THE GOODYEAR TIRE & RUBBER COMPANY

Patent Trials and Appeals Board

Sep 27, 2021

2021001650 (P.T.A.B. Sep. 27, 2021)

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.
14/943,126 11/17/2015 Cary D. Marr GTRC-311US 9314
119563 7590 09/27/2021
Wood, Herron & Evans, LLP (Goodyear)
2700 Carew Tower
441 Vine Street
Cincinnati, OH 45202
EXAMINER
SINGLETARY, TYRONE E
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
09/27/2021 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):
usptodock@whe-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CARY D. MARR

Appeal 2021–001650
Application 14/943,126
Technology Center 3600

Before HUBERT C. LORIN, MICHAEL C. ASTORINO, and
NINA L. MEDLOCK, Administrative Patent Judges.

LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s final decision to reject claims 1, 3, 6, 8, 9, 11, 13, 15, and 16.1
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies The Goodyear Tire and Rubber
Company as the real party in interest. Appeal Br. 3.
Appeal 2021–001650
Application 14/943,126

2
CLAIMED SUBJECT MATTER
The claimed subject matter relates “to roadside service, more
specifically to facilitating efficient decision making between a roadside
service technician and a vehicle owner regarding service options” (Spec.
para. 1). Claim 1, reproduced below with emphasis added, is illustrative of
the claimed subject matter:
1. A method for servicing a damaged portion of a vehicle during
a roadside service call, the method comprising:
receiving a service request transmitted to a vehicle
technician system of a vehicle service technician, wherein the
service request includes the physical location of the vehicle;
dispatching the vehicle service technician to the physical
location of the vehicle containing the damaged portion;
acquiring a digital media file with the vehicle technician
system, by actuating a camera integrated into the vehicle
technician system to acquire the digital media file, wherein the
digital media file includes still images and/or motion video of the
damaged portion of the vehicle;
communicating the digital media file from the vehicle
technician system to an authority over a communication network,
wherein the authority is not at the physical location of the vehicle
during this and the following steps;
providing an unbiased view of the damaged portion of the
vehicle to the authority with the digital medial file such that a
real-time analysis can be made by the authority to allow for a
selected service response to be chosen for the roadside service
call without delay and based on full, unbiased information about
the damaged portion of the vehicle;
receiving the selected service response from the authority,
wherein the selected service response is selected based at least
in part on the digital media file, and wherein the selected service
response is selected from one of a repair response and a replace
response by the authority; and
applying the selected service response to the vehicle, by
the vehicle service technician at the roadside service call, to
Appeal 2021–001650
Application 14/943,126

3
thereby fix the damaged portion of the vehicle and make the
damaged portion of the vehicle undamaged.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Leonard US 2014/0188999 A1 July 3, 2014
Marlow US 9,505,494 B1 Nov. 29, 2016
REJECTIONS
Claims 1, 3, 6, 8, 9, 11, 13, 15, and 16 are rejected under 35 U.S.C.
§ 101 as being directed to judicially-excepted subject matter without
significantly more.
Claims 1, 3, 6, 8, 9, 11, 13, 15, and 16 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Marlow and Leonard.
OPINION
The rejection of claims 1, 3, 6, 8, 9, 11, 13, 15, and 16 under 35 U.S.C.
§ 101 as being directed to judicially-excepted subject matter without
significantly more.
The Appellant argues these claims as a group. See Appeal Br. 8–15.
We select claim 1 as the representative claim for this group, and the
remaining claims 3, 6, 8, 9, 11, 13, 15, and 16 stand or fall with claim 1. See
37 C.F.R. § 41.37(c)(1)(iv).

Introduction
35 U.S.C. § 101 provides that “[w]hoever invents or discovers any
new and useful process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof, may obtain a patent therefor.”
Appeal 2021–001650
Application 14/943,126

4
In that regard, claim 1 covers a “process” and is thus statutory subject
matter for which a patent may be obtained.2 This is not in dispute.
However, the 35 U.S.C. § 101 provision “contains an important
implicit exception: Laws of nature, natural phenomena, and abstract ideas
are not patentable.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014)
(quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013)).
In that regard, notwithstanding claim 1 covers statutory subject
matter, the Examiner has raised a question of patent eligibility on the ground
that claim 1 is directed to an abstract idea.
Alice identifies a two-step framework for determining whether
claimed subject matter is directed to an abstract idea. Alice, 573 U.S. at 217.
Alice step one — the “directed to” inquiry:
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept.” Alice, 573 U.S.
at 218 (emphasis added).
The Examiner determined that claim 1 is “directed to the abstract idea
of determining a selected service response for servicing a damaged portion
of a vehicle.” Final Act. 3. Specifically,
claim 1 recites receiving a service request transmitted to a vehicle
service technician, wherein the service request includes the
physical location of the vehicle; dispatching the vehicle service
technician to the physical location of the vehicle containing the

2 This corresponds to Step 1 of the 2019 Revised 101 Guidance which
requires determining whether “the claim is to a statutory category.” 84 Fed.
Reg. at 53. See also id. at 53–54 (“consider[] whether the claimed subject
matter falls within the four statutory categories of patentable subject matter
identified by 35 U.S.C. 101.”).
Appeal 2021–001650
Application 14/943,126

5
damaged portion; communicating to an authority, wherein the
authority is not at the physical location of the vehicle during this
and the following steps; providing an unbiased view of the
damaged portion of the vehicle to the authority such that a real-
time analysis can be made by the authority to allow for a selected
service response to be chosen for the roadside service call
without delay and based on full, unbiased information about the
damaged portion of the vehicle; receiving the selected service
response from the authority, wherein the selected service
response is selected from one of a repair response and a replace
response by the authority; and applying the selected service
response to the vehicle, by the vehicle service technician at the
roadside service call, to thereby fix the damaged portion of the
vehicle and make the damaged portion of the vehicle undamaged.
Id. at 3–4. The Examiner also adds that “these claim limitations fall within
the Certain Methods of Organizing Human activity group of abstract ideas
[enumerated in the 2019 Revised 101 Guidance] due to the managing of
personal behavior regarding the user and the user’s interaction with the
system.” Id. at 4.
Appellant contends that “the present application provides a specific
technological improvement using an unconventional approach that enables
servicing of damaged vehicles to be done in a way that could not be done
before.” Appeal Br. 15.
Accordingly, a dispute over whether claim 1 is directed to an abstract
idea is present. Specifically, is claim 1 directed to “determining a selected
service response for servicing a damaged portion of a vehicle” (Final Act. 3)
or to a “specific technological improvement” (Appeal Br. 15)?

Appeal 2021–001650
Application 14/943,126

6
Claim Construction3
We consider the claim as a whole giving it the broadest reasonable
construction as one of ordinary skill in the art would have interpreted it in
light of the Specification at the time of filing.4,5,6
Claim 1 recites 7 steps of “receiving,” “dispatching,” “acquiring,”
“communicating,” “providing,” “receiving,” and “applying.”
The first “receiving” step calls for receiving certain information
“transmitted to a vehicle technician system of a vehicle service technician.”
According to the Specification, a “vehicle technician system” is broadly
defined to include “a mobile computing device, such as a mobile phone or a
tablet computer.” Spec., para. 29. A “vehicle technician” is apparently a
person. See id. at para. 53 (“dispatching of a service technician”). The

3 “[T]he important inquiry for a § 101 analysis is to look to the claim.”
Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336,
1345 (Fed. Cir. 2013). “In Bancorp Servs., L.L.C. v. Sun Life Assurance Co.
of Can., 687 F.3d 1266, 1273 (Fed. Cir. 2012), the court observed that
‘claim construction is not an inviolable prerequisite to a validity
determination under § 101.’ However, the threshold of § 101 must be
crossed; an event often dependent on the scope and meaning of the claims.”
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1347–48
(Fed. Cir. 2015).
4 “In determining the eligibility of respondents’ claimed process for patent
protection under § 101, their claims must be considered as a whole.”
Diamond v. Diehr, 450 U.S. 175, 188 (1981).
5 “First, it is always important to look at the actual language of the claims.
. . . Second, in considering the roles played by individual limitations, it is
important to read the claims ‘in light of the specification.’” Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1378 (Fed. Cir.
2017) (J. Linn, dissenting in part and concurring in part) (citing Enfish, LLC
v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)), among others.
6 See 2019 Revised 101 Guidance, 84 Fed. Reg. at 52, footnote 14 (“If a
claim, under its broadest reasonable interpretation.”).
Appeal 2021–001650
Application 14/943,126

7
certain information is a “service request” that “includes the physical location
of the vehicle.” The form of the information is unstated but given that it is
information which a mobile or tablet computer may obtain and that
mobile/tablet computers generally obtain information as text, for example,
the recited “service request” is reasonably broadly construed as
encompassing text. Accordingly, this first step reasonably broadly covers a
mobile computing device receiving text from a person.
The second step calls for “dispatching” said person “to the physical
location of the vehicle containing the damaged portion.” Thus, by this step,
said person is dispatched to a location.
The third step requires the “vehicle technician system” (i.e., a mobile
phone or tablet computer) to acquire a “digital media file” about certain
other information. The claim specifies the “digital media file” as
“includ[ing] still images and/or motion video.” The claim further states that
the file is acquired “by actuating a camera integrated into the vehicle
technician system.” In that regard, the Specification explains that
many modem web-enabled phones or tablet computers include a
media capture device, such as a camera, which may capture
digital media files such as still images sufficient for a vehicle
owner to determine the extent of damage done to a part. . . .
Many mobile computing devices further include a video camera
function, which may capture digital media such as motion video
sufficient for a vehicle owner to view a damaged part from many
angles and provide a more complex representation of the
damaged part. The present invention takes advantage of these
capabilities of vehicle technician systems, such as mobile phones
or tablet computers . . . .
Spec., para. 31. Accordingly, this step reasonably broadly covers the mobile
computing device capturing images and/or video as generic mobile
Appeal 2021–001650
Application 14/943,126

8
computing devices normally do. According to the claim, the certain other
information of which images/video is taken is “of the damaged portion of
the vehicle.”
The fourth step calls for communicating the file to an “authority”
located somewhere different from the location of the damaged vehicle.
According to the Specification, the “authority” “may be an entity such as a
vehicle owner or a proxy for the vehicle owner such as an employee, agent,
or service provider having the authority to make decisions in response to
queries from a service technician regarding service to a damaged portion of
a vehicle. Hereinafter the authority will be referred to as the vehicle owner.”
Spec., para. 29. In other words, the “authority” is a person. Further,
according to the claim, the file is communicated “over a communication
network” which the Specification exemplifies as “includ[ing] one or more
private or public networks (e.g. the Internet) that enable the exchange of
data.” Spec., para. 33. Thus this step reasonably broadly covers
communicating the file to another person in a different location via the
Internet.
The fifth step requires providing an “unbiased view” of the vehicle
damage with the file. The claim does not specify the form the “unbiased
view” should take or how it should be provided with the file. In light of the
generic mobile computing devices the claimed method reasonably broadly
covers using, one of ordinary skill in the art would understand that, in such
an environment, a text message would be one common way to provide said
“unbiased view.” The claim specifies certain desired outcomes vis–a–vis a
“a selected service response” based on the provided–for “unbiased view.”
But the “selected service response” is not attached to any device and
Appeal 2021–001650
Application 14/943,126

9
therefore reasonably covers a person taking the actions specified (e.g.,
“without delay”). Accordingly, this step reasonably broadly covers sending a
text with the file based on which a person takes action.
The sixth step specifies that the “selected service response” is either
“a repair response [or] a replace response by the authority.” This step
reasonably broadly covers the other person giving a repair or replace
response.
The last step calls for the person (i.e., the “service technician”) to fix
the vehicle damage according to the repair/replace response.
Putting it together, the claimed method is reasonably broadly
construed as a scheme for providing information about vehicle damage to an
owner located elsewhere, involving a technician sending images and/or
video of the damage and an “unbiased view” to the owner using a generic
mobile computing device and, based on that information, the owner replying
with a repair or replace response.
According to the Specification, an objective of the invention is to
facilitate “[c]oordinating a roadside repair service [that] typically involves
the driver calling the vehicle owner and reporting the issue.” Spec., para. 3.
Once the roadside service technician arrives at the
location, the technician generally assesses the situation and
facilitates decisions regarding the service. Often a decision must
be made between repairing a malfunctioning part or replacing the
part entirely. The decision to repair or replace may tum on the
relative cost involved, but often the decision turns on the status
of the part itself. For example, a tire may be repaired if only
minor damage has occurred or the damage has occurred at a
repairable location of the tire. If the tire is severely damaged, or
the damage has occurred in a non-repairable location of the tire,
the tire may need replaced entirely. The vehicle owners often
Appeal 2021–001650
Application 14/943,126

10
make the final decision on whether to repair or replace a
damaged part.
Id. at para. 4. “[A] need exists in the art for a manner of evaluating roadside
service issues to provide information to a vehicle owner regarding damaged
parts, associated service options, and status updates, while also minimizing
or eliminating the need for direct phone contact between the roadside service
technician and the vehicle owner.” Id. at para. 7.
Given the method as claimed as reasonably broadly construed above
and in light of the Specification’s description of the objective of the
invention to facilitate decision–making about vehicle repair, we reasonably
broadly construe claim 1 as being directed to a scheme to provide
information about vehicle damage to an owner located elsewhere, involving
a technician sending images and/or video of the damage and an “unbiased
view” to the owner using a generic mobile computing device and, based on
that information, the owner replying with a repair or replace response. Put
more succinctly, claim 1 is directed to a scheme for providing information
about vehicle damage to an owner located elsewhere to facilitate
communication about its repair or replacement to the technician.
The Abstract Idea7
Above, where we reproduce claim 1, we identify in italics the
limitations we believe recite an abstract idea.8 Based on our claim

7 This corresponds to Step 2A of the 2019 Revised 101 Guidance. Step 2A
determines “whether a claim is ‘directed to’ a judicial exception,” such as an
abstract idea. Step 2A is two prong inquiry.
8 This corresponds to Prong One (a) of Step 2A of the 2019 Revised 101
Guidance. “To determine whether a claim recites an abstract idea in Prong
One, examiners are now to: (a) Identify the specific limitation(s) in the
Appeal 2021–001650
Application 14/943,126

11
construction analysis (above), we determine that the identified limitations
describe a scheme for providing information about vehicle damage to an
owner located elsewhere to facilitate communication about its repair or
replacement to the technician. Providing information to facilitate repair of
vehicle damage is a commercial interaction. It falls within the enumerated
“[c]ertain methods of organizing human activity” grouping of abstract ideas
set forth in the 2019 Revised 101 Guidance.9 2019 Revised 101 Guidance,
84 Fed. Reg. at 52.

claim under examination (individually or in combination) that the examiner
believes recites an abstract idea.” 84 Fed. Reg. at 54.
9 This corresponds to Prong One [“Evaluate Whether the Claim Recites a
Judicial Exception”] (b) of Step 2A of the 2019 Revised 101 Guidance. “To
determine whether a claim recites an abstract idea in Prong One, examiners
are now to: . . . (b) determine whether the identified limitation(s) falls within
the subject matter groupings of abstract ideas enumerated in Section 1 of the
[2019 Revised 101 Guidance].” 84 Fed. Reg. at 54. This case implicates
subject matter grouping “(b):” “(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).” Id. at 52.
Appeal 2021–001650
Application 14/943,126

12
Technical Improvement10 (Appellant’s Argument)
Our characterization of what the claim is directed to is similar to that
of the Examiner (“determining a selected service response for servicing a
damaged portion of a vehicle”). The Examiner’s characterization is
described at a somewhat different level of abstraction. Nevertheless, “[a]n
abstract idea can generally be described at different levels of abstraction.”
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240, 1240–41 (Fed. Cir.
2016) (“The Board’s slight revision of its abstract idea analysis does not
impact the patentability analysis.”).
We have reviewed the record and are unpersuaded as to error in our or
the Examiner’s characterization of what claim 1 is directed to.
Appellant contends that that the claimed subject matter yields a
“specific technological improvement.” Appeal Br. 15.
However, Appellant does not clearly explain and we are unable to
discern what technology is being improved.

10 This corresponds to Prong Two [“If the Claim Recites a Judicial
Exception, Evaluate Whether the Judicial Exception Is Integrated Into a
Practical Application”] of Step 2A of the 2019 Revised 101 Guidance. “A
claim that integrates a judicial exception into a practical application will
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.” 84 Fed. Reg.
at 54. One consideration, implicated here, that is “indicative that an
additional element (or combination of elements) may have integrated the
exception into a practical application” is if “[a]n additional element reflects
an improvement in the functioning of a computer, or an improvement to
other technology or technical field.” Id. at 55.

Appeal 2021–001650
Application 14/943,126

13
Appellant argues that “[t]he problem addressed arises from the vehicle
owner’s lack of detailed knowledge regarding the extent of damage to the
damaged part of the vehicle.” Appeal Br. 13. But Appellant points to the
“providing” and second “receiving” steps in the claim as presenting the
solution. Id. But those steps do not reflect a technological improvement. As
we construed them, they reasonably broadly cover sending a text (providing
an “unbiased view”) with a media file concerning vehicle damage to the
vehicle’s owner on which to decide the action the technician should take:
repair or replace. Although it is true, as Appellant argues, that the claim
requires the vehicle owner to be at location other than the location of the
damaged vehicle, the process as claimed does not introduce a technological
improvement to address that. All that the claim requires for the owner and
technician to communicate with each other is a generic mobile computer and
a network (e.g., the Internet).
The method as claimed describes, in very general terms, providing
information (via “receiving,” “dispatching,” “acquiring,” “communicating,”
“providing,” “receiving,” and “applying” steps) about vehicle damage to an
owner located elsewhere and about repair/replace to the technician. The
method as claimed is not focused on improving technology but on
facilitating communication to enhance decision–making. Cf. Trading Techs.
Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019) (“The claims
are focused on providing information to traders in a way that helps them
process information more quickly, ’556 patent at 2:26–39, not on improving
computers or technology.”).
We have carefully reviewed the claim. Per our previous claim
construction analysis, claim 1 is reasonably broadly construed as covering a
Appeal 2021–001650
Application 14/943,126

14
scheme for providing information about vehicle damage to an owner located
elsewhere to facilitate communication of its repair or replacement to the
technician. We see no specific asserted improvement in computer
capabilities recited in the claim. Rather than being directed to any specific
asserted improvement in computer capabilities, the claim supports the
opposite view.
The claim provides no additional structural details that would
distinguish any device required to be employed to practice the method as
claimed, such as the recited “vehicle technician system” (i.e., mobile
computing device) – with an integrated camera – and network from its
generic counterparts.11
With respect to the “receiving,” “dispatching,” “acquiring,”
“communicating,” “providing,” “receiving,” and “applying” steps, the
Specification attributes no special meaning to any of these operations,
individually or in the combination, as claimed. In our view, these are
common computer processing functions that one of ordinary skill in the art
at the time of the invention would have known generic mobile computing
devices were capable of performing and would have associated with generic
mobile computing devices. Cf. OIP Techs., Inc. v. Amazon.com, Inc.,
788 F.3d 1359, 1363 (Fed. Cir. 2015)
Beyond the abstract idea of offer-based price optimization, the
claims merely recite “well-understood, routine conventional
activit[ies],” either by requiring conventional computer activities

11 Cf. Move, Inc. v. Real Estate Alliance Ltd., 721 F. App’x 950, 954 (Fed.
Cir. 2018) (non-precedential) (“Claim 1 is aspirational in nature and devoid
of any implementation details or technical description that would permit us
to conclude that the claim as a whole is directed to something other than the
abstract idea identified by the district court.”).
Appeal 2021–001650
Application 14/943,126

15
or routine data-gathering steps. Alice, 134 S.Ct. at 2359 (quoting
Mayo, 132 S.Ct. at 1294) . . . . For example, claim 1 recites
“sending a first set of electronic messages over a network to
devices,” the devices being “programmed to communicate,”
storing test results in a “machine-readable medium,” and “using
a computerized system . . . to automatically determine” an
estimated outcome and setting a price. Just as in Alice, “all of
these computer functions are ‘well-understood, routine,
conventional activit[ies]’ previously known to the industry.”
Alice, 134 S.Ct. at 2359 (quoting Mayo, 132 S.Ct. at 1294)
(alterations in original); see also buySAFE[, Inc. v. Google, Inc.],
765 F.3d [1350,] 1355 [(Fed. Cir. 2014)] (“That a computer
receives and sends the information over a network—with no
further specification—is not even arguably inventive.”).
We find the Appellant’s remark that the claim presents a technical-
improvement solution unpersuasive as to error in the Examiner’s or our
characterization of what the claim is directed to because the method as
claimed fails to adequately support it. We are unable to point to any claim
language suggestive of an improvement in technology. An argument that
such an improvement exists is alone insufficient. See generally In re Glass,
474 F.2d 1015, 1019 (CCPA 1973); In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); and, In
re Schulze, 346 F.2d 600, 602 (CCPA 1965).
Accordingly, within the meaning of the 2019 Revised 101 Guidance,
we find there is no integration of the abstract idea into a practical
application.
We note Appellant’s citation of Trading Technologies International,
Inc. v. CQG, Inc., 675 F. App’x 1001 (Fed. Cir. 2017). See Appeal Br. 13.
Appellant points out that the court determined in that case that “the
challenged patents ‘solve problems of prior graphical user interface devices
Appeal 2021–001650
Application 14/943,126

16
. . . in the context of computerized trading relating to speed, accuracy and
usability.’” Id. But Appellant does not explain and we are unable to discern
what problem with prior “vehicle technician systems” (i.e., mobile
computing devices) – with an integrated camera – the method is solving. The
method uses the “vehicle technician system” in the same manner as such
devices have been routinely used; that is, to take images/video and/or
communicate text.
The Appellant also argues that “[c]laim 1 solves a problem with
conventional methods of servicing a damaged portion of a vehicle by
acquiring a digital media file with the vehicle technician system, and
communicating the digital media file from the vehicle technician system to
an authority over a communication network.” Appeal Br. 13. A similar
argument is made later in the brief. See id. at 15 (“[V]iewing claim 1 as a
whole, it is apparent that Appellant’s unconventional shift in determination
meaningfully alters the servicing of a damaged portion of a vehicle.”).
The difficulty with such an argument is that it points to the recited
steps (“receiving,” “dispatching,” “acquiring,” “communicating,”
“providing,” “receiving,” and “applying”) themselves, the very subject
matter that we, and the Examiner, have characterized as being an abstract
idea. Rather than showing that these steps describe a technical improvement,
the Appellant points to result-based functional language that is without any
specific means for achieving any purported technological improvement. The
claimed invention the Appellant points to – that is, providing information
about vehicle damage to an owner located elsewhere to facilitate
communication of its repair or replacement to the technician – is described
via a scheme (“receiving,” “dispatching,” “acquiring,” “communicating,”
Appeal 2021–001650
Application 14/943,126

17
“providing,” “receiving,” and “applying”) that is unmoored in technical
details. By so broadly defining the inventive method, that is, by setting out
what it is aspiring to accomplish without sufficient technical details (other
than to prescribe generic mobile computing devices with a camera and a
network) for achieving it, let alone any purported technological
improvement, the claim is in effect presenting the invention in result-based
functional language, strengthening our determination under Alice step one
that the claim is directed to an abstract idea. Cf. Two-Way Media Ltd. v.
Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1337 (Fed. Cir. 2017)
(“Claim 1 recites a method for routing information using result-based
functional language. The claim requires the functional results of
‘converting,’ ‘routing,’ ‘controlling,’ ‘monitoring,’ and ‘accumulating
records,’ but does not sufficiently describe how to achieve these results in a
non-abstract way.”). See also Uniloc USA v. LG Elecs. USA, 957 F.3d 1303,
1308 (Fed. Cir. 2020):
The claims we held ineligible in Two-Way Media similarly failed
to concretely capture any improvement in computer
functionality. In Two-Way Media, the claims recited a method of
transmitting packets of information over a communications
network comprising: converting information into streams of
digital packets; routing the streams to users; controlling the
routing; and monitoring the reception of packets by the users.
874 F.3d at 1334. Two-Way Media argued that the claims solved
data transmission problems, including load management and
bottlenecking, but the claimed method was not directed to those
improvements. Id. at 1336–37. We therefore held the claims
ineligible because they merely recited a series of abstract steps
(“converting,” “routing,” “controlling,” “monitoring,” and
“accumulating records”) using “result-based functional
language” without the means for achieving any purported
technological improvement. Id. at 1337.
Appeal 2021–001650
Application 14/943,126

18
We have considered Appellant’s other arguments challenging the
Examiner’s determination under step one of the Alice framework and find
them unpersuasive. For the foregoing reasons, the record supports the
Examiner’s determination that claim 1 is directed to an abstract idea.

Alice step two — Does the Claim Provide an Inventive Concept?12
Step two is “a 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.’” Alice, 573 U.S. at 217–18 (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 73 (2012)).
In that regard, the Examiner determined, inter alia, that “the claim
does not include additional elements amounting to significantly more than
the abstract idea.” Final Act. 8. We agree.
Appellant argues that “the present application provides a specific
technological improvement using an unconventional approach that enables
servicing of damaged vehicles to be done in a way that could not be done
before. The independent claims are therefore not directed to a judicial
exception without significantly more, and are patent-eligible.” Appeal
Br. 15.

12 This corresponds to Step 2B, of the 2019 Revised 101 Guidance, 84 Fed.
Reg. at 56 “if a claim has been determined to be directed to a judicial
exception under revised Step 2A, examiners should then 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).”
Appeal 2021–001650
Application 14/943,126

19
We addressed the matter of whether the claim presented any purported
specific asserted technical improvements in our analysis above under
step one of the Alice framework. This is consistent with the case law. See
Ancora Techs., Inc. v. HTC Am., Inc., 908 F.3d 1343, 1347 (Fed. Cir. 2018)
(“We have several times held claims to pass muster under Alice step one
when sufficiently focused on such improvements.”). Such an argument, as
the Appellant has made here, can also challenge a determination under step
two of the Alice framework. See buySAFE, 765 F.3d at 1354–55. “[R]ecent
Federal Circuit jurisprudence has indicated that eligible subject matter can
often be identified either at the first or the second step of the Alice/Mayo
[framework].” See 2019 Revised 101 Guidance, 84 Fed. Reg. at 53 n.17.
The Appellant argues that the claimed invention provides an
unconventional approach to providing roadside repair. Specifically,
Appellant's method unconventionally transposes this
determination from the roadside service technician to the
authority by making the first-hand vehicle damage information
available to the authority. See [Spec.], paragraph [0030].
Therefore, viewing claim 1 as a whole, it is apparent that
Appellant's unconventional shift in determination meaningfully
alters the servicing of a damaged portion of a vehicle. In this
regard, the present claims integrate the alleged "abstract idea of
determining a selected service response for servicing a damaged
portion of a vehicle" into a practical application thereof through
the use of elements that go beyond well-understood, routine,
conventional activities.
Appeal Br. 15.
But this argument relies on the claim’s result-based functional
language. Rather than being based on any technical details, the argument
looks to the very scheme (“receiving,” “dispatching,” “acquiring,”
Appeal 2021–001650
Application 14/943,126

20
“communicating,” “providing,” “receiving,” and “applying”) for providing
information about vehicle damage to an owner located elsewhere to facilitate
communication of its repair or replacement to the technician that we have
characterized as being an abstract idea. In effect, the Appellant is arguing
that the abstract idea is unconventional. But “[g]roundbreaking, innovative,
or even brilliant discovery does not by itself satisfy the § 101 inquiry.” Ass’n
for Molecular Pathology, 569 U.S. at 591. Cf. Intellectual Ventures I LLC v.
Symantec Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016) (“Indeed, ‘[t]he
“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) (emphasis added); see also Mayo,
132 S. Ct. at 1303–04 (rejecting ‘the Government’s invitation to substitute
§§ 102, 103, and 112 inquiries for the better established inquiry under
§ 101’). Here, the jury’s general finding that Symantec did not prove by
clear and convincing evidence that three particular prior art references do not
disclose all the limitations of or render obvious the asserted claims does not
resolve the question of whether the claims embody an inventive concept at
the second step of Mayo/Alice.”)
We are unpersuaded that claim 1 presents an element or combination
of elements indicative of a specific asserted technical improvement, thereby
rendering the claimed subject matter sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon a scheme to
provide information about vehicle damage to an owner located elsewhere to
facilitate communication of its repair or replacement to the technician.
Appeal 2021–001650
Application 14/943,126

21
We have reviewed the claim in light of the Specification and, as
explained above, we find the claimed subject matter insufficiently expresses
a technical improvement as a result of performing the functions as broadly
as they are recited.
We cited the Specification (e.g., para. 29) in our earlier discussion. It
is intrinsic evidence that the claimed “vehicle technician system” with an
integrated camera and the network as claimed are conventional. In doing so,
we have followed “Changes in Examination Procedure Pertaining to Subject
Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v.
HP Inc.[, 881 F.3d 1360 (Fed. Cir. 2018)],” USPTO Memorandum, Robert
W. Bahr, Deputy Commissioner For Patent Examination Policy, April 19,
2018 (the “Berkheimer Memo”)).
Here, the Specification indisputably shows the recited claimed
“vehicle technician system” with an integrated camera and the network
individually and in the context of communicating about car repair as claimed
was conventional at the time of filing. Accordingly, the record supports the
well-understood, routine, or conventional nature of the claimed “vehicle
technician system” with an integrated camera and the network individually
and in the combination as claimed.
No other persuasive arguments having been presented, we conclude
that no error has been committed in the determination under Alice step two
that claim 1 does not include an element or combination of elements
circumscribing the patent-ineligible concept it is directed to so as to
transform the concept into a patent–eligible application.
We have considered all of the Appellant’s arguments (including those
made in the Reply Brief) and find them unpersuasive.
Appeal 2021–001650
Application 14/943,126

22
Accordingly, because we are not persuaded as to error in the
determinations that representative claim 1, and claims 3, 6, 8, 9, 11, 13, 15,
and 16 which stand or fall with claim 1, are directed to an abstract idea and
do not present an “inventive concept,” we sustain the Examiner’s conclusion
that they are directed to patent-ineligible subject matter for being judicially-
excepted from 35 U.S.C. § 101. Cf. LendingTree, LLC v. Zillow, Inc.,
656 F. App’x 991, 997 (Fed. Cir. 2016) (“We have considered all of
LendingTree’s remaining arguments and have found them unpersuasive.
Accordingly, because the asserted claims of the patents in suit are directed to
an abstract idea and do not present an ‘inventive concept,’ we hold that they
are directed to ineligible subject matter under 35 U.S.C. § 101.”); see, e.g.,
OIP Techs., 788 F.3d at 1364; FairWarning IP, LLC v. Iatric Sys., Inc.,
839 F.3d 1089, 1098 (Fed. Cir. 2016).

The rejection of claims 1, 3, 6, 8, 9, 11, 13, 15, and 16 under 35 U.S.C.
§ 103(a) as being unpatentable over Marlow and Leonard.
All the independent claims (claims 1, 9, and 16) require that the
“authority is not at the physical location of the vehicle” during practice of
the claimed subject matter. The Specification defines the “authority” as “an
entity such as a vehicle owner or a proxy for the vehicle owner such as an
employee, agent, or service provider having the authority to make decisions
in response to queries from a service technician regarding service to a
damaged portion of a vehicle. Hereinafter the authority will be referred to as
the vehicle owner.” Spec., para. 29.
Appeal 2021–001650
Application 14/943,126

23
The Examiner finds that column 9, lines 56–61; column 10, lines 6–
24; and column 18, lines 33–47 of Marlow disclose said claim limitation.
Final Act. 11.
Column 9, lines 56–61, disclose:
The vehicle 212 may be, for example, the vehicle of a
driver, individual, or customer of an insurance company or
vehicle covered by an insurance policy of an insurance company.
In an embodiment, there may be multiple vehicles 212 that are
covered by an insurance policy of one individual.
Column 10, lines 6–24, disclose:
An individual associated with the vehicle 212 may also be
associated with and operate the mobile device 210. In an
embodiment, the mobile device 210 may be a specialized mobile
device, a tablet, laptop, personal computer, and the like
configured to perform or carry out aspects associated with
requesting roadside assistance and/or reporting an insurance
claim. The mobile device 210 may belong to a driver, individual,
or customer of an insurance company who submits an insurance
claim for the vehicle 212. Additionally, or alternatively, the
mobile device 210 may be used to report the location of the
vehicle 212. The insurance server 206 may identify the location
of the mobile device 210 by tracking the position of the mobile
device 210. Additionally or alternatively, the insurance server
206 may identify the location of the vehicle 212 by receiving
position information from the vehicle 212. For example, the
vehicle 212 may include an electronic device (usually
comprising a GSM GPRS modem or SMS sender) installed in
each vehicle, communicating with the user (dispatching,
emergency or coordinating unit) and PC- or web-based software.
Column 18, lines 33–47, disclose:
The UAV 302 may communicate with one or more
insurance servers such as server 304 over network 306. The
network 306 may be a series of satellites that provide an Internet
Appeal 2021–001650
Application 14/943,126

24
connection between UAV 302 and the insurance server 304 over
the Internet. The UAV 302 may also communicate with a nearby
cellphone tower and transmit its messages to the cellphone tower
for eventual transmission to the insurance server 304 and/or other
computing devices. The UAV 302 may communicate with the
cellphone tower through an onboard antenna such as antenna
320. Additionally or alternatively, the UAV 302 may
communicate with a nearby computing device over a Bluetooth
network. The Bluetooth enabled computing device may relay the
UAV 302's messages to the insurance server 304 through the
Internet or another network 306.
We do not see in these passages any suggestion that the “authority” is
not at the physical location of the vehicle as claimed.
The Examiner further cites column 11, lines 7–37 of Marlow. Answer
6. But we do not see in that passage any suggestion that the “authority” is
not at the physical location of the vehicle as claimed. It describes the ability
of an individual associated with a vehicle to use an insurance mobile
application to, inter alia, request roadside assistance. But the claim does not
simply call for the “authority” to request roadside assistance. Rather the
“authority” is located elsewhere from the damage and for that reason a
service technician communicates about vehicle damage via images/video
and an unbiased view so that the “authority,” located elsewhere, can respond
as to whether the technician should repair or replace the damage.
Accordingly, we do not find that a prima facie case of obviousness
has been made out in the first instance for the subject matter as claimed and
for that reason the rejection is not sustained.
CONCLUSION
The decision of the Examiner to reject claims 1, 3, 6, 8, 9, 11, 13, 15,
and 16 is affirmed.
Appeal 2021–001650
Application 14/943,126

25
More specifically:
The rejection of claims 1, 3, 6, 8, 9, 11, 13, 15, and 16 under
35 U.S.C. § 101 as being directed to judicially-excepted subject matter
without significantly more is affirmed.
The rejection of claims 1, 3, 6, 8, 9, 11, 13, 15, and 16 under
35 U.S.C. § 103 as being unpatentable over Marlow and Leonard is
reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3, 6, 8,
9, 11, 13,
15, 16
101 Eligibility 1, 3, 6, 8, 9,
11, 13, 15,
16

1, 3, 6, 8,
9, 11, 13,
15, 16
103 Marlow, Leonard 1, 3, 6, 8, 9,
11, 13, 15,
16
Overall
Outcome
1, 3, 6, 8, 9,
11, 13, 15,
16

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED