Ex Parte Uzzaman et al

Patent Trials and Appeals Board

May 10, 2019

13674823 - (D) (P.T.A.B. May. 10, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/674,823
112449 7590
Roark IP
1438 Dahlia Loop
San Jose, CA 95126
FILING DATE FIRST NAMED INVENTOR
11/12/2012 Md Annis Uzzaman
05/13/2019
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.
78909-8001.USOl 6030
EXAMINER
ROTARU, OCTAVIAN
ART UNIT PAPER NUMBER
3624
MAIL DATE DELIVERY MODE
05/13/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MD ANNIS UZZAMAN and SHOO MING LEE 1
Appeal2018-000361
Application 13/674,823
Technology Center 3600
Before ST. JOHN COURTENAY III, JOHNNY A. KUMAR, and
JUSTIN BUSCH, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1-9, 11-18, 20, and 29-36. Claims 10, 19, and 21-28
are canceled. The original claims, filed on Nov. 12, 2012, included claims
1-28. The after-final amendment, filed on Aug. 15, 2016, was entered on
appeal by the Examiner (Advisory Action, mailed Sept. 15, 2016) canceling
claims 10 and 19. The amendment filed on Aug. 19, 2015 canceled claims
1 According to Appellants, the real party in interest is Sayema Sultana. See
App. Br. 3.
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21-28 and added new claims 29-36. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
Invention
Embodiments of Appellants' claimed invention on appeal relate to a
"streamlined reservation and logistics system for providing convenient on-
demand services ... such as ... on-demand barbershop and/or salon
services." Abstract.
Representative Claim
1. A method of routing service requests using a service
management system, the method comprising:
[L 1] tracking the locations of a first list and a second list
of mobile resources from a satellite tracking network that
monitors that locations of the mobile resources;
providing a customer interface over a first network to a
customer for installation on a remote customer computer;
[L2] receiving, at the service management system, a
service request over a second network from the customer
interface, the service request including a requested time period,
a customer location and a first service tier;
[L3] identifying, at the service management system, the
first list of mobile resources and corresponding locations
associated with the first service tier, the first list of resources
being available during the requested time period;
[L4] in response to the first list not including one or more
mobile resources, identifying, at the service management system,
the second list of mobile resources and corresponding locations
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associated with a second service tier, the second list of resources
being available during the requested time period; and
routing the service request over a third wireless network
to a highest tiered available mobile resource based on a plurality
of factors including location for servicing, [L5] wherein the first
list of mobile resources includes mobile resources of a higher
tier than the second list of mobile resources.
(Emphasis added regarding the contested limitations L 1, L2, L3, L4, and L5
under§§ 102, 103).
Rejections
A. Claims 1-9, 11-18, 20, and 29-36 are rejected under 35 U.S.C.
§ 101 as being directed to a judicial exception, without
significantly more.
B. Claims 1, 6, 8, 9, 11, 16, 18, 20, 29-31, and 34--36 are rejected
under pre-AIA 35 U.S.C. § I02(b) as being anticipated by Wei et
al., US Patent Publication No. 2009/0326991 Al, published Dec.
31, 2009 ("Wei").
C. Claims 2, 5, 12, 15, and 32 are rejected under pre-AIA 35 U.S.C.
§ I03(a) as being obvious over the combined teachings and
suggestions of Wei, in view of Dixon, US Patent Publication No.
2012/0284099 Al, published Nov. 8, 2012 ("Dixon"). 2
D. Claims 3, 4, 13, 14, and 33 are rejected under pre-AIA 35 U.S.C.
§ I03(a) as being obvious over the combined teachings and
2 We note the Examiner used two separate rejection headings to refer to the
same ground of rejection over Wei in view of Dixon. See Final Act. 21,
rejecting claims 2, 12, and 32 over Wei in view of Dixon. See Final Act. 24,
rejecting claims 5 and 15 over Wei in view of Dixon. They have been
combined under Rejection C above.
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suggestions of Wei, Dixon, and MOBILE-BEAUTY SYSTEMS,
http://www.mobilespabusiness.com/articles/mobile_spa_unit.htm,
Dec. 12, 2008 ("MOBILE-BEAUTY SYSTEMS").
E. Claims 7 and 17 are rejected under pre-AIA 35 U.S.C. § I03(a) as
being obvious over the combined teachings and suggestions of Wei
and Kalik et al., US Patent Publication No. 2009/0204600 Al,
published Aug. 13, 2009 ("Kalik").
ANALYSIS
We have considered all of Appellants' arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
Principles of Law-35 U.S.C. § 101
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[L Jaws of nature, natural phenomena, and abstract
ideas" are not patentable. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (citing Diamond v. Diehr, 450 U.S. 175, 185
(1981)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Alice Corp. v. CLS Banklnt'l, 573 U.S. 208, 217-18 (2014)
(citing Mayo, 566 U.S. at 75-77). In accordance with that framework, we
first determine what concept the claim is "directed to." See Alice, 573 U.S.
at 219 ("On their face, the claims before us are drawn to the concept of
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intermediated settlement, i.e., the use of a third party to mitigate settlement
risk." (emphasis omitted)); see also Bilski v. Kappas, 561 U.S. 593, 611
(2010) ("Claims 1 and 4 in petitioners' application explain the basic concept
of hedging, or protecting against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding of rubber products" (Diehr, 450 U.S. at 193); "tanning,
dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores"
(id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. (15 How.) 252, 267---68
(1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane
v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 187; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. (citing Benson and Flook); see, e.g., id. at 187 ("It is now
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commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). "[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention." Id.
Subject Matter Eligibility- 2019 Revised Guidance
The USPTO recently published revised guidance on the application of
35 U.S.C. § 101. See 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("2019 Revised Guidance"). This
new guidance is applied in this opinion. Under the 2019 Revised Guidance,
we first look to whether the claim recites:
( 1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, mental processes, or
certain methods of organizing human activity such as a fundamental
economic practice or managing personal behavior or relationships or
interactions between people); and
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(2) additional elements that integrate the judicial exception into
a practical application (see Manual of Patent Examining Procedure
("MPEP") §§ 2106.05(a}-(c), (e}-(h)). 3
See 2019 Revised Guidance, 84 Fed. Reg. at 51-52, 55.
A claim that integrates a judicial exception into a practical application
applies, relies on, or uses 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. See 2019
Revised Guidance, 84 Fed. Reg. at 54. When the judicial exception is so
integrated, then the claim is not directed to a judicial exception and is patent
eligible under § 101. Id.
Only if a claim: (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then evaluate
whether the claim provides an inventive concept. See 2019 Revised
Guidance at 56; Alice, 573 U.S. at 217-18.
For example, we look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not "well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
( 4) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception.
See 2019 Revised Guidance, 84 Fed. Reg. at 56.
Because there is no single definition of an "abstract idea" under Alice
step 1, the PTO has recently synthesized, for purposes of clarity,
3 All references to the MPEP are to the Ninth Edition, Revision 08-201 7
(rev. Jan. 2018).
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predictability, and consistency, key concepts identified by the courts as
abstract ideas to explain that the "abstract idea" exception includes the
following three groupings:
1. Mathematical concepts-mathematical relationships,
mathematical formulas or equations, mathematical
calculations;
2. Mental processes-concepts performed in the human mind
(including an observation, evaluation, judgment, opinion);
and
3. 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).
See 2019 Revised Guidance, 84 Fed. Reg. at 52.
According to the 2019 Revised Guidance, "[ c ]laims that do not recite
[subject] matter that falls within these enumerated groupings of abstract
ideas should not be treated as reciting abstract ideas," except in rare
circumstances. Even if the claims recite any one of these three groupings of
abstract ideas, these claims are still not "directed to" a judicial exception
( abstract idea), and thus are patent eligible, if "the claim as a whole
integrates the recited judicial exception into a practical application of that
exception." See 2019 Revised Guidance, 84 Fed. Reg. at 53.
For example, limitations that are indicative of "integration into a
practical application" include:
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1. Improvements to the functioning of a computer, or to any
other technology or technical field - see MPEP
§ 2106.05(a);
2. Applying the judicial exception with, or by use of, a
particular machine - see MPEP § 2106.05(b );
3. Effecting a transformation or reduction of a particular
article to a different state or thing - see MPEP
§ 2106.05(c); and
4. Applying or using 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 -
see MPEP § 2106.05(e).
In contrast, limitations that are not indicative of "integration into a
practical application" include:
1. Adding the words "apply it" ( or an equivalent) with the
judicial exception, or merely include instructions to
implement an abstract idea on a computer, or merely uses
a computer as a tool to perform an abstract idea - see
MPEP § 2106.05(±);
2. Adding insignificant extra-solution activity to the judicial
exception-see MPEP § 2106.05(g); and
3. Generally linking the use of the judicial exception to a
particular technological environment or field of use - see
MPEP 2106.05(h).
See 2019 Revised Guidance, 84 Fed. Reg. at 54--55 ("Prong Two").
Rejection A of claims 1-9, 11-18, 20, and 29-36 under 35 U.S. C. § 1 OJ
The Examiner identifies the claim 1 language that recites the abstract
idea as: "routing a service request [(preamble)], comprised in the steps of 1)
'tracking' locations of resources; 2) 'receiving' a service request;
3) 'identifying' resources, and 4) 'routing' service request." Final Act. 8
( emphasis omitted).
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The Examiner finds the claims do not include additional elements that
amount to significantly more than the judicial exception, because:
the additional elements are computer components or structure
serving to perform generic computer functions constituting well-
understood, routine, and conventional activities previously
known to the pertinent industry, such as performing repetitive
calculations, receiving, processing, and storing data, automating
mental task or receiving or transmitting data over a network, e.g.,
using the Internet to gather data. More specifically, the steps
comprise extra-solution activity, including gathering, storing or
transmitting data, i.e., 1) "providing" a customer interface over a
network to a customer for installation on a remote customer
computer. Taken alone or as an ordered combination, these
additional elements do not amount to a claim as a whole that is
significantly more than the exception.
Final Act. 9 ( emphasis omitted).
For the aforementioned reasons, the Examiner concludes that claims
1-9, 11-18, 20, and 29-36 are not patent eligible under 35 U.S.C. § 101. 4
2019 Revised Guidance, Step 2A, Prong One
The Judicial Exception
Under the 2019 Revised Guidance, we consider whether the claims
recite any judicial exceptions, including certain groupings of abstract ideas,
in particular: (a) mathematical concepts, (b) mental steps, and ( c) certain
methods of organizing human activities.
At the outset, we conclude the recited "tracking," "providing," and
"receiving" steps" of claim 1 are insignificant extra-solution activity. For
4 "Patent eligibility under§ 101 presents an issue of law." Accenture Glob.
Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1340-41 (Fed.
Cir. 2013).
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example, courts have found data gathering steps to be insignificant extra-
solution activity. See, e.g., In re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008)
(en bane), aff'd sub nom Bilski v. Kappas, 561 U.S. 593 (2010). 5
Similarly, we conclude the "routing" step of claim 1 performs
insignificant post-solution activity. The Supreme Court guides that the
"prohibition against patenting abstract ideas 'cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment' or [by] adding 'insignificant postsolution activity."' Bilski v.
Kappas, 561 U.S. at 610-11 (quoting Diehr, 450 U.S. at 191-92). However,
we agree with the Examiner that the "identifying" step recites an abstract
idea, i.e., it is a step that could be performed alternatively as a mental step. 6
5 Throughout this opinion, we give the contested claim limitations the
broadest reasonable interpretation consistent with the Specification. See In
re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
6 If a method can be performed by human thought alone, or by a human
using pen and paper, it is merely an abstract idea and is not patent eligible
under§ 101. CyberSource Corp. v. Retail Decisions, Inc,, 654 F.3d 1366,
1372-73 (Fed. Cir. 2011); see also Synopsys, Inc. v. Mentor Graphics Corp.,
839 F.3d 1138, 1146-47 (Fed. Cir. 2016) ("While the Supreme Court has
altered the § 101 analysis since Cy her Source in cases like Mayo and Alice,
we continue to 'treat[] analyzing information by steps people go through in
their minds, or by mathematical algorithms, without more, as essentially
mental processes within the abstract-idea category."' (brackets in original)
(quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed.
Cir. 2016)); CyberSource, 654 F.3d at 1375 ("That purely mental processes
can be unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson.").
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2019 Revised Guidance, Step 2A, Prong Two
Integration of the Judicial Exception into a Practical Application
As noted above, we conclude the "identifying" step of claim 1 recites
an abstract idea, i.e., a step that could be performed mentally. However, we
do not consider the single "identifying" of "the first list of mobile resources
and corresponding locations associated with the first service tier" as
improving the functioning of the computer or network, or of any other
technology or technical field, under MPEP § 2106.05(a) "Improvements to
the Functioning of a Computer or to Any Other Technology or Technical
Field."
Regarding Appellants arguments pertaining to the Bilski "Machine or
Transformation" (MoT) test, Appellants acknowledge that although the MoT
test may provide a useful and important clue, the "test does not provide a
definitive test for determining if a patent claim is eligible for patentability."
App. Br. 36.
We do not find persuasive Appellants' contention that by "physically
directing a resource to move to the customer location as recited in the
independent claims . . . the claimed invention is also removed from the
realm of the abstract and transformed into the world of the concrete." App.
Br. 37.
We do not find moving a resource from a location A to a location B
physically transforms the resource (e.g., "freelance stylist resources" -
claim 3). Simply put, Appellants have not established that the physical
structure of a hair salon bus or trailer is changed or otherwise transformed by
moving it to the customer's location.
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Nor do we conclude the "identifying" step of claim 1 provides a
meaningful limitation beyond generally linking the use of the judicial
exception to a particular technological environment. Appellants'
"identifying" step of claim 1 is unlike the case in Diehr, in which the claim
was directed to the use of the Arrhenius equation ( an abstract idea or law of
nature) for use in an automated process for operating a rubber-molding
press. See Diehr, 450 U.S. at 177-78. See also MPEP § 2106.05(e) ("Other
Meaningful Limitations.").
We have noted above the specific steps in claim 1 that perform
insignificant extra-solution or post-solution activity. See MPEP
§ 2106.05(g) "Insignificant Extra-Solution Activity." Thus, we determine
under Step 2A, Prong Two (MPEP §§ 2106.05(a}-(c) and (e}-(h)), that
Appellants' claims 1-9, 11-18, 20, and 29-36 do not integrate the judicial
exception into a practical application, which requires us to proceed to Step
2B.
The Inventive Concept - Step 2B
Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018)
Under the 2019 Revised Guidance, only if a claim: (1) recites a
judicial exception, and (2) does not integrate that exception into a practical
application, do we then look to whether the claim adds a specific limitation
beyond the judicial exception that is not "well-understood, routine,
conventional" in the field (see MPEP § 2106.05( d)); or, simply appends
well-understood, routine, and conventional activities previously known to
the industry, specified at a high level of generality, to the judicial exception.
We note Berkheimer was decided by the Federal Circuit on February
8, 2018. Appellants' Reply Brief was filed almost four months earlier, on
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October 10, 2017. On April 19, 2018, the PTO issued the Memorandum
titled: "Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.)" (hereinafter "Berkheimer Memorandum"). 7
The Berkheimer Memorandum provided specific requirements for an
Examiner to support with evidence any finding that claim elements ( or a
combination of elements) are well-understood, routine, or conventional. In
reviewing the prosecution history, we recognize that Appellants have not yet
had an opportunity to advance arguments based upon the change in the law
effected by Berkheimer. Thus, Berkheimer (881 F.3d at 1369) and the
USPTO Berkheimer Memorandum are intervening authorities.
However, in the pre-Berkheimer Appeal Brief, Appellants presciently
argue: "In forming a 101 rejection, the examining corps should be required
to make a prima facie showing on all claim elements with evidence to show
a claim is directed to a judicial exception or well understood, routine, or
conventional." App. Br 18 (emphasis added).
As noted above, the Examiner finds:
the additional elements are computer components or structure
serving to perform generic computer functions constituting well-
understood, routine, and conventional activities previously
known to the pertinent industry, such as performing repetitive
calculations, receiving, processing, and storing data, automating
mental task or receiving or transmitting data over a network, e.g.,
using the Internet to gather data.
Final Act. 9 ( emphasis added).
7 Available at https://www.uspto.gov/sites/default/files/documents/memo-
berkheimer-20180419 .PDF.
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Responsive to Appellants' argument (App. Br. 18), and in applying
the 2019 Revised Guidance, we find the Examiner has provided at least one
of the four categories of factual findings expressly required by the US PTO
Berkheimer Memorandum:
1. A citation to an express statement in the specification or to a
statement made by an applicant during prosecution that
demonstrates the well-understood, routine, conventional
nature of the additional element(s) ....
2. A citation to one or more of the court decisions discussed in
MPEP § 2106.0S(d)(II) as noting the well-understood,
routine, conventional nature of the additional element(s).
3. A citation to a publication that demonstrates the well-
understood, routine, conventional nature of the additional
element( s ) ....
4. A statement that the examiner is taking official notice of the
well-understood, routine, conventional nature of the
additional element( s) ....
Berkheimer Memorandum at 3--4.
Specifically, the Examiner finds the recited tracking is conventional:
e.g., "the 'satellite tracking network that monitors locations of the mobile
resources' provid[es] nothing that is significantly more than [the] mere use
of a conventional GPS network similar to" (SiRF Technology, Inc. v.
International Trade Com 'n, 601 F.3d 1319, 1322-23 (Fed Cir. 2010)),
"disclosing 'conventional GPS receivers."' Ans. 9 ( emphasis added).
The Examiner additionally finds:
the transfer of information over various "networks" being
abstract right from the onset, [is] not meaningfully different
than wireless broadcasting [ ofJ content as in "Affinity Labs. V.
DirecTV'', or delivering user-selected content to portable
devices or, on a computer at another location as in "Affinity
Labs v. Amazon" or "Ameranth" respectively ("June 2017:
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Interim Eligibility Guidance Quick Reference Sheet" p.2), in
addition to such information transfer also underlining
conventional and routine functions of receiving, processing and
transmitting data over a network, and/or automating mental
tasks [i.e. argued here as on demand service delivery], when
considering at least "July 2015 Update: Subject Matter
Eligibility" at p. 7, ,r 2 last sentence and bullet points #2, #5, #6.
Ans. 9 (emphasis added).
Therefore, we find the Examiner has provided sufficient evidence as
required by Berkheimer (881 F.3d at 1369), and the USPTO Berkheimer
Memorandum at 3--4. Additionally, we find paragraph 49 of Appellants'
original Specification (filed Nov. 12, 2012) describes the use of generic
client devices:
For example, the client devices can include, but are not limited
to, a server desktop, a desktop computer, a computer cluster, a
mobile computing device such as a notebook, a laptop
computer, a handheld computer, a mobile phone, a smart phone,
a PDA, a BlackBerryâ„¢ device, a Treoâ„¢, and/or an iPhone, etc.
Spec. ,r 49.
Similarly, we find paragraph 52 of Appellants' original Specification
describes the use of a generic network: i.e., "an open network, such as the
Internet, or a private network, such as an intranet and/or the extranet."
In light of the foregoing, we conclude, under the 2019 Revised
Guidance, that each of Appellants' claims 1-9, 11-18, 20, and 29-36,
considered as a whole, is directed to a patent-ineligible abstract idea that is
not integrated into a practical application, and does not include an inventive
concept. Therefore, on this record, and for the aforementioned reasons, we
sustain the Examiner's rejection under 35 U.S.C. § 101 of claims 1-9,
11-18, 20, and 29-36.
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Rejection B under 35 U.S.C. § 102(b)
of Claims 1, 6, 8, 9, 11, 16, 18, 20, 29-31, and 34-36 over Wei
We have considered all of Appellants' arguments and any evidence
presented. Based upon Appellants' arguments, and our discretion under
37 C.F .R. § 41.37 ( c )(1 )(iv), we decide the appeal of anticipation rejection B
of claims 1, 6, 8, 9, 11, 16, 18, 20, 29-31, and 34 on the basis of
representative claim 1.
Because claims 3 5 and 3 6 each recite the limitation "salon equipped
vehicles" (that is not recited in independent claims 1, 11, 20, and 30), we
consider anticipation rejection B of independent claims 35 and 36 separately,
infra.
Appellants contest the following limitations LI, L2, L3, L4, and L5 of
independent claim 1 :
[L 1] tracking the locations of a first list and a second list
of mobile resources from a satellite tracking network that
monitors that locations of the mobile resources;
providing a customer interface over a first network to a
customer for installation on a remote customer computer;
[L2] receiving, at the service management system, a
service request over a second network from the customer
interface, the service request including a requested time period,
a customer location and a first service tier;
[L3] identifying, at the service management system, the
first list of mobile resources and corresponding locations
associated with the first service tier, the first list of resources
being available during the requested time period;
[L4] in response to the first list not including one or more
mobile resources, identifying, at the service management system,
the second list of mobile resources and corresponding locations
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associated with a second service tier, the second list of resources
being available during the requested time period; and
routing the service request over a third wireless network
to a highest tiered available mobile resource based on a plurality
of factors including location for servicing, [L5] wherein the first
list of mobile resources includes mobile resources of a higher
tier than the second list of mobile resources.
Claim 1 (emphasis added). See App. Br. 38--41.
At the outset, we note the above contested limitations are recited in
similar form having commensurate scope in independent claims 11, 20, and
30. As noted above, we consider anticipation rejection B of remaining
independent claims 35 and 36 separately, infra.
Contested Limitation LI of Independent Claim 1 under§ 102 Rejection B
Appellants argue that Wei fails to disclose the contested limitation L 1,
"tracking the locations of a first list and a second list of mobile resources
from a satellite tracking network that monitors that locations of the mobile
resources." App. Br. 38. For this limitation, Appellants focus their
arguments on the Examiner's findings regarding Wei ,r,r 49, 87 (Final Act.
12). Id. Appellants contend Wei ,r 49 does not teach this limitation, for the
following reasons:
In the Final Office Action on page 12, the Examiner states that
this limitation is met by "para. 0049, 0087, vehicle data
collection service module 54 collecting and monitoring vehicle
data on each vehicle in the fleet, including 'list of local
affiliates'." In the embodiment discussed in paragraph [0049],
there is collection and monitoring of vehicle data but in this
paragraph there is no mention of location of the vehicles.
Instead it mentions "mileage, gas, diagnostics, tire pressure,
battery status and the like, and sends an alert to operator when a
potential problem or error is detected". The term "affiliates" is
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used repeatedly throughout the Wei et al. specification to refer
to a business or company and not mobile vehicles.
App. Br. 38.
However, Appellants do not address the Examiner's specific findings
regarding Wei's ,r 87, which describes "The Ride-On-Schedule module 406
is for users/clients to schedule a ride through any affiliated company" in
which "[a]fter making the selection at step 494 or 495, the client is prompted
to enter a [car] pick up address or current GPS location (496), a destination
( 497), and a pick up time ( 498)." (Emphasis added). Paragraph 87 further
describes: "For example, the user may also pick a car type, as seen in FIG.
16C." (Emphasis added).
Instead, Appellants focus on paragraphs 7, 13, and 69 of Wei, as
providing examples of Wei's use of the term "affiliates." Appellants thus
conclude:
From these multiple references in the Wei et al.
specification, it is clear that the "affiliate" is a business which
provides services of taxis, etc. But affiliates themselves are not
actually "mobile devices" so when the Applicants claim calls
out "a list of mobile devices" this limitation is not met by
Examiner's position of a "list of affiliates".
App. Br. 39.
The Examiner disagrees. The Examiner further explains the basis for
the rejection:
Wei clearly teaches ,r [0014] 3rd sentence, ,r [0034], ,r [0086], ,r
[0088] and Fig. 13 step 484, Fig. 16B etc. the mobile portal
allowing the user to locate the closest available vehicle which is
equipped as per ,r [001 OJ 2nd - 3rd sentences with a global
positioning system (GPS) and wireless communication unit
(GWU). It is clear that tracking vehicle location is central to
Wei's invention as revealed right from the Title: "GPS and
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Wireless integrated fleet management system and method", and
predominately cited through its entire disclosure, such as with
the vehicle collected data of ,I [0049] further explained to
comprise collected timestamped location and direction data at
Fig. 4 elements 112, 116, 126 of,I [0020], ,r [0055], ,r [0061]
2nd sentence, as well as Fig. 5 elements 149 ,r [0021] & mid-i-f
[0058], Fig. 13 element 484 & mid-i-f [0086].
Ans. 20 ( emphasis added and omitted).
We note Wei describes:
A fleet management system has a chauffeur or driver
module and a communication and positioning module associated
with each fleet vehicle, and a backend monitoring and control
system located at a fleet data center in communication with each
vehicle. The system monitors each trip automatically and
generates time stamps at the start of a trip, a pick up location, a
drop off location, and return of the vehicle to a garage at the end
of a trip.
Abstract.
Thus, Wei describes a fleet management system using vehicle location
tracking and driver availability to dispatch the nearest vehicle responsive to
customer requests. Id.; see also ,r,r 49, 85-89.
Because Appellants fail to address the Examiner's specific findings
regarding Wei's ,r 87, on this record, we are not persuaded of error regarding
the Examiner's finding that Wei discloses contested limitation LI. See Final
Act. 12.
Contested Limitation L2 of Independent Claim 1 under§ 102 Rejection B
receiving, at the service management system, a service
request over a second network from the customer interface, the
service request including a requested time period, a customer
location and a first service tier.
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Claim 1.
The Examiner maps limitation L2 to Wei, ,r,r 82, 87. Final Act. 12.
Appellants contend Wei fails to disclose contested limitation L2. App. Br.
39--40. In support, Appellants again argue that an "affiliate" in Wei is not a
mobile resource:
In paragraph [0087] the ROS module 406 is capable of
automatically selecting the "nearest affiliate". Again, the term
"affiliate" as defined by Wei et al. is not a mobile resource but
rather a business which employs mobile resources ( e.g., taxis).
So in paragraph [0087] the ROS module 406 selects the nearest
business but this does not meet the limitation of "identifying ...
the first list of mobile resources and corresponding locations
associated with the first service tier".
App. Br. 40 ( emphasis omitted).
In response, the Examiner further explains the basis for the rejection:
Appellant argument that an affiliate is not a mobile resource but
rather a business employing the mobile resource (i.e. taxi)
(Appeal Brief 08/15/2016 p. 40 ,r I), does not preclude Wei's
"affiliate" at ,r [0069] last sentence, contracting, as a freelancer,
the single company in the group that was designated as the
central reservations office, with said affiliate having the
available vehicle in the vicinity of the received service requests.
With respect to Appellant's argument that Ride-On-
Demand (ROD) and Ride-On-Schedule (ROS) service, [are]
different embodiments, [the] Examiner submits that Wei
undoubtedly teaches at Fig. 11 and ,r [0085] third sentences all
ROD, ROS, ROC, in the same user interface, not as separate,
mutually exclusive embodiments.
Ans. 20 ( emphasis omitted).
Turning to the evidence found by the Examiner, we note ,r 82 of Wei
expressly describes: "dispatching vehicles from affiliated transportation
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companies in response to requests received from customers via mobile
handheld devices 402 ... " ( emphasis added). Furthermore, Wei's ,r 85
describes a Ride-On-Demand (ROD) module for booking urgent rides on the
user interface display of the mobile device. Therefore, we find Wei's ,r 85
discloses "receiving, at the service management system, a service request
over a second network from the customer interface, the service request
including a requested time period, a customer location and a first service
tier," within the meaning of claim 1.
Accordingly, on this record, we are not persuaded of error regarding
the Examiner's finding of anticipation, as pertaining to contested limitation
L2 of representative claim 1.
Contested Limitation L3 of Independent Claim 1 under§ 102 Rejection B
identifying, at the service management system, the first list
of mobile resources and corresponding locations associated with
the first service tier, the first list of resources being available
during the requested time period;
Claim 1.
The Examiner maps limitation L3 to Wei ,r 85. Final Act. 12.
Appellants urge that Wei fails to disclose contested limitation L3 (App. Br.
40-41 ). In support, Appellants contend:
Claims 1, 30, 35 and 36 further recite: "identifying, at the
service management system, the first list of mobile resources
and corresponding locations associated with the first service
tier". (Independent claims 11 and 20 having similarly worded
limitations). With regard to these limitations on page 12 of the
Final Office Action, the Examiner states this is met by the Wei
et al., which shows "selecting a local affiliate based upon
availability and distance." In paragraph [0087] the ROS
module 406 is capable of automatically selecting the "nearest
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affiliate". Again, the term "affiliate" as defined by Wei et al. is
not a mobile resource but rather a business which employs
mobile resources (e.g., taxis). So in paragraph [0087] the ROS
module 406 selects the nearest business but this does not meet
the limitation of "identifying ... the first list of mobile resources
and corresponding locations associated with the first service
tier" ....
[Regarding the] Ride-On-Demand (ROD) service, there is a
discussion of the affiliate being chosen based on location and
availability but this is a different embodiment than the Ride-
On-Schedule (ROS) service discussed in paragraph [0087], It is
not a proper anticipation rejection for the Examiner to switch
between embodiments in a reference without converting to an
obviousness rejection. The analogy would be to pick parts out
of the Sears catalog from a plurality of different products and
stating that there is an anticipation. As the Wei et al. reference
lays out the ROD and ROS services work in a different manner.
App. Br. 40 ( emphasis added and omitted).
In response, the Examiner further explains the basis for the rejection:
As per Appellant's argument that Wei does not teach
unavailability (Appeal Brief 08/15/2016, p.41, 1st - 2nd
sentences), [the] Examiner points to the same Appeal Brief
08/15/2016, p.41 ,r 1, 2nd sentence, where Appellant concedes
that Wei teaches "lack of an available vehicle in the area".
Appellant argues that Wei does not teach "tier" -ing
(Appeal Brief 08/15/2016 p. 41 ,II last sentence), in spite of
previously acknowledging Examiner's interpretation of the
term tier to relate to "car type" or "selecting" [ desired]
"affiliate" (Remarks 08/15/2016 p. 40 mid-i-f l ). [The] Examiner
redirects Appellant to Fig. 16C and ,r [0087] 6th - 7th sentences
noting the tier relates to car type / car class or selected affiliate.
Ans. 20-21 ( emphasis omitted).
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We note Wei's Fig. I6C (depicted below), shows the "Ride On
Demand" (ROD) and "Ride On Schedule" (ROS) tier service of selecting a
car type or class on the same mobile user interface.
\
\ /
A52
!
ROD ROS ROC I
[Make a Reser..-atkm! I
------------------------------------'
2iOASt.
__ IL ...... J
.............................. lie......_.......,
! Select Car Class I
j Click hertl ·;o select !
lc11Ck here to ccnfirll]
FIG.16C
Wei's Fig. I6C is depicted above.
Turning to the evidence found by the Examiner, we note ,r 85 of Wei
expressly describes:
Once the destination is entered, the clients' current GPS
location and information on vehicle status from affiliates in the
desired geographical area is used to automatically select a local
affiliate based on availability and distance, and the request is
sent to the local office for confirmation (step 464), with details
of the client GPS location or requested pick up address and
selected destination, along with a request (step 465) for
confirmation that the affiliate' s chauffeur is able to pick up the
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client within thirty minutes (or other selected time period). If
the answer is NO, a search is made for more affiliates with
vehicles in the area (step 466). If an affiliate with availability is
found, the request is routed to that affiliate (step 468), and the
new affiliate is asked if they can pick up within the selected
time period (step 465).
(Emphasis added). Furthermore, Wei's ,r 87 describes the Ride On
Schedule (ROS) module for users to schedule a ride through any affiliated
company at any time. Both the Ride on Demand (ROD) and Ride on
Schedule (ROS) features are available in the same user interface on the
mobile application (see Fig. 16C) and help identify the list of mobile
vehicles (resources) available for pickup based on the nearest location and
availability for the requested time period. For example, using ROS module
406, "the user may also pick a car type, as seen in FIG. 16C." Wei ,r 87.
Further, "a client/user can conveniently locate the closest available car and
book an emergency ride via Ride-On-Demand (ROD) module 405." Wei
,r 81. Therefore, we find Wei ,r,r 85-87 disclose: "identifying, at the service
management system, the first list of mobile resources and corresponding
locations associated with the first service tier, the first list of resources
being available during the requested time period." Claim 1.
Accordingly, on this record, we are not persuaded of error regarding
the Examiner's finding of anticipation, as pertaining to contested limitation
L3 of representative claim 1.
Contested Limitation L4 of Independent Claim 1 under§ 102 Rejection B
in response to the first list not including one or more
mobile resources, identifying, at the service management system,
the second list of mobile resources and corresponding locations
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associated with a second service tier, the second list of resources
being available during the requested time period; and
The Examiner maps limitation L4 to Wei ,r,r 67, 85-88. Final Act. 12.
Appellants argue Wei fails to disclose contested limitation L3 (App. Br. 41).
In support, Appellants contend:
The Examiner states: "para. 0067, if one affiliate receives a
reservation it cannot fill, due to lack of an available vehicle in
the area, reservation forwarded to the next closest affiliate with
availability; para. 0085-0088, follow up search of "subsequent
affiliate" after "first affiliate" with vehicles in the area". First, the
claim says that the first list does not include one more mobile
resources. In paragraph [0087], the issue is not availability but
rather whether the customer accepts the confirmation from the
affiliate. If the customer does not accept, then the request is
routed to another affiliate. Second, again the Examiner is
confusing "affiliates" which are businesses with mobile
resources. Paragraph [0087] is not listing mobile resources.
Third, again the Examiner is picking and choosing between two
different embodiments - the ROD services of paragraphs [0085]-
[0086] and ROS service of paragraph [0087]-[0088].
App. Br. 41 ( emphasis added and omitted).
In response, the Examiner further explains the basis for the rejection:
As per Appellant's argument that Wei does not teach
unavailability (Appeal Brief 08/15/2016, p.41, 1st - 2nd
sentences), Examiner points to the same Appeal Brief
08/15/2016, p.41 ,II, 2nd sentence, where Appellant concedes
that Wei teaches "lack of an available vehicle in the area".
Ans. 20 ( emphasis added and omitted).
We note Wei ,r 88, describes:
Once a reservation is made at step 525, whether with the
first affiliate selected or a subsequent affiliate, the ROT option
of FIG. 16B is displayed on the screen. The client or user can
select ROT close to their pick up time by clicking on the
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LOCATE icon (step 482), after which the map shows the real
time driver location (484) as described above in connection
with FIG. 13, and the client has the option of calling the driver
at any time (steps 486, 487). The ROS module also includes an
automatic reminder which sends an alert to the client at a
selected time interval before the pick up time, for example one
hour or another selected time period (step 536). In the ROS
module, users/clients can schedule a ride with any affiliated
company at any time. In one embodiment, clients using ROS
have the option of selecting pick-up location, destination, car
type and time, users/clients are prompted with all the closest
affiliate companies that provide the service for that market with
price quote, company rating, and extra information (name,
license, additional charge etc) for them to decide which one to
pick.
Wei ,r 88.
Given this evidence, we find Wei ,r 88 discloses: "in response to the
first list not including one or more mobile resources, identifying, at the
service management system, the second list of mobile resources and
corresponding locations associated with a second service tier, the second
list of resources being available during the requested time period," within
the meaning of independent claim 1.
Therefore, on this record, we are not persuaded of error regarding the
Examiner's finding of anticipation, as pertaining to contested limitation L4
of representative claim 1.
Contested Limitation L5 of Independent Claim 1 under§ 102 Rejection B
wherein the first list of mobile resources includes mobile
resources of a higher tier than the second list of mobile
resources.
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The Examiner maps limitation L5 to Wei ,r 85. Final Act. 13.
Appellants contend Wei fails to disclose contested limitation L5 (App. Br.
41 ). In support, Appellants contend:
Fourth, the last line of claim 1 recites: "wherein the first list of
mobile resources includes mobile resources of higher tier than
the second list of mobile resources". As described in Applicant's
specification the use of the term "tier" in the claims indicates that
the first tier and second tier offer different levels of service; they
are not commodities, rather one is at a higher standard than the
other. The Wei et al. references does not work off a different type
of car but in both the ROD and ROD services described in
paragraphs [0085]-[0088] the taxis made service are of equal
levels; there is no apparent tiering.
App. Br. 41 ( emphasis added).
In response, the Examiner further explains the basis for the rejection,
and points to Figure 16C and ,r 87 of Wei in support:
Appellant argues that Wei does not teach "tier" -ing
(Appeal Brief 08/15/2016 p. 41 ,II last sentence), in spite of
previously acknowledging Examiner's interpretation of the
term tier to relate to "car type" or "selecting" [ desired]
"affiliate" (Remarks 08/15/2016 p. 40 mid-i-fl). Examiner
redirects Appellant to Fig. 16C and ,r [0087] 6th - 7th sentences
noting the tier relates to car type / car class or selected affiliate.
Ans. 21 ( emphasis omitted).
Wei ,r 87 ( emphasis added) describes:
... After making the selection at step 494 or 495, the
client is prompted to enter a pick up address or current GPS
location (496), a destination (497), and a pick up time (498),
along with any other options which may be provided by ROS.
For example, the user may also pick a car type, as seen in FIG.
l 6C. After selecting pick-up location, destination, car type and
time, and confirming the request (499), the request is sent
either to the nearest affiliate (step 515) or the user selected
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affiliate (516), depending on which option was selected at step
494. If the affiliate accepts the request (520), the affiliate sends
a confirmation with the rate for the trip (522). If the client
agrees (524), the reservation is made (525). If the.first selected
affiliate at steps 515 or 516 does not accept the request at step
520, a search is made for additional affiliates (528), and the
request is routed to another affiliate (530) .... If they answer
"YES" to this option, they are returned to a display screen at
step 498 to allow entry of a different time,. and the process
proceeds as described above. If the client answers "NO" at step
534, the ROS subroutine ends (535). If the client does not
agree to the affiliate 's rate displayed at step 522, a search is
made for more affiliates at step 528 as described above.
Here, we find Wei's different tier levels are determined by the car
type or car class, or the selected affiliate rates. Id. Therefore, we find Wei
,r 87 discloses contested limitation L5: "wherein the first list of mobile
resources includes mobile resources of a higher tier than the second list of
mobile resources." Claim 1. Accordingly, on this record, we are not
persuaded of error regarding the Examiner's finding of anticipation, as
pertaining to contested limitation L5 of representative claim 1.
For at least the aforementioned reasons, and based upon a
preponderance of the evidence, we are not persuaded the Examiner erred
regarding anticipation Rejection B of representative independent claim 1.
Grouped claims 6, 8, 9, 11, 16, 18, 20, 29-31, and 34, also rejected under
anticipation Rejection B (not argued separately) fall with independent
claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv). Moreover, arguments not made are
waived. Id.
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Rejection B of Independent Claims 35 and 36
under 35 U.S.C. § 102 over Wei
Appellants contest the following "wherein" clause limitation of
independent claims 3 5 and 3 6:
wherein the first service tier is associated with mobile staff
resources having salon equipped vehicles. ( emphasis added).
The Examiner maps this "wherein" clause limitation to Wei ,r 85.
Final Act. 18. Appellants urge that the entirety of Wei fails to disclose salon
equipped vehicles. App. Br. 41. In support, Appellants note: "the Examiner
seems to agree with this position because on page 22 of the Final Office
Action the Examiner states: 'the primary reference does not disclose 1) first
tier is associated with mobile staff resources having salon equipped
vehicles."' App. Br. 41.
In response, the Examiner declines to accord the claim limitation
"salon equipped vehicles" (claims 35 and 36) (emphasis added) any
patentable weight:
With respect to Appellant argument on independent
method Claims 35 and 36, that Wei does not teach "wherein the
first service tier is associated with mobile staff resources having
salon equipped vehicles" (Appeal Brief 08/15/2016, p. 41 last ,r
- only), Examiner interprets said "wherein" limitation as a
recitation of non-functional [] descriptive material and/or
intended use or intended result, with the requirement, within the
"wherein" limitation, of "mobile staff resources having salon
equipped vehicles" not changing the "method of routing service
requests using a service management system" as recited in either
method independent Claim 35 or 36,
Ans. 21 ( emphasis added and omitted).
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In reviewing the record, we agree with Appellants, and find the claim
limitation, "wherein the first service tier is associated with mobile staff
resources having salon equipped vehicles," as required by independent
claims 35 and 36, is not expressly or inherently disclosed by Wei (emphasis
added). Because the "salon equipped vehicles" limitation (claims 35 and 37)
is not expressly or inherently disclosed by Wei, we are constrained on this
record to reverse anticipation Rejection B of independent claims 35 and 36. 8
Rejection C of Claims 2, 12, and 32 under 35 U.S.C. § 103(a)
Claims 2, 12, and 32 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being obvious over Wei in view of Dixon. Appellants contest the following
"wherein" clause limitation of representative dependent claim 2:
"wherein the service request comprises a salon service request." Claim 2
(emphasis added). See App. Br. 42--43.
Appellants focus on ,r,r 12, 73, 100, 101, and 116 of Dixon, and
contend:
The system of Wei et al. is concerned with the management of
taxi services, etc. Dixon is concerned with an Internet based
scheduling service for hair stylists. The Examiner's assertion
that it would be "more economic, effective and/or efficient
8 We note the Examiner finds the MOBILE-BEAUTY SYSTEMS reference
teaches or suggests a "salon equipped vehicle." Final Act. 22. However, we
decline to set forth a new§ 103 ground of rejection in this Decision for
independent claims 35 and 36 over Wei and MOBILE-BEAUTY
SYSTEMS. We leave this question of obviousness to the Examiner in the
event of further prosecution. Although the Board is authorized to reject
claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the
Board elects not to do so. See MANUAL OF PATENT EXAMINING PROCEDURE
§ 1213.02 (9th ed., rev. 08.2017, Jan. 2018).
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methodology of comprehensively manage stylist and salon
contact information and portfolios" to take a hair salon
appointment system of Dixon and graft it onto a system of
managing taxis, etc. as shown in Wei et al. lacks a rational
underpinning. How does adding a salon appointment system to
Wei et al. make scheduling taxis more economic, effective or
efficient. Therefore, Applicants respectfully submit that the
combination of Wei et al. and Dixon is improper.
App. Br. 42--43 ( emphasis added).
In response, the Examiner further explains the basis for the rejection:
Dependent Claims 2, 12 and 32: With respect to Appellant's
argument that the combination of Wei and Dixon is improper
(Appeal Brief08/15/2016 p. 42 i-f3- p.43 i-fl), Examiner submits
that Dixon contemplates at ,r [O 116] that fields such as
automobile dealers could make use of his hair styling teachings
disclosed herein, in effect expanding upon Wei's taxi and
upscale limousine based services (Wei ,r [003 7] last sentence).
Further, as disclosed Dixon by at ,r [0012] activates within an
Internet environment, complementary to Wei Internet-centric
dispatching system, so that Dixon can expand such on demand
online business practice to an upscale stylist service, to help,
through the use of such online social network, his business
growth, as a valuable market incentive for both manufacturers,
distributors, and advertisers in this field (Dixon Summary of
Invention at ,r [0012]).
Ans. 22.
The Examiner finds Appellants' salon service request is taught by Wei
in combination with the teachings of Dixon. We agree with the Examiner
that Appellants' argument (App. Br. 42--43) appears to be premised on the
combinability of Dixon and Wei. However, it is not necessary that the
inventions of the references be physically combinable to render obvious the
invention under review. In re Keller, 642 F.2d 413,425 (CCPA 1981) ("The
test for obviousness is not whether the features of a secondary reference may
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be bodily incorporated into the structure of the primary reference ....
Rather, the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.").
Moreover, "[a] reference must be considered for everything it teaches
by way of technology and is not limited to the particular invention it is
describing and attempting to protect." EWP Corp. v. Reliance Universal
Inc., 755 F.2d 898, 907 (Fed. Cir. 1985) (emphasis omitted). See also KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398,419 (2007) ("[N]either the particular
motivation nor the avowed purpose of the [Appellants] controls" in an
obviousness analysis).
The Examiner provides an additional explanation on page 22 of the
Answer. We agree with and adopt the Examiner's detailed responses (id.),
particular I y:
that Dixon contemplates at ,r [O 116] that fields such as
automobile dealers could make use of his hair styling teachings
disclosed herein, in effect expanding upon Wei's taxi and
upscale limousine based services (Wei ,r [0037] last sentence).
Further, as disclosed Dixon by at ,r [0012] activates within an
Internet environment, complementary to Wei Internet-centric
dispatching system, so that Dixon can expand such on demand
online business practice to an upscale stylist service, to help,
through the use of such online social network, his business
growth, as a valuable market incentive for both manufacturers,
distributors, and advertisers in this field (Dixon Summary of
Invention at ,r [0012]).
Ans. 22 ( emphasis omitted).
On this record, we find the Examiner provided sufficient articulated
reasoning with some rational underpinning to establish why an artisan would
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have modified Wei with the teachings and suggestions of Dixon. Final Act.
20-21. 9
Moreover, Appellants do not provide evidence sufficient to
demonstrate that combining the teachings of Wei and Dixon, as proffered by
the Examiner (id.), would have been "uniquely challenging or difficult for
one of ordinary skill in the art," Leapfrog Enters., Inc. v. Fisher-Price, Inc.,
485 F.3d 1157, 1162 (Fed. Cir. 2007), nor have Appellants provided any
objective evidence of secondary considerations, which our reviewing court
guides "operates as a beneficial check on hindsight," Cheese Sys., Inc. v.
Tetra Pak Cheese and Powder Sys., Inc., 725 F.3d 1341, 1352 (Fed. Cir.
2013).
For at least the aforementioned reasons, on this record, we find a
preponderance of the evidence supports the Examiner's underlying factual
findings and ultimate legal conclusion of obviousness regarding
representative dependent claim 2, as rejected under§ 103 Rejection C.
Grouped dependent claims 12 and 32 (not argued separately) fall with
representative dependent claim 2. Accordingly, we sustain the Examiner's
Rejection C of claims 2, 12, and 32.
9 The Supreme Court guides: "rejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness." KSR, 550 U.S. at 418 (quoting In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006)).
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Rejection C of Claims 5 and 15 under 35 U.S.C. § 103(a)
Under a separate heading (Final Act. 24), the Examiner also rejected
claims 5 and 15 under pre-AIA 35 U.S.C. § 103(a) as being unpatentable
over Wei in view of Dixon. Appellants contest the following limitations of
representative dependent claim 5:
in response to the second list not including one or more
mobile resources, identifying, at the service management system,
a third list of non-mobile resources associated with a third
service tier, the third list of non-mobile resources being available
during the requested time period; and
wherein the second list of mobile resources includes
resources of a higher tier than the third list of non-mobile
resources.
Claim 5 (emphasis added). See App. Br. 44--45.
Appellants contend:
The Examiner states in the Final Office Action on page 24 that
the "sole difference between the primary reference and the
claimed subject matter is that the primary reference does not
disclose 1) non-mobile resources. The primary reference
services tiers are mobile resources associated with a third
service tier (para. [0085]-[0088]) and the claim recites 1) non-
mobile resources associated with a third service tier."
Applicants respectfully submit that the Examiner's
characterization of the Wei et al. reference is not correct. First,
paragraphs [0085]-[0088] refer to two different embodiments -
the ROD service and the ROS service - and it is improper for
the Examiner to conflate these two separate embodiments into
one teaching each time he refers to the Wei et al. reference. See
MPEP Sec. 2131 wherein the elements must be arranged as
required by the claim, but this is not an ipsissimis verbis test,
i.e., identity of terminology is not required. In re Bond, 910
F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990). Since the
Examiner is picking and choosing from two separate
embodiments, they fail to be "arranged" as required by the
claim and therefore are not properly anticipatory separately.
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Second, claim 5 recites "the second list of mobile resources
includes resources of a higher tier than the third list of non-
mobile resources". Applicants submit that this teaching is not
shown by either Wei or Dixon.
App. Br. 44--45 ( emphasis added).
In response, the Examiner further explains the basis for the
rejection:
Dependent Claims 5 and 15: Examiner directs Appellant to
page 24 of the Final Act dated 12/14/2015, explicitly making the
distinction between Dixon's hair stylists and hair salons.
Ans. 23 ( emphasis omitted).
Appellants' argument that the Examiner's§ 103 rejection is flawed
because the "Examiner is picking and choosing from two separate
embodiments" (App. Br. 45) is grounded on an erroneous premise. Our
reviewing court guides that an obviousness inquiry is not limited to the prior
art's preferred embodiment. See, e.g., Pfizer, Inc. v. Apotex, Inc., 480 F.3d
1348, 1370 (Fed. Cir. 2007). Moreover, under section 103, "[c]ombining
two embodiments disclosed adjacent to each other in a prior art patent does
not require a leap of inventiveness." Boston Sci. Scimed, Inc. v. Cordis
Corp., 554 F.3d 982,991 (Fed. Cir. 2009). "[I]n a section 103 inquiry, 'the
fact that a specific [embodiment] is taught to be preferred is not controlling,
since all disclosures of the prior art, including unpreferred embodiments,
must be considered."' Merck & Co. v. Biocraft Labs., Inc., 87 4 F .2d 804,
807 (Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d 747,750 (CCPA
1976)). 10
10 Anticipation rejections require a different analysis. In an anticipation
rejection, "it is not enough that the prior art reference ... includes multiple,
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For at least the aforementioned reasons, on this record, we find a
preponderance of the evidence supports the Examiner's underlying factual
findings and ultimate legal conclusion of obviousness regarding
representative dependent claim 5, as rejected under Rejection C. Grouped
dependent claim 15 (not argued separately) falls with representative claim 5.
See supra "Grouping of Claims." Accordingly, we sustain the Examiner's
Rejection C of claims 5 and 15.
Rejection D of Claims 3, 4, 13, 14, and 33 under 35 U.S.C. § 103(a)
Claims 3, 4, 13, 14, and 33 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being obvious over Wei in view of Dixon and further in view of
MOBILE-BEAUTY SYSTEMS. Appellants contest the following
"wherein" clause of representative dependent claim 3:
wherein the first service tier is associated with mobile staff
resources having salon equipped vehicles and the second service
tier is associated with mobile freelance stylist resources.
Claim 3 ( emphasis added). See App. Br. 43--44.
distinct teachings that [an] artisan might somehow combine to achieve the
claimed invention." Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359,
1371 (Fed. Cir. 2008). Rather, the reference must "clearly and
unequivocally disclose the claimed [invention] or direct those skilled in the
art to the [invention] without any need for picking, choosing, and combining
various disclosures not directly related to each other by the teachings of the
cited reference." Id. ( quoting In re Arkley, 455 F .2d 586, 587 (CCP A
1972)). Thus, while "[s]uch picking and choosing may be entirely proper in
the making of a 103, obviousness rejection ... it has no place in the making
of a 102, anticipation rejection." Arkley, 455 F.2d at 587-88.
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Appellants focus on Page 1 of MOBILE-BEAUTY SYSTEMS and
contend:
... As defined in the specification at paragraph [0071],
the mobile staff resources having salon equipped vehicles are
stylists that work inside the salon equipped vehicles. As defined
in paragraph [0072], the mobile freelance stylist resources are
hairstylists that will meet the client at different hair salons ....
First, the MOBILE-BEAUTY SYSTEMS references
appears to show a salon equipped vehicle. However, it does not
show a "mobile freelance stylist".
App. Br. 43 ( emphasis added).
In response, we note that claim 3 actually recites "mobile freelance
stylist resources" which is not the same as the "mobile freelance stylist"
argued by Appellants. Id. ( emphasis added). Therefore, we find Appellants'
argument unpersuasive because it is not commensurate with the broader
scope of the claim.
Regarding the Appellants' reliance on secondary considerations
(unexpected results), Appellants have not provided any supporting evidence.
See App. Br. 43. We agree with and adopt the Examiner's detailed
responses (Final Act. 22-23), particularly:
wherein the first service tier is associated with mobile staff
resources having salon equipped vehicles, is taught by
MOBILE-BEAUTY SYSTEMS, Page.I, indicating mobile
resources comprising a mobile spa or double sided beauty
salon, providing a plurality of tier services; and the second
service tier is associated with mobile freelance stylist resources,
is taught by Dixon ,r [0073], "stylist logging in using her id
code and password (202) ".
Furthermore, Dixon teaches mobile freelance stylist resources,
"It can also allow the friend to book an appointment with
the stylist. To book an appointment, the system may provide the
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Application 13/674,823
stylist's calendar, or at least suggest available times for the
appointment."
Dixon ,r,r 100-101 ( emphasis added).
On this record, we find the Examiner provided sufficient articulated
reasoning with some rational underpinning to establish why an artisan would
have modified Wei and Dixon with the teachings and suggestions of
MOBILE-BEAUTY SYSTEMS.
For at least the aforementioned reasons, on this record, we find a
preponderance of the evidence supports the Examiner's underlying factual
findings and ultimate legal conclusion of obviousness regarding
representative dependent claim 3, as rejected under Rejection D. Grouped
dependent claims 4, 13, 14, and 33 (not argued separately) fall with
representative claim 3. Accordingly, we sustain the Examiner's Rejection D
of claims 3, 4, 13, 14, and 33.
Rejection E of Claims 7 and 17 under 35 U.S. C. § 103 (a)
The Examiner rejected claims 7 and 17 under pre-AIA 35 U.S.C.
§ 103(a) as being obvious over Wei in view of Kalik. Appellants contest the
Examiner's findings regarding the following "receiving" limitation of
dependent claim 7:
recezvzng, at the service management system, another
service request from the customer responsive to the customer not
verifying the service request, the another service request
including a new requested time period and the first service.
Claim 7 (emphasis added). See App. Br. 45.
However, Appellants focus on the Examiner's purported improper
combination of Wei and Kalik, and contend:
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The Examiner states on page 25 of the Final Office Action that
the reason to combine Wei in view of Kalik because it would
have been a "more economic, effective and/or efficient
methodology or locating possible or suitable resources by a
person not familiar with available resources". Applicants
respectfully submit that the Examiner has used impermissible
hindsight in the rejection of these claims and "[ o ]ne cannot use
hindsight reconstruction to pick and choose among isolated
disclosures in the prior art to deprecate the claimed invention."
In re Fine, 837 F.2d 1071, 1075 (Fed. Cir. 1988).
App. Br. 45 ( emphasis omitted).
In response, the Examiner further explains the basis for the rejection:
Dependent Claims 7 and 1 7: Examiner further responds to
Appellant's argument for impermissible hindsight by
recognizing that any judgment on obviousness is in a sense
necessarily a reconstruction based upon hindsight reasoning.
But so long as it takes into account only knowledge which was
within the level of ordinary skill at the time the claimed
invention was made, and does not include knowledge gleaned
only from the Applicant [here Appellant's] disclosure, such a
reconstruction is proper (see In re McLaughlin, 443 F.2d 1392,
170 USPQ 209 (CCPA 1971) ).
Ans. 23 ( emphasis omitted).
Appellants do not provide evidence sufficient to demonstrate that
combining the teachings of Wei and Kalik, as proffered by the Examiner
(id.), would have been "uniquely challenging or difficult for one of ordinary
skill in the art," Leapfrog Enters., 485 F.3d at 1162, nor have Appellants
provided any objective evidence of secondary considerations, which our
reviewing court guides "operates as a beneficial check on hindsight," Cheese
Sys., 725 F.3d at 1352.
As evidence in support of Rejection E, the Examiner relies on Kalik
,r 53 ( emphasis added), which describes:
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Appeal2018-000361
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For example, if updated travel conditions indicate that it is no
longer possible to reach a desired resource by a particular time
( for example, reach a restaurant by a reservation time), a person
may be asked to reconfirm the acceptance, or provide a revised
request. In some examples, an updated reservation time, or
other modification to request details such as reservation time,
may be obtained automatically. For example, current travel data
may be used to obtain better time of arrival estimates, and a
previous reservation time may be revised automatically,
optionally on approval by the requester. The requestor, and any
other person having an interest in the request, may be notified of
the new time automatically.
Kalik ,r 53 ( emphasis added).
For at least the aforementioned reasons, on this record, we find a
preponderance of the evidence supports the Examiner's underlying factual
findings and ultimate legal conclusion of obviousness regarding Rejection E
of representative dependent claim 7. Grouped dependent claim 17 (not
argued separately) falls with representative claim 7. Accordingly, we
sustain the Examiner's Rejection E of claims 7 and 17. 11
CONCLUSIONS
The Examiner did not err in rejecting claims 1-9, 11-18, 20, and
29-36 under 35 U.S.C. § 101.
The Examiner did not err in rejecting claims 1, 6, 8, 9, 11, 16, 18, 20,
29-31 and 34 under 35 U.S.C. § 102(b).
11 Although the Examiner sets forth an additional ground of rejection under
§ 103 for claims 10 and 19 (Final Act. 26), we note that claims 10 and 19 are
canceled. Therefore, the rejection for canceled claims 10 and 19 is not
before us on appeal.
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The Examiner erred in rejecting claims 35 and 36 under 35 U.S.C.
§ 102(b).
The Examiner did not err in rejecting claims 2-5, 7, 12-15, 17, 32,
and 33 under pre-AIA 35 U.S.C. § 103(a).
DECISION
We affirm the Examiner's decision rejecting claims 1-9, 11-18, 20,
and 29-36 under 35 U.S.C. § 101.
We affirm the Examiner's decision rejecting claims 1, 6, 8, 9, 11, 16,
18, 20, 29-31, and 34 under 35 U.S.C. § 102(b).
We reverse the Examiner's decision rejecting claims 35 and 36 under
35 U.S.C. § 102(b ).
We affirm the Examiner's decision rejecting claims 2-5, 7, 12-15, 17,
32, and 33 under pre-AIA 35 U.S.C. § 103(a).
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner's decision is affirmed. See 37
C.F.R. § 4I.50(a)(l).
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). See
37 C.F.R. § 41.50(±).
AFFIRMED
42