Ex Parte McMullen et al

Patent Trials and Appeals Board

Aug 28, 2018

13830224 - (D) (P.T.A.B. Aug. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/830,224 03/14/2013 Brian Richard McMullen
110654 7590 08/30/2018
Mahamedi IP Law LLP (Uber)
910 Campisi Way, Suite IE
Campbell, CA 95008
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
UP-007 3469
EXAMINER
BRADY, MARIE P.
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
08/30/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
uspto@m-iplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN RICHARD MCMULLEN,
MINA RADHAKRISHNAN, RY AN MCKILLEN,
and AMOS BARRET0 1
Appeal2017-002563
Application 13/830,224
Technology Center 3600
Before JOSEPH L. DIXON, JAMES R. HUGHES, and
SCOTT B. HOWARD, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1, 2, 5-7, 21, 22, 25-30, and 33.
Claims 3, 4, 8-20, 23, 24, 31, and 32 have been canceled. Final Act. 1-2;
Appeal Br. 3. 2 We have jurisdiction under 35 U.S.C. § 6(b).
1 According to Appellants, the real party in interest is Uber Technologies,
Inc. Appeal Br. 3.
2 We refer to Appellants' Specification ("Spec.") filed Mar. 14, 2013;
Appeal Brief ("Appeal Br.") filed June 30, 2016; and Reply Brief ("Reply
Br.") filed Nov. 23, 2016. We also refer to the Examiner's Final Office
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Application 13/830,224
We affirm.
Appellants' Invention
The invention generally relates to "location-aware, mobile computing
devices" for the "promotion of [transport] services" (Spec. ,r 1) and, more
particularly, computer-readable media and methods for generating and
applying promotions for use with transport services. The transport service
promotion process (method) defines a geometric boundary (geofence) from
map input (geometric/geographic data) received from a promoter, specifying
locations on a map defining a geometric boundary and creates a promotion
( e.g., a fare reduction) linked to conditional parameters and the geofence,
including: a start location for the transport service within a designated region
(geofence ), and a destination location for the transport request within the
geofence. The method receives a communication ( a request for a transport
service) generated by a client application operating on the mobile computing
device transmitted over a network. Spec. ,r,r 8-12, 20-23, 29-32, 39, 42, 49,
50, 52-55, 57----66; Abstract.
Representative Claim
Independent claim 1, reproduced below, further illustrates the
invention:
1. A method for generating and applying promotions
for use with transport services, the method being performed by a
transport arrangement system and comprising:
providing, on a display of a computing device, a user
interface that includes a map;
Action (Final Rejection) ("Final Act.") mailed July 30, 2015, and Answer
("Ans.") mailed Sept. 23, 2016.
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defining a geofence from map input provided by a
promoter, the map input specifying at least three locations on the
map which define a geometric boundary within a city;
creating a record of a promotion which links a fare
reduction to satisfaction of a set of conditional parameters, the
set of conditional parameters including (i) a first conditional
parameter which is satisfied when a start location for a transport
service is within a designated region of the city; and (ii) a second
conditional parameter which is satisfied when a destination
location for the transport request is within the geometric
boundary of the geofence;
rece1vmg, over one or more networks from a mobile
computing device of the first user, one or more communications,
wherein the one or more communications includes a request for
a transport service that is generated by a client application
operating on the mobile computing device, wherein the request
includes a corresponding start location based on a current
location of the mobile computing device at a time the request is
made;
wherein the one or more communications also include a
corresponding destination location that is different from the at
least three locations used to define the geofence, but within the
boundary of the geofence;
determining that the transport service satisfies each
conditional parameter of the set of conditional parameters for the
record of the promotion, based on the corresponding start
location and the corresponding destination location; and
in response to determining that the transport service
satisfies each of the set of conditional parameters, automatically
applying the fare reduction for the transport service.
Rejection on Appeal
The Examiner rejects claims 1, 2, 5-7, 21, 22, 25-30, and 33 under 35
U.S.C. § 101 as being directed to patent-ineligible subject matter.
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ISSUE
Based upon our review of the record, Appellants' contentions, and the
Examiner's findings and conclusions, the issue before us follows:
Did the Examiner err in finding Appellants' claims were directed to
patent ineligible subject matter under 35 U.S.C. § 101?
ANALYSIS
Appellants argue independent claims 1, 21, and 28 (as well as
dependent claims 2, 5-7, 22, 25-27, 29, 30, and 33) together as a group with
respect to the§ 101 rejection. See Appeal Br. 8-15. We select independent
claim 1 as representative of Appellants' arguments with respect to claims 1,
2, 5-7, 21, 22, 25-30, and 33. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner rejects claim 1 (and claims 2, 5-7, 21, 22, 25-30, and
33) under § 101 as being directed to an abstract idea-"generating and
applying promotions for use with a transport service which is considered to
be an abstract idea [in that the] activity is considered a fundamental
economic practice"-and the claim does not "include additional elements
that are sufficient to amount to significantly more than the judicial exception
because the claims merely amount to the application or instructions to apply
the abstract idea." Final Act. 2. The Examiner further determines that the
elements of the method (process), taken alone and in combination, execute
"generic computer functionalities which are well-understood, routine and
conventional activities previously known to the industry." Final Act. 3.
Also, the Examiner determines that the claim does not "effect an
improvement to another technology or technical field; the claims do not
amount to an improvement to the functioning of a computer itself; and the
claims do not move beyond a general link of the use of an abstract idea to a
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particular technological environment." Final Act. 3. Additionally, the
Examiner determines that the claim "merely amount[ s] to the application or
instructions to apply the abstract idea ... on computing devices," which in
tum "amount to nothing more than ... a generic computer system." Final
Act. 3--4. The Examiner further concludes, in the Examiner's Answer, that
claim 1 recites a fundamental economic activity analogous to the claims
found patent ineligible in buySAFE. See Ans. 5-6.
Appellants contend the Examiner failed to provide a proper analysis to
establish a prima facie case (under the first part of the Alice analysis) that the
claims are directed to an abstract idea (see Appeal Br. 9-13) and the abstract
idea identified by the Examiner is an "overly broad generalization" (Appeal
Br. 12) of Appellants' invention (see Appeal Br. 10-12). See Appeal Br. 9-
13; Reply Br. 2-7. Appellants further contend claim 1 "provides
significantly more than the abstract idea itself," "do[ es] affect improvement
to a technological field of on-demand transport services," and "do[ es] more
than link the abstract idea to the particular technological environment."
Appeal Br. 13. Additionally, Appellants contend their claims are analogous
to those found to contain patent-eligible subject matter in Enfzsh. See
Appeal Br. 14--15. In their Reply Brief, Appellants contend the Examiner's
rejection is faulty for a number of reasons: (1) the Examiner improperly
analyzed claim 1 under the Alice step 1 test (see Reply Br. 2-3); (2) the
Examiner disregarded Enfish, which is controlling case law (see Reply Br.
3--4); (3) the Examiner did not analyze the claims as a whole (see Reply Br.
4--6); (4) the Examiner did not support the assertion that the claims are
directed to a fundamental economic practice and the claims are not
analogous to those in buySAFE (see Reply Br. 6-7). Finally, Appellants
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contend their claims are not directed to an abstract idea and amount to
significantly more than the alleged abstract idea. See Reply Br. 7-12.
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
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, 77-80 (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, 134 S. Ct.
at 2355. Assuming that a claim nominally falls within one of the statutory
categories of machine, manufacture, process, or composition of matter, the
first step in the analysis is to "determine whether the claims at issue are
directed to one of those patent-ineligible concepts" (id.), e.g., to an abstract
idea. For example, abstract ideas include, but are not limited to,
fundamental economic practices, methods of organizing human activities, an
idea of itself, and mathematical formulas or relationships. Id. at 23 55-57. If
the claims are not directed to 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 the additional elements 'transform the nature of the claim' into a
patent-eligible application." Alice, 134 S. Ct. at 2355 ( quoting Mayo, 566
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U.S. at 78-79). This second step is described as "a search for an "'inventive
concept"'-i.e., an element or combination of elements that is ' ...
significantly more than ... the [ineligible concept] itself."' Id. at 2355
(alteration in original) (quoting Mayo, 566 U.S. at 72-73).
The Court acknowledged in Mayo, that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. We, therefore, look to whether the
claims describe a specific improvement of the relevant technology or are
instead directed to a result that itself is the abstract idea. See Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
Alice Step 1 Analysis
Turning to the first step of the eligibility analysis, "the first step in the
Alice inquiry ... 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 1335-36. "The abstract idea exception
prevents patenting a result where 'it matters not by what process or
machinery the result is accomplished."' McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016) (quoting O'Reilly v.
Morse, 56 U.S. (15 How.) 62, 113 (1853)). "We therefore look to whether
the claims ... focus on a specific means or method that improves the
relevant technology or are instead directed to a result or effect that itself is
the abstract idea and merely invoke generic processes and machinery."
McRO, 837 F.3d at 1314.
The Examiner finds independent claim 1 is directed to the abstract
idea of "generating and applying promotions for use with a transport
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service." Final Act. 2. The Examiner further finds the claim describes a
"contractual relationship" analogous to the claims in buySAFE (see Ans. 5-
6), which is a "fundamental economic practice." See Final Act. 2; Ans. 5---6
(referencing buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1353-54 (Fed.
Cir. 2014)). Conversely, the Appellants attack the Examiner's findings as
being an inaccurate characterization, lacking support for the assertion that
the claims are directed to a fundamental economic practice, and the
Examiner's reasoning and analysis do not include sufficient substance to rise
to the level of a prima facie showing. See Appeal Br. 9-13; Reply Br. 2-7.
Appellants also contend the claims are not directed to an abstract idea and
are analogous to the claims in Enfzsh. See Appeal Br. 14--15; Reply Br. 7-9.
We agree with the Examiner that Appellants' claim 1 ( and the other pending
claims) are directed to patent-ineligible abstract ideas or concepts.
With respect to Appellants' prima facie case and evidentiary
contentions, Appellants misconstrues the relevant law and precedent. The
Federal Circuit has repeatedly noted that "the prima facie case is merely a
procedural device that enables an appropriate shift of the burden of
production." Hyatt v. Dudas, 492 F.3d. 1365, 1369 (Fed. Cir. 2007) (citing
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). Therefore, the USPTO
carries its procedural burden of establishing a prima facie case when its
rejection satisfies the requirements of 3 5 U.S. C. § 13 2 by notifying the
applicant of the reasons for rejection, "together with such information and
references as may be useful in judging of the propriety of continuing the
prosecution of [the] application." In re Jung, 637 F.3d 1356, 1362 (Fed. Cir.
2011) (internal quotations omitted). Thus, a prima facie rejection need only
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set forth the statutory basis of the rejection in a sufficiently articulate and
informative manner as to meet the notice requirement of§ 132. Id.
Here, in rejecting claims 1, 2, 5-7, 21, 22, 25-30, and 33 under 35
U.S.C. § 101, the Examiner analyzed the claims using the Mayo/Alice two-
step framework, consistent with the guidance set forth in the USPTO' s
"2014 Interim Guidance on Patent Subject Matter Eligibility," 79 Fed. Reg.
74618 (Dec. 16, 2014), in effect at the time the rejection was made, i.e., on
July 30, 2015. The Examiner notified Appellants of the reasons for the
rejection "together with such information and references as may be useful in
judging of the propriety of continuing the prosecution of [the] application."
35 U.S.C. § 132. See Final Act. 2-5. And, contrary to Appellants'
assertions, in doing so, the Examiner set forth a prima facie case of
unpatentability regarding patent-ineligiblity such that the burden shifted to
Appellants to demonstrate that the claims are patent-eligible.
Appellants ostensibly argue that evidentiary support ( comparative
examples of cases having similar claims) is required to establish a prima
facie case of patent-ineligibility-"the Examiner is required to identify prior
case decisions or precedence ... which were deemed to be abstract and
which pertained to 'promotions for use with a transport service.' See Enfish
at 9-10." Appeal Br. 10-11 (citing Enfish, 822 F.3d at 1335-36). We,
however, are aware of no controlling precedent that requires the Office to
provide factual evidence to support a finding that a claim is directed to an
abstract idea. Although it may be useful in some circumstances to compare
the claims at issue with those in earlier cases in which a similar issue of
patent-eligibility has been decided, such a comparison, contrary to
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Appellants' suggestion (see Appeal Br. 10-11 ), is not required for a prima
facie showing.
With respect to Appellants' characterization contentions, claim 1
delineates a method of "generating and applying promotions for use with
transport services" ( claim 1 ). The method for generating and applying
promotions is performed by a transport arrangement system, and includes
steps of displaying a user interface including a map and defining a geofence
(geometric boundary) using data (map input) provided by a promoter, where
the data specifies three or more map locations. The method further includes
the step of creating a promotion (promotion record) linking a fare reduction
to satisfaction of a set of conditional parameters. The set of conditional
parameters includes a first conditional parameter satisfied when a transport
service start location occurs within a designated region and a second
conditional parameter satisfied when a transport service end location
( destination location for the transport request) is within the geofence. The
method also includes steps of: generating a request for the transport service
using a client application operating on a mobile computing device, where the
request includes a start location (based on a current location of the mobile
computing device at a time the request is made) and a destination location;
receiving the request communication from the mobile computing device;
determining that the transport service satisfies each conditional parameter of
the promotion (record of the promotion); and, in response to determining
that the transport service satisfies each conditional parameter, applying the
fare reduction for the transport service. In sum, as the Examiner concludes,
claim 1 is directed to a series of steps for generating and applying
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promotions for use with transport services, which is a fundamental economic
practice, i.e., an abstract idea. Final Act. 2; Ans. 3---6.
Although we could characterize claim 1 with more detail, for
example, as being directed to communicating and manipulating or
comparing data to effect a transfer of funds, this does not change the patent-
eligibility analysis. Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-41
(Fed. Cir. 2016) ("An abstract idea can generally be described at different
levels of abstraction .... The Board's slight revision of its abstract idea
analysis does not impact the patentability analysis.").
Utilizing the above-identified characterization, we analyze whether
claim 1 is directed to an abstract idea. Instead of using a fixed definition of
an abstract idea and analyzing how claims fit ( or do not fit) within the
definition, "the decisional mechanism courts now apply is to examine earlier
cases in which a similar or parallel descriptive nature can be seen - what
prior cases were about, and which way they were decided." Amdocs (Isr.)
Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (citing
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir.
2016)). As part of this inquiry, we must "look at the 'focus of the claimed
advance over the prior art' to determine if the claim's 'character as a whole'
is directed to excluded subject matter." Affinity Labs of Texas, LLC v.
DirecTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016).
Here, Appellants' claims generally, and independent claim 1 in
particular, relate to collecting and communicating information and
analyzing/manipulating information to generate a promotion ( a promotional
offer), determine if the promotion criteria (parameters) are satisfied, and
apply the promotion (see discussion supra). That is, Appellants' claims
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relate to collecting, analyzing, manipulating, and communicating data
utilizing un-recited processes or algorithms to provide a result (apply a
promotion). Making promotional offers and fulfilling (applying) the
promotion when it is accepted and satisfied (by a user) is a commercial
transaction-a fundamental economic practice (see infra). Therefore, the
claims broadly recite collecting, analyzing, manipulating, and transferring
information (data) relating to fundamental economic activities (promotions).
See Abstract; Spec. ,r,r 8-12. This is consistent with how Appellants
describes the claimed invention. See Appeal Br. 4--5 ( citing Spec. ,r,r 9, 11,
12, 20, 21, 23, 29, 30, 32, 38, 39, 42, 49, 50, 52-55, and 57-66). Contrary
to Appellants' assertions (see Appeal Br. 14--15; Reply Br. 7-9), the present
claims are directed to an abstract idea, in that the instant claims are
analogous to a number of cases in which courts have identified similar
claims as encompassing abstract ideas.
Our reviewing court has held that abstract ideas include online
commercial transactions and processing payments, which are fundamental
economic practices. In Inventor Holdings, the Federal Circuit considered
claims reciting, for example, "[a] method of processing a payment for a
purchase of goods." Inventor Holdings, LLC v. Bed Bath & Beyond, Inc.,
876 F.3d 1372, 1374 (Fed. Cir. 2017). The Federal Circuit found those
claims to be "manifestly directed to an abstract idea, ... accurately
described as 'local processing of payments for remotely purchased goods."'
Inventor Holdings, 876 F.3d at 1378. Further, the court opined that "[a]s we
explained in [Dealertrack], the abstract idea exception to patent eligibility
disallows the patenting of 'basic concept[ s],' such as 'processing
information through a clearinghouse."' Id. ( quoting Dealertrack, Inc. v.
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Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012)). Similarly, in buySAFE, the
Federal Circuit considered claims reciting sending and receiving
communications over a computer network to facilitate online commercial
transactions. buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1351-52 (Fed.
Cir. 2014). The court determined that "[t]he claims are squarely about
creating a contractual relationship" (id. at 1355), and because contractual
relations are "intangible entities" (id. at 1353) and "a fundamental economic
practice" (id. at 1354) the claims were directed to an abstract idea. See
buySAFE, 765 F.3d at 1353-55. The Federal Circuit further explained that
the Supreme Court in both Alice and Bilski "relied on the fact that the
contractual relations at issue constituted 'a fundamental economic practice
long prevalent in our system of commerce.'" Bilski v. Kappas, 561 U.S.
593, 611 (2010); see Alice, 134 S.Ct. at 2356, 2357.
Our reviewing court has also held that abstract ideas include
gathering, analyzing, and manipulating information. Elec. Power, 830 F.3d
at 1354 (finding claims directed to a "combination of ... abstract-idea
processes ... of gathering and analyzing information" to be abstract).
Similarly, our reviewing court has held that abstract ideas include gathering,
analyzing, and storing information. See Two-Way Media Ltd. v. Comcast
Cable Commc 'ns, LLC., 874 F.3d 1329, 1337-38 (Fed. Cir. 2017) (finding
claims directed to the functional results of accumulating, converting, and
monitoring records manipulate data "but fail[] to do so in a non-abstract
way" (id. at 1338)); Content Extraction & Transmission LLC v. Wells Fargo
Bank, Nat'! Ass 'n, 776 F.3d 1343, 1345--47 (Fed. Cir. 2014) (finding the
"claims generally recite ... extracting data ... [and] recognizing specific
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information from the extracted data" (id. at 1345) and that the "claims are
drawn to the basic concept of data recognition" (id. at 1347)).
In Credit Acceptance Corp., claims reciting financial transactions
( claims "directed to the abstract idea of processing an application for
financing a purchase") were found to be directed to "a fundamental
economic practice long prevalent in our system of commerce," similar to
Inventor Holdings and buySAFE. Credit Acceptance Corp. v. Westlake
Servs., 859 F.3d 1044, 1054 (Fed. Cir. 2017) (internal quotations and
citations omitted). The court also held that automating previously manual
processing of commercial transactions (loan applications) did not improve
the functionality of a computer. According to the Federal Circuit,
[ o ]ur prior cases have made clear that mere automation of manual
processes using generic computers does not constitute a
patentable improvement in computer technology. In those cases,
"the focus of the claims is not on such an improvement in
computers as tools, but on certain independently abstract ideas
that use computers as tools."
Credit Acceptance Corp., 859 F.3d at 1055 (quoting Elec. Power Grp., 830
F.3d at 1354). In other words, combining abstract concepts, such as
collecting and analyzing information relating to fundamental economic
practices also results in claims directed to patent-ineligible subject matter.
In the instant claims, specifically claim 1, the collection, analysis,
manipulation, and communication of information ( data}--in the form of
receiving map data (from a promoter), analyzing and manipulating that data
to define a geofence, storing data (by creating/ generating a promotion record
linking a fare reduction to satisfaction of a set of conditional parameters),
and analyzing receiving information (a request for transport services from a
mobile computing device) to determine if the conditional parameters of the
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promotion are satisfied-are analogous to the abstract ideas of collecting,
analyzing, and manipulating information discussed in Elec. Power, Two-
Way Media, and Content Extraction. Further, generating and applying
promotions is analogous to the fundamental economic practices found to be
abstract ideas in Credit Acceptance Corp., Inventor Holdings, and buySAFE.
Appellants' claims can also be distinguished from patent-eligible
claims such as those in Enfish ( directed to "a specific improvement to the
way computers operate." Enfish, 822 F.3d at 1336). Appellants' claims are
directed to the results of data analysis and manipulation to generate and
apply promotions ( a fundamental economic practice) rather than "a
particular way of performing" or "inventive technology for performing those
functions," i.e., "achiev[ing] these results in a non-abstract way." Two-Way
Media, 874 F.3d at 1337-38 (internal quotations omitted). In other words,
"the focus of the claims is not on such an improvement in computers as
tools, but on certain independently abstract ideas that use computers as
tools." Elec. Power Grp., 830 F.3d at 1354.
Thus, we agree with the Examiner that the claims are directed to the
abstract ideas of collecting, analyzing, and manipulating information
utilizing a computer, resulting in a fundamental economic practice. Notably,
this characterization is consistent with Appellants' description of the claimed
invention. See Spec. ,r,r 9 (the "promotion system can provide, on a display
device, one or more user interfaces" enabling a promoter to create
"promotions for a service" including "on-demand ... location-based[]
services, and/ or transport services"), 16 ( the method "may be implemented,
in whole or in part, on computing devices, such as mobile computing
devices, access points, desktop computers, cellular or smart phones, laptop
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computers, servers, or routers") and 17 (the method "may be implemented
through the use of instructions that are executable by one or more
processors").
Alice Step 2 Analysis
Having found Appellants' claims are directed to an abstract idea under
Alice's step 1 analysis, we next address whether the claims add significantly
more to the alleged abstract idea. As directed by our reviewing court, we
search for an "'inventive concept' sufficient to 'transform the nature of the
claim into a patent-eligible application."' McRO, 837 F.3d at 1312 ( quoting
Alice, 134 S. Ct. at 2355). The implementation of the abstract idea involved
must be "more than performance of 'well-understood, routine, [and]
conventional activities previously known to the industry."' Content
Extraction, 776 F.3d at 1347--48 (alteration in original) (quoting Alice, 134
S. Ct. at 2359). The "inventive concept" "must be significantly more than
the abstract idea itself, and cannot simply be an instruction to implement or
apply the abstract idea on a computer." BASCOM Global Internet Servs.,
Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016) (citation
omitted).
Here, the Examiner determined that Appellants' claims do not add
significantly more. See Final Act. 2--4; Ans. 7-11. Appellants, on the other
hand, contend the claims are directed to significantly more than an abstract
idea, inter alia, the "elements of Claim 1 (e.g., 'creating a record' that
includes 'conditional parameters'; 'determining that the transport service
satisfies each conditional parameter') are grounded in technology, and
address a problem specific to on-demand transport services." Appeal Br. 14.
Appellants further assert the instant claims "recite a specific discrete
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implementation" that "requires the performance of an ordered combination
of discrete and specific steps, many of which are individually
unconventional," and "the ordered combination of claims elements is
unconventional." Reply Br. 11 (citing BASCOM, 827 F.3d 1341 and DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)).
Appellants fails to persuade us of error in the Examiner's rejection
with respect to the second Alice step. Here, Appellants conflate the Alice
two-part analysis and does not address the Examiner's findings. To the
extent Appellants' arguments invoke DDR Holdings (see Reply Br. 10}-in
that the instant claims improve the operation of a computer system-we
disagree. In DDR Holdings, the court held that a claim may amount to more
than an abstract idea recited in the claims when it addresses and solves
problems only encountered with computer technology and online
transactions, e.g., by providing (serving) a composite web page rather than
adhering to the routine, conventional functioning of Internet hyperlink
protocol. See DDR Holdings, 773 F.3d at 1257-59. In contrast, claim 1
simply transfers, analyzes, and manipulates data using known conventional
computers and/or equipment, to generate and apply promotions. See supra;
Spec. ,r,r 9, 16, 17. Despite Appellants' arguments to the contrary
(analogizing their claims to those in BASCOM), nothing in the claim recites
a "specific improvement to the way computers operate" (supra). The
communication, analysis, and manipulation of information to generate and
apply promotions by conventional means, is not a solution to a technical
problem as discussed in DDR Holdings.
Rather, generating and applying promotions, are commercial solutions
to conventional financial transactions, not a technical solution to a computer
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Application 13/830,224
or networking problem. This commercial solution may be assisted using a
general purpose computer ( servers and mobile devices) to perform the data
communication, collection, analysis, and manipulation processes, but does
not improve how the computers themselves function. As we previously
explained, the instant claims are more akin to the claims for analyzing
information found to be abstract in Electric Power Group, 830 F.3d at 1353.
We agree with the Examiner that the additional limitations, separately,
or as an ordered combination, do not provide meaningful limitations (i.e., do
not add significantly more) to transform the abstract idea into a patent
eligible application. See e.g., Final Act. 2--4; Ans. 7-11. The claim merely
recites functions (processes) for communicating, analyzing, and
manipulating data using known conventional computers and/or equipment to
effect commercial transactions (generating and applying promotions) based
on the analyzed and manipulated data. Such steps are all routine and
conventional and well-understood computer functions of a general
processor. The Specification supports this view (see supra) in discussing the
processes implemented using known ( conventional) mobile devices,
networks, and generic computers (servers) to perform the recited data
communication, analysis, and manipulation steps for the promotions. Such
conventional computer and communication processes "do not alone
transform an otherwise abstract idea into patent-eligible subject matter."
Fair Warning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir.
2016) (citing DDR Holdings, 773 F.3d at 1256).
For at least the reasons above, we are not persuaded of Examiner error
in the rejection of claim 1 under 35 U.S.C. § 101. Thus, we sustain the
Examiner's rejection under§ 101 of independent claims 1, 21, and 28, as
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Application 13/830,224
well as dependent claims 2, 5-7, 21, 22, 25-27, 29, 30, and 33, which were
not argued separately.
CONCLUSION
Appellants have not shown that the Examiner erred in rejecting claims
1, 2, 5-7, 21, 22, 25-30, and 33, under 35 U.S.C. § 101.
DECISION
We affirm the Examiner's rejection of claims 1, 2, 5-7, 21, 22, 25-30,
and 33.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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