-8
'
101 Eligibility 1-8
' 11-14, 11-14,
20-24 20-24
Overall 1-8
'
1-8
' Outcome 11-14, 11-14,
20-24 20-24
We designate our affirmance as a ground of rejection pursuant to 37
C.F .R. § 41.50(b) because of the newly cited references. Section 41.50(b)
provides "[a] new ground of rejection pursuant to this paragraph shall not be
considered final for judicial review." Section 4I.50(b) also provides:
When the Board enters such a non-final decision, the
appellant, within two months from the date of the decision,
must exercise one of the following two options with respect to
the new ground of rejection to avoid termination of the appeal
as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
19
Appeal2019-002674
Application 13/828,952
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
AFFIRMED; 37 C.F.R. § 4I.50(b)
20