BEIJING DIDI INFINITY TECHNOLOGY AND DEVELOPMENT CO. LTD.

Patent Trials and Appeals Board

Nov 19, 2020

2020004544 (P.T.A.B. Nov. 19, 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.
15/784,271 10/16/2017 Meiling HUANG 20615-0025US00 5601
143988 7590 11/19/2020
METIS IP LLC
PO Box 423
McLean, VA 22101
EXAMINER
VETTER, DANIEL
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
11/19/2020 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@metis-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MEILING HUANG
____________

Appeal 2020-004544
Application 15/784,271
Technology Center 3600
____________

Before NINA L. MEDLOCK, CYNTHIA L. MURPHY, and
TARA L. HUTCHINGS, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 12–14, 16–18, 21–26, 28–32, and 34. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed February 21, 2020), and the Examiner’s Answer (“Ans.,” mailed
March 16, 2020) and Final Office Action (“Final Act.,” mailed January 9,
2020). Appellant identifies Beijing Didi Infinity Technology and
Development Co., Ltd.., as the real party in interest (Appeal Br. 3).
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CLAIMED INVENTION
The Specification states that “[t]he present disclosure generally relates
to systems and methods for on-demand service, and in particular, systems
and methods for carpooling” (Spec. ¶ 2).
Claims 12 and 16 are the independent claims on appeal. Claim 12,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
12. A system configured to provide online
transportation services, comprising:
at least one storage medium including a set of instructions
to provide carpooling service to a user and a contact thereof, and
a plurality of prior agreements of carpooling, wherein each prior
agreement is predetermined between a user and a contact thereof
prior to a first online carpooling request and a second online
carpooling request for carpooling safety; and
logic circuits in wireless communication with a first
passenger terminal associated with a first passenger, and a
second passenger terminal associated with a second passenger
via at least one network, and in communication with the storage
medium, wherein when executing the set of instructions, the
logic circuits are directed to:
[(a)] obtain electronic signals including the first online
carpooling request including a carpooling service type, first
matching information and a first travel starting point from the
first passenger terminal, wherein the first matching information
is input by the first passenger via the first passenger terminal and
the first travel starting point is obtained by positioning
technology embedded in the first passenger terminal;
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[(b)] obtain electronic signals including the second
online carpooling request including the carpooling service type,
second matching information and a second travel starting point
from the second passenger terminal, wherein the second
matching information is input by the second passenger via the
second passenger terminal and the second travel starting point is
obtained by positioning technology embedded in the second
passenger terminal;
[(c)] determine whether the first matching information
matches the second matching information according to a logical
relationship between the first matching information and the
second matching information, wherein the first matching
information and the second matching information has a
predetermined one-to-one relationship specified in the prior
agreement;
[(d)] determine that before the logic circuit obtains the
electronic signals including the first online carpooling request
and the second online carpooling request, the first passenger and
the second passenger made a prior agreement of carpooling and
the prior agreement of carpooling was stored, as a code readable
by the logic circuits, in the at least one storage medium;
[(e)] upon determining that the first passenger and the
second passenger made the prior agreement of carpooling,
generate a confirmation notification of carpooling for
presentation via a user interface on the first passenger terminal
or the second passenger terminal, wherein the confirmation
notification includes identity of the first passenger or the second
passenger, an identifier of the first passenger terminal or the
second passenger terminal, and a route covering a first travel
starting point of the first passenger terminal, a second travel
starting point of the second passenger terminal, the first travel
destination of the first passenger terminal, the second travel
destination of the second passenger terminal, and
[(f)] obtain a success confirmation of a carpooling order
from the first passenger terminal, and/or the second passenger
terminal corresponding to the confirmation notification of
carpooling.
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REJECTION
Claims 12–14, 16–18, 21–26, 28–32, and 34 are rejected under
35 U.S.C. § 101 as directed to a judicial exception without significantly
more.
ANALYSIS
Appellant argues the pending claims as a group (Appeal Br. 8–13).
We select independent claim 12 as representative. The remaining claims
stand or fall with claim 12. See 37 C.F.R. §41.37(c)(1)(iv).
Under 35 U.S.C. § 101, a claim is patent eligible if it claims a “new
and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’”
to determine whether there are additional elements that “‘transform the
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nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 79, 78). This 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.’” Id. at 217–18 (alteration in original).
The U.S. Patent and Trademark Office (the “USPTO”) published
revised guidance on January 7, 2019, for use by USPTO personnel in
evaluating subject matter eligibility under 35 U.S.C. § 101. 2019 REVISED
PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 57
(Jan. 7, 2019) (the “2019 Revised Guidance”). That guidance revised the
USPTO’s examination procedure with respect to the first step of the
Mayo/Alice framework by (1) “[p]roviding groupings of subject matter that
[are] considered an abstract idea”; and (2) clarifying that a claim is not
“directed to” a judicial exception if the judicial exception is integrated into a
practical application of that exception. Id. at 50.
The first step, as set forth in the 2019 Revised Guidance (i.e.,
Step 2A), is, thus, a two-prong test. In Step 2A, Prong One, we look to
whether the claim recites a judicial exception, e.g., one of the following
three groupings of abstract ideas: (1) mathematical concepts; (2) certain
methods of organizing human activity, e.g., fundamental economic
principles or practices, commercial or legal interactions; and (3) mental
processes. 2019 Revised Guidance, 84 Fed. Reg. at 54. If so, we next
determine, in Step 2A, Prong Two, whether the claim as a whole integrates
the recited judicial exception into a practical application, i.e., whether the
additional elements recited in the claim beyond the judicial exception, apply,
rely on, or use the judicial exception in a manner that imposes a meaningful
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limit on the judicial exception, such that the claim is more than a drafting
effort designed to monopolize the judicial exception. Id. at 54–55. Only if
the claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application do we conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea. Id.
If the claim is determined to be directed to a judicial exception under
revised Step 2A, we next evaluate the additional elements, individually and
in combination, in Step 2B, to determine whether they provide an inventive
concept, i.e., whether the additional elements or combination of elements
amounts to significantly more than the judicial exception itself. Only then,
is the claim patent eligible. 2019 Revised Guidance, 84 Fed. Reg. at 56.
The Examiner determined here that independent claims 12 and 16
recite “concepts relating to tracking and organizing information for the
carpooling behaviors of persons and related relationships,” i.e., “commercial
interactions,” and “managing personal behavior or relationships or
interactions between people, social activities,” which both are a method of
organizing human activity and, therefore, an abstract idea (Final Act. 4), and
that the recited abstract idea is not integrated into a practical application (id.
at 4–6). The Examiner also determined that the independent claims do not
include additional elements sufficient to amount to significantly more than
the abstract idea itself (id. at 6–7), and that the dependent claims are patent
ineligible for substantially similar reasons (id. at 7).
Step One of the Mayo/Alice Framework (2019 Revised Guidance, Step 2A)
We are not persuaded by Appellant’s argument that the Examiner
erred in determining that claim 12 is directed to an abstract idea (Appeal
Br. 8–11). The Federal Circuit has explained that “the ‘directed to’ inquiry
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applies a stage-one filter to claims, considered in light of the specification,
based on whether ‘their character as a whole is directed to excluded subject
matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir.
2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a
specific improvement in relevant technology or on a process that itself
qualifies as an “abstract idea” for which computers are invoked merely as a
tool. See id. at 1335–36. Here, it is clear from the Specification (including
the claim language) that claim 12 focuses on an abstract idea, and not on any
improvement to technology and/or a technical field.
The Specification is titled “SYSTEMS AND METHODS FOR
CARPOOLING,” and describes, in the Background section, that “[a]s travel
cost is high for private transportation services and public transportation is
not convenient enough, carpooling service plays an important role for both
drivers and passengers” (Spec. ¶ 3). For security reasons, “people may not
wish to carpool with a stranger” (id.). “But, carpooling between
acquaintances and friends is widely welcomed and in high demand” (id.).
The claimed invention is ostensibly intended to meet this demand by
providing an online on-demand transportation service that provides a secure
and efficient service for both passengers and drivers by identifying sharable
and/or combinable transportation transactions, e.g., carpooling, between
acquaintances and friends (Spec. ¶¶ 28, 29). The Specification describes an
exemplary process for carpooling, with reference to Figure 8, in which a first
carpooling request, including first matching information and a first travel
starting point, is received from a first passenger terminal (id. ¶ 83). The first
matching information may include a number, a letter, a symbol, a character,
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an image, a sound, a code, or the like, or any combination thereof, and in
some embodiments, may be information predetermined by two or more
acquaintances and/or friends who request a carpooling service; the matching
information is used to confirm that acquaintances and/or friends have an
intention to carpool (id. ¶ 84).
In step 820 (Figure 8), a second carpooling request, including second
matching information and a second travel starting point, is received from a
second passenger terminal associated with a second passenger (id. ¶ 85).
The second carpooling request also may include a second travel starting
point, a second travel destination, a second starting time, and a second
identifier of the second passenger terminal (id. ¶ 86). If the first matching
information matches the second matching information, a carpooling order is
generated, and may include the identifier of the first passenger terminal, the
identifier of the second passenger terminal, the first travel starting point, the
second travel starting point, the first travel destination, the second travel
destination, the first starting time, the second starting time, or any
combination thereof (id. ¶ 96). Thereafter, a confirmation notification is
sent to the first and second passenger terminals (id. ¶ 97).
Consistent with this disclosure, claim 12 recites a system configured
to provide online transportation services comprising “at least one storage
medium including a set of instructions to provide carpooling service to a
user and a contact thereof, and a plurality of prior agreements of carpooling”
and “logic circuits in wireless communication with a first passenger terminal
associated with a first passenger, and a second passenger terminal associated
with a second passenger via at least one network, and in communication
with the storage medium.” Claim 12 recites that when executing the set of
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instructions, the logic circuits are directed to: (1) obtain a first online
carpooling request, including first matching information and a first travel
point, from a first passenger terminal, i.e.,
obtain electronic signals including the first online
carpooling request including a carpooling service type, first
matching information and a first travel starting point from the
first passenger terminal, wherein the first matching information
is input by the first passenger via the first passenger terminal and
the first travel starting point is obtained by positioning
technology embedded in the first passenger terminal
(step (a)); (2) obtain a second online carpooling request, including second
matching information and a second travel point, from a second passenger
terminal, i.e.,
obtain electronic signals including the second online
carpooling request including the carpooling service type, second
matching information and a second travel starting point from the
second passenger terminal, wherein the second matching
information is input by the second passenger via the second
passenger terminal and the second travel starting point is
obtained by positioning technology embedded in the second
passenger terminal
(step (b)); (3) determine whether the first matching information matches the
second matching information and, therefore, whether the first and second
passengers have a prior carpooling agreement, i.e.,
determine whether the first matching information matches
the second matching information according to a logical
relationship between the first matching information and the
second matching information, wherein the first matching
information and the second matching information has a
predetermined one-to-one relationship specified in the prior
agreement; [and]
determine that before the logic circuit obtains the
electronic signals including the first online carpooling request
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and the second online carpooling request, the first passenger and
the second passenger made a prior agreement of carpooling and
the prior agreement of carpooling was stored, as a code readable
by the logic circuits, in the at least one storage medium
(steps (c) and (d)); (4) generate a confirmation notification if the first and
second passengers have a prior carpooling agreement, i.e.,
upon determining that the first passenger and the second
passenger made the prior agreement of carpooling, generate a
confirmation notification of carpooling for presentation via a
user interface on the first passenger terminal or the second
passenger terminal, wherein the confirmation notification
includes identity of the first passenger or the second passenger,
an identifier of the first passenger terminal or the second
passenger terminal, and a route covering a first travel starting
point of the first passenger terminal, a second travel starting point
of the second passenger terminal, the first travel destination of
the first passenger terminal, the second travel destination of the
second passenger terminal
(step (e)); and “obtain a success confirmation of a carpooling order from the
first passenger terminal, and/or the second passenger terminal corresponding
to the confirmation notification of carpooling” (step (f)).
Appellant argues that the rejection of claim 12 cannot be sustained at
least because “the subject matter of claim 12 is not simply ‘organizing
human activities’” (Appeal Br. 10). Appellant asserts that the claimed
subject matter is “rather resolving a safety issue rooted in the modern online
carpooling transportation service, which did not exist in long prevalent taxi
services, since a taxi driver, filtered by an established taxi company, is
usually considered safe” (Appeal Br. 9). But, Appellant cannot reasonably
deny that claim 12 recites providing online transportation services, i.e.,
commercial interactions.
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Claim 12 also involves determining whether a first passenger making
a first online carpooling request and a second passenger making a second
online carpooling request have a prior carpooling agreement, and generating
a “confirmation notification” only if such an agreement was made, i.e.,
managing relationships or interactions between people. As such, we agree
with the Examiner that the claim limitations, when given their broadest
reasonable interpretation, recite a method of organizing human activity and,
therefore, an abstract idea. See 2019 Revised Guidance, 84 Fed. Reg. at 52.
We also are not persuaded by Appellant’s argument that claim 12
recites additional elements that integrate the judicial exception, i.e., the
recited abstract idea, into a practical application under Step 2A, Prong Two
(Appeal Br. 10–11).
The 2019 Revised Guidance references MANUAL OF PATENT
EXAMINING PROCEDURE, Ninth Edition (rev. Jan 2018) (available at
https://mpep.uspto.gov/RDMS/MPEP/E9_R-08.2017.) § 2106.05(a)–(c) and
(e) in non-exhaustively listing considerations indicative that an additional
element or combination of elements may have integrated the recited judicial
exception into a practical application. 2019 Revised Guidance, 84 Fed. Reg.
at 55. In particular, the Guidance describes that an additional element may
have integrated the judicial exception into a practical application if the
additional element (1) reflects an improvement in the functioning of a
computer or an improvement to other technology or technical field;
(2) applies or uses the judicial exception to effect a particular treatment or
prophylaxis for a disease or medical condition; (3) implements the judicial
exception with, or uses the judicial exception with, a particular machine or
manufacture integral to the claim; (4) effects a transformation or reduction
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of an article to a different state or thing; or applies; or (5) applies or uses the
judicial exception in some other meaningful way beyond generally linking
the use of the judicial exception to a particular technological environment,
such that the claim as a whole is more than a drafting effort designed to
monopolize the exception. Id.
Appellant maintains here that “the claimed invention is directed to
subject matter that provide[s] a safe carpooling solution focusing [on]
addressing the problems arising in only the context of the online carpooling
transportation service” (Appeal Br. 10), and that the additional elements
recited in claim 12 include:
(1) coded “prior agreement is predetermined between a user and
a contact thereof prior to a first online carpooling request and a
second online carpooling request for carpooling safety”; (2) “the
first matching information is input by the first passenger via the
first passenger terminal”; (3) “the second matching information
is input by the second passenger via the second passenger
terminal”; (4) “the first matching information and the second
matching information has a predetermined one to-one
relationship specified in the prior agreement”; (5) “the prior
agreement of carpooling was stored, as a code readable by the
logic circuits, in the at least one storage medium”; (6) “upon
determining that the first passenger and the second passenger
made the prior agreement of carpooling, generate a confirmation
notification”; [and] (7) “the confirmation notification includes
identity of the first passenger or the second passenger, an
identifier of the first passenger terminal or the second passenger
terminal, and an route covering a first travel starting point of the
first passenger terminal, a second travel starting point of the
second passenger terminal, the first travel destination of the first
passenger terminal, the second travel destination of the second
passenger terminal.”
Id. But, even putting aside whether these elements are “additional
elements,” as opposed to being part of the abstract idea itself, we fail to see
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how, and Appellant does not adequately explain how these elements
integrate the abstract idea, i.e., providing carpooling services, into a
“practical application,” as that phrase is used in the 2019 Revised Guidance.
Appellant asserts that “[t]hese additional elements limit an ordinary
online carpooling services by reciting a specific safety filtering
mechanism in which the services requests are matched based thereon”
(Appeal Br. 10). Yet, we find no indication in the Specification, nor does
Appellant direct us to any indication, that the operations recited in claim 12
invoke any allegedly inventive programming, e.g., an inventive filtering
technique, require any specialized computer hardware or other inventive
computer components, i.e., a particular machine, or that the claimed
invention is implemented using other than generic computer components to
perform generic computer functions, e.g., comparing one item of stored
information to another. See DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no
doubt: recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible.”).
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record that attributes an
improvement in technology and/or a technical field to the claimed invention
or that otherwise integrates the recited abstract idea into a practical
application,” as set forth in the 2019 Revised Guidance.
We also note for the record that the relevant question under Step 2A,
Prong 2 is not whether the claimed invention itself is a practical application;
instead, the question is whether the claim includes additional elements
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beyond the judicial exception that integrate the judicial exception into a
practical application. The Examiner determined here, and we agree, that the
only additional elements recited in claim 12 beyond the abstract idea are “at
least one storage medium”; “logic circuits”; “a first passenger terminal”; “a
second passenger terminal”; “at least one network”; and “a user interface”
on the first or second passenger terminal — elements that, as the Examiner
observes, are recited at a high level of generality, i.e., as generic computer
components (Final Act. 6 (citing Spec. ¶¶ 30–35, 44, 104)).
We conclude, for the reasons outlined above, that claim 12 recites a
method of organizing human activity, i.e., an abstract idea, and that the
additional elements recited in the claim beyond the abstract idea are no more
than generic computer components used as tools to perform the recited
abstract idea. As such, they do not integrate the abstract idea into a practical
application. See Alice Corp., 573 U.S. at 223–24 (“[W]holly generic
computer implementation is not generally the sort of ‘additional featur[e]’
that provides any ‘practical assurance that the process is more than a drafting
effort designed to monopolize the [abstract idea] itself.’” (quoting Mayo,
566 U.S. at 77)). Accordingly, we agree with the Examiner that claim 12 is
directed to an abstract idea.
Step Two of the Mayo/Alice Framework (2019 Revised Guidance, Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 12 is directed to an abstract idea, we next consider under Step 2B of
the 2019 Revised Guidance, the second step of the Mayo/Alice framework,
whether claim 12 includes additional elements or a combination of elements
that provides an “inventive concept,” i.e., whether an additional element or
combination of elements adds specific limitations beyond the judicial
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exception that are not “well-understood, routine, conventional activity” in
the field (which is indicative that an inventive concept is present) or simply
appends well-understood, routine, conventional activities previously known
to the industry to the judicial exception. 2019 Revised Guidance,
84 Fed. Reg. at 56.
Appellant ostensibly maintains that claim 12 includes additional
elements or a combination of elements that provides an inventive concept,
i.e., that claim 12 includes improvements to the functioning of an online
transportation system, and, thus, qualifies as “significantly more,” because it
takes “less time to form a guaranteed safe carpooling order in the presence
of the combined elements of claim 12, . . . reducing computing load of the
online transportation service system” (Appeal Br. 12). Appellant asserts that
because a prior carpooling agreement between two or more persons is stored
in the storage medium of the system before receiving a first or second
carpooling request, “when there are a large number of carpooling requests,
the system may determine whether any two or more of the larger number of
carpooling requests can generate a safe carpooling order rapidly and
immediately” (id. at 9). Yet, we fail to see how, and Appellant does not
adequately explain how, storing a carpooling agreement before receiving a
carpooling request impacts the speed at which a carpooling order is
generated, i.e., allows the carpooling order to be generated “rapidly and
immediately.”
Also, to the extent Appellant intends, by its argument, to reference
steps (c) and (d) as the inventive concept, we note that these steps are part of
the abstract idea itself. They are not additional elements to be considered in
determining whether claim 12 includes additional elements or a combination
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of elements sufficient to amount to significantly more than the judicial
exception.
It could not be clearer from Alice, that under step two of the
Mayo/Alice framework, the elements of each claim are considered both
individually and “as an ordered combination” to determine whether the
additional elements, i.e., the elements other than the abstract idea itself,
“transform the nature of the claim” into a patent-eligible application. Alice
Corp., 573 U.S. at 217 (citation omitted); see Mayo, 566 U.S. at 72–73
(requiring that “a process that focuses upon the use of a natural law also
contain other elements or a combination of elements, sometimes referred to
as an ‘inventive concept,’ sufficient to ensure that the patent in practice
amounts to significantly more than a patent upon the natural law itself”
(emphasis added) (citation omitted)). In other words, the inventive concept
under step two of the Mayo/Alice test cannot be the abstract idea itself:
It is clear from Mayo that the “inventive concept” cannot be the
abstract idea itself, and Berkheimer . . . leave[s] untouched the
numerous cases from this court which have held claims ineligible
because the only alleged “inventive concept” is the abstract idea.
Berkheimer v. HP Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J.,
concurring); see also 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.”).
Here, the Examiner determined and we agree, that the only additional
elements recited in claim 12 beyond the abstract idea are generic computer
components, i.e., “at least one storage medium”; “logic circuits”; “a first
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passenger terminal”; “a second passenger terminal”; “at least one network”;
and “a user interface” on the first or second passenger terminal, used as tools
to perform the recited abstract idea (Final Act. 6) — a determination amply
supported by and fully consistent with the Specification (see, e.g., Spec.
¶¶ 30–35, 44, 104). Appellant cannot reasonably maintain that there is
insufficient factual support for the Examiner’s determination that the
operation of these components is well-understood, routine, or conventional,
where, as here, there is nothing in the Specification to indicate that the
operations recited in claim 12 require any specialized hardware or inventive
computer components or that the claimed invention is implemented using
other than generic computer components to perform generic computer
functions, e.g., receiving, storing, and processing information. Indeed, the
Federal Circuit, in accordance with Alice, has “repeatedly recognized the
absence of a genuine dispute as to eligibility” where claims have been
defended as involving an inventive concept based “merely on the idea of
using existing computers or the Internet to carry out conventional processes,
with no alteration of computer functionality.” Berkheimer, 890 F.3d at 1373
(Moore, J., concurring) (internal citations omitted); see also BSG Tech LLC,
899 F.3d at 1291 (“BSG Tech does not argue that other, non-abstract
features of the claimed inventions, alone or in combination, are not well-
understood, routine and conventional database structures and activities.
Accordingly, the district court did not err in determining that the asserted
claims lack an inventive concept.”).
Appellant also misapprehends the controlling precedent to the extent
Appellant maintains that claim 12 is patent eligible (i.e., that claim 12 recites
elements that qualify as “significantly more” and are not “well-understood,
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routine, and conventional”) based on the lack of any claim rejections under
35 U.S.C. §§ 102 and 103 (Appeal Br. 13). Neither a finding of novelty nor
a non-obviousness determination automatically leads to the conclusion that
the claimed subject matter is patent eligible. Although the second step in the
Mayo/Alice framework is termed a search for an “inventive concept,” the
analysis is not an evaluation of novelty or non-obviousness, but rather, a
search for “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 Corp., 573 U.S. at 217–18
(citation omitted). “Groundbreaking, innovative, or even brilliant discovery
does not by itself satisfy the § 101 inquiry.” Ass’n for Molecular Pathology
v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and non-
obvious claim directed to a purely abstract idea is, nonetheless, patent
ineligible. See Mayo, 566 U.S. at 90; see also Diamond v. Diehr, 450 U.S.
175, 188–89 (1981) (“The ‘novelty’ of any element or steps in a process, or
even of the process itself, is of no relevance in determining whether the
subject matter of a claim falls within the § 101 categories of possibly
patentable subject matter.”).
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 12 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection of claim 12, and claims 13, 14, 16–18, 21–
26, 28–32, and 34, which fall with claim 12.
Appeal 2020-004544
Application 15/784,271

19
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
12–14, 16–
18, 21–26,
28–32, 34
101 Eligibility 12–14, 16–
18, 21–26,
28–32, 34

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