Sunil Kumar. Garg et al.

Patent Trials and Appeals Board

May 27, 2020

2018008537 (P.T.A.B. May. 27, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/520,095 10/21/2014 Sunil Kumar Garg UP-048 3436
110654 7590 05/27/2020
Mahamedi IP Law LLP (Uber)
910 Campisi Way, Suite 1E
Campbell, CA 95008
EXAMINER
ELCHANTI, ZEINA
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
05/27/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
uspto@m-iplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SUNIL KUMAR GARG, STACEY CORWIN FARRELLY,
RYAN DAVID McKILLEN, and MAYA PARITOSH CHOKSI

Appeal 2018-008537
Application 14/520,095
Technology Center 3600
BEFORE ERIC S. FRAHM, DENISE M. POTHIER, and
MICHAEL T. CYGAN, Administrative Patent Judges.
POTHIER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1,2 appeals from the
Examiner’s decision to reject all pending claims 1–6, 8–11, and 21–30. See
Appeal Br. 3.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Uber
Technologies, Inc. Appeal Br. 3.
2 Throughout this opinion, we refer to the Final Action (Final Act.) mailed
November 16, 2017, the Appeal Brief (Appeal Br.) filed April 2, 2018, the
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We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to “[a]n on-demand service arrangement
system [that] can enable users to request on-demand services through [the]
use of computing devices,” including transport or delivery services. Spec.
¶ 1. A business can set up an account with the system to enable the business
to pay for the services for their employees associated with a business
account and can create rules (e.g., Rule1–Rule7, Rule 1001, 1004, 1017)
associated with the account. Id. ¶¶ 1, 5, 9–10, 34–45, 69–70, Fig 3. The
system includes determining whether a user’s transport request satisfies one
or more rules, including those concerning a specific transport type (e.g., the
cheapest transport type) and geofence information (e.g., geographic
location). Id. ¶¶ 34–36, 38–39, 68–69, 74, Figs. 3–4 (step 440)
Claim 1, below, illustrates the claimed subject matter:
1. A method of managing a network-based on-demand
transport service for a given geographic region, the method being
performed by one or more processors of a network-computing
system and comprising:

[a] based on an executing client application on computing
devices of users throughout the given geographic region,
establishing wireless network connections to communicate with
the computing devices of the users over one or more wireless
networks;

[b] based on an executing driver application on computing
devices of drivers operating vehicles throughout the given

Examiner’s Answer (Ans.) mailed June 29, 2018, and the Reply Brief
(Reply Br.) filed August 28, 2018.
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geographic region, establishing wireless network connections to
communicate with the computing devices of the drivers over the
one or more wireless networks;

[c] receiving, over the one or more wireless networks from
a computing device of a user, a transport request for a transport
service for the user, the transport request indicating (i) a user
identifier (ID) associated with the user, (ii) a requested transport
type, and (iii) a pickup location;

[d] initiating a driver selection process to service the
transport request for the user by (i) receiving, over the one or
more wireless networks from the computing devices of the
drivers, location data indicating current locations of the drivers,
and (ii) based on the current locations of the drivers, selecting a
proximate driver of a vehicle, in relation to the user, that satisfies
the requested transport type to provide the transport service for
the user;

[e] determining, based on the user ID, that the user is
associated with a service entity corresponding to the transport
service;

[f] in response to determining that the user is associated
with the service entity, determining, by the network-computing
system, whether the transport request satisfies a set of
authorization rules for utilizing a service account of the service
entity based, at least in part, on the requested transport type and
the pickup location, wherein the set of authorization rules specify
one or more authorized transport types and a configured
geofence specifying a geographic area within which pick-up
locations are authorized;

[g] based, at least in part, on (i) the requested transport
type being an authorized transport type, and (ii) the pick-up
location being within the configured geofence, determining that
the transport request satisfies the set of authorization rules; and

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[h] in response to determining that the transport request
satisfies the set of authorization rules, at least partially charging
the service account of the service entity for providing the
transport service for the user.

Appeal Br. 24–25 (Claims App.) (bracketing and lettering added)
(“limitations [a]–[h]” respectively).
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments presented in this appeal. Arguments which Appellant could have
made, but did not make in the Brief are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(iv). Except as noted, we adopt as our own the findings and
reasons set forth in the rejections from which the appeal is taken and in the
Examiner’s Answer.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Sullivan US 2005/0125667 A1 June 9, 2005
Lal US 2006/0149569 A1 July 6, 2006
Hill US 2009/0216600 A1 Aug. 27, 2009
Greak US 2011/0112869 A1 May 12, 2011
Lerenc US 2013/0158869 A1 June 20, 2013
Ye US 2015/0127526 A1 May 7, 2015 (filed
Aug. 8, 2014)
Gaitan US 2016/0292596 A1 Oct. 6, 2016 (U.S.
Provisional
Application No.
61/907,080 filed
November 21, 2013)

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THE PATENT ELIBIGILITY REJECTION
Appellant argues claims 1, 21, and 30 as a group. Appeal Br. 10–15.
We select these claims as representative. See 37 C.F.R. § 41.37(c)(1)(iv).
Regarding representative claim 1, the Examiner found that the claim
is “directed to the abstract idea of ‘requesting a transportation service[.]’”
Final Act. 6. The Examiner further stated the “claims do not include
additional elements that are sufficient to amount to significantly more than
the judicial exception,” noting additional elements in the claims (e.g.,
computing system, processor, and memory). Id. at 7. The Examiner
contended the additional elements are generic computer components
performing generic computer functions. Id. The Examiner also found “the
steps/functions of independent claims 1, 21, and 30 whether taken alone or
in an ordered combination amount to significantly more than the abstract
idea identified above,” including they do not (1) improve a technology or
technical field, (2) solve a problem specifically arising in computer
technology, or (3) improve the claimed processor’s function. Id.
Appellant argues the Examiner did not establish a prima facie case of
patent-ineligibility because the Examiner did not evaluate the claim as a
whole. Appeal Br. 10–11. Appellant also argues certain emphasized
features “make clear the subject matter of claim [30]3 is patent-eligible.” Id.
at 13. Appellant also argues claim 30 involves wireless network
communications with computing devices of users and drivers based on
executed applications on the computing devices and without these devices
the claimed method cannot be performed. Id. at 14. For this reason,

3 Appellant mistakenly refers to claim 1 after quoting from and referring to
the emphasized features in claim 30. Appeal Br. 12–13.
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Appellant argues the additional elements in claim 30 are not generic
recitations to a computer but are machines that impose meaningful limits on
the claim’s scope. Id. at 14–15; Reply Br. 3–7.

LEGAL PRINCIPLES
The Patent Act defines patent-eligible subject matter broadly:
“Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.” 35 U.S.C. § 101. In Mayo and Alice, the
Supreme Court explained that § 101 “contains an important implicit
exception” for laws of nature, natural phenomena, and abstract ideas. Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012);
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014); see also Diamond
v. Diehr, 450 U.S. 175, 185 (1981). In Mayo and Alice, the Court set forth a
two-step analytical framework for evaluating patent-eligible subject matter.
Mayo, 566 U.S. at 77–80; Alice, 573 U.S. at 217–18.
Under Mayo/Alice step one, we “determine whether the claims at
issue are directed to” a judicial exception, i.e., an abstract idea, a law of
nature, or a natural phenomenon. Alice, 573 U.S. at 217. See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”). Step one involves looking at the “focus” of the claims at
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issue and their “character as a whole.” SAP Am., Inc. v. InvestPic, LLC,
898 F.3d 1161, 1167 (Fed. Cir. 2018).
Under Mayo/Alice step two, we “consider the elements of each claim
both individually and ‘as an ordered combination’ to determine whether the
additional elements” add enough to transform the “nature of the claim” into
“significantly more” than the judicial exception. Alice, 573 U.S. at 217–18,
221–22 (quoting Mayo, 566 U.S. at 78–79). “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. at 221
(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. Step two involves the
search for an “inventive concept.” Alice, 573 U.S. at 217–18, 221; Univ. of
Fla. Research Found., Inc. v. Gen. Elec. Co., 916 F.3d 1363, 1366 (Fed.
Cir. 2019). “[A]n inventive concept must be evident in the claims.”
RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017).
In January 2019, the PTO issued revised guidance for determining
whether claims are directed to a judicial exception. See 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Revised Guidance”).4 The Revised Guidance applies to the Board. Id.
at 50–51, 57 n.42; see 35 U.S.C. § 3(a)(2)(A) (investing the Director with
responsibility “for providing policy direction” for the PTO).

4 Neither the Examiner nor Appellant had the benefit of the Revised
Guidance when presenting their respective positions concerning subject-
matter eligibility.
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Under the Revised Guidance and the October 2019 Update: Subject
Matter Eligibility (“October 2019 Update”), we first look to whether the
claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).

Revised Guidance, 84 Fed. Reg. at 52–55. Step 2A, Prong Two involves (a)
identifying whether there are any additional elements recited in the claim
beyond the judicial exception, and (b) evaluating those additional elements
individually and in combination to determine whether the claim as a whole
integrates the exception into a practical application. See Revised Guidance -
Section III(A)(2), 84 Fed. Reg. 54–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, 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, conventional activities
previously known to the industry, specified at a high level of generality,
to the judicial exception.

Revised Guidance, 84 Fed. Reg. at 52–56.

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ANALYSIS
Prima Facie Case
At the outset, we disagree with Appellant that the Examiner failed to
establish prima facie case of patent-ineligibility. As indicated above, Mayo
and Alice set forth a two-step analytical framework for evaluating patent-
eligible subject matter. Mayo, 566 U.S. at 77–80; Alice, 573 U.S. at 217–18.
The Examiner has analyzed representative claims 1, 21, and 30 under this
two-step framework. Final Act. 6–7.
The Examiner first identified and explained that the claims are
directed to a judicial exception, including to certain methods of organizing
human activity and mental processes. See id. at 6; Ans. 4. The Examiner
also considered the additional elements (e.g., computing system, medium,
processor, and memory) individually and as a combination and determined
that they do not add enough to transform the claims as a whole into
significantly more than the identified judicial exception. Final Act. 7 (citing
Alice, 573 U.S. 208, and its “corresponding citations” from USPTO July
2015 Update on Subject Matter Eligibility 7) (stating the additional elements
perform generic computer functions and do not improve a technology or a
hardware’s functions); see Ans. 4–5. The Examiner’s analysis is also
consistent with the Office’s current guidelines. See October 2019 Update
15–16.5
Revised Guidance Step 1
Step 1 of the Revised Guidance asks whether the claimed subject
matter falls within the four statutory categories of patentable subject matter

5 Available at https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf (last visited May 12, 2020).
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identified by 35 U.S.C. § 101: process, machine, manufacture, or
composition of matter. See Revised Guidance. Claim 1 recites “[a] method
of managing a network-based on-demand transport service for a given
geographic region”; claim 21 recites “[a] non-transitory computer-readable
medium storing instructions that, when executed . . ., cause the network-
computing system to” perform various functions; claim 30 recites “[a]
network-computing system” that perform various functions. Appeal Br. 24–
25, 28–29, 32–33 (Claims App.). Appellant does not argue the Examiner
erred in concluding these claims fall within the four statutory categories of
patentable subject matter.
Mayo/Alice Step One; Revised Guidance Step 2A, Prong 1
Under Step 2A, Prong 1 of the Revised Guidance, we determine
whether the claims recite any judicial exceptions, including certain groups of
abstract ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes). See Revised Guidance at 51–54.
In this application, the Examiner determined that claims 1, 21, and 30
are directed to “requesting a transportation service” (Final Act. 6) as well as
“requesting and providing a transportation service” (Ans. 4). The Examiner
categorized the claimed concept as “certain methods of organizing human
activity” and a process that “can be performed by a human using a pen and
paper.” Final Act. 6. We agree with the Examiner.
Representative claim 1 recites “[a] method of managing a[n] . . . on-
demand transport service for a given geographic region.” Appeal Br. 24
(Claims App.). Claim 1’s body further recites limitations [c]–[h] recitations
directed to requesting and processing a transport service. Id. at 23–24
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(Claims App.). For example, claim 1 recites “receiving . . . a transport
request for a transport service for the user, the transport request indicating (i)
a user identifier (ID) associated with the user, (ii) a requested transport type,
and (iii) a pickup location” (i.e., limitation [c]);
initiating a driver selection process to service the transport
request for the user by (i) receiving . . . location data indicating
current locations of the drivers, and (ii) based on the current
locations of the drivers, selecting a proximate driver of a vehicle,
in relation to the user, that satisfies the requested transport type
to provide the transport service for the user

(limitation [d]); “determining, based on the user ID, that the user is
associated with a service entity corresponding to the transport service”
(limitation [e]);
in response to determining that the user is associated with the
service entity, determining . . . whether the transport request
satisfies a set of authorization rules for utilizing a service account
of the service entity based, at least in part, on the requested
transport type and the pickup location, wherein the set of
authorization rules specify one or more authorized transport
types and a configured geofence specifying a geographic area
within which pick-up locations are authorized

(limitation [f]); “based, at least in part, on (i) the requested transport type
being an authorized transport type, and (ii) the pick-up location being within
the configured geofence, determining that the transport request satisfies the
set of authorization rules” (limitation [g]), and “in response to determining
that the transport request satisfies the set of authorization rules, at least
partially charging the service account of the service entity for providing the
transport service for the user” (limitation [h]). Appeal Br. 24–25 (Claim
App.).
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All the above-quoted language in claim 1 (as well as similar language
in claims 21 and 30) demonstrate that the focus of claim 1 is on a process for
requesting a transport service and processing the request. See id. This
process is analogous to the steps an employee of a company takes when
requesting a taxi service using a business account over the phone and the
taxi service processing the request. This claimed process essentially
describes business relations or sales activities. We therefore conclude that
claim 1 (and similarly, claims 21 and 30) recite commercial interactions that
fall within the certain method of organizing human activity category of the
judicial exceptions set forth in the Revised Guidance. See buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350, 1354–55 (Fed. Cir. 2014) (finding its claims
were directed to an abstract idea of creating a contractual relationship); cf.
Alice, 573 U.S. at 220–221 (determining claims drawn to the concept of an
intermediated settlement or using a third party to mitigate settlement risk are
abstract ideas).
Additionally, the above-noted steps (e.g., limitations [c]–[h]) of claim
1 (and similar limitations in claims 21 and 30) recite concepts that can be
performed in the human mind, including observations, evaluations, and
judgments. For example, the above-noted limitations [c]–[d] involve
“receiving . . . a transport request for a transport service for the user, the
transport request indicating (i) a user identifier (ID) associated with the user,
(ii) a requested transport type, and (iii) a pickup location” and “receiving . . .
location data indicating current locations of the drivers.” These steps could
be performed by (1) observing the current drivers’ locations as well as the
user identifier (ID), requested transport type, and pickup location from a
transport request and (2) storing this information mentally or writing down
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the information—steps that can involve mere observation, evaluation, and
logical reasoning. See Mortg. Grader Inc. v. First Choice Loan Servs., Inc.,
811 F.3d 1314, 1324 (Fed. Cir. 2016) (holding a claim reciting selecting
information, upon determining a borrower wishes to obtain a loan, could be
performed by humans without a computer); cf. CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1372–73 (Fed. Cir. 2011) (noting that a
recited step that used a map of credit card numbers to determine the validity
of a credit card transaction could be performed entirely mentally by merely
using logical reasoning).
Also, each of the limitations [d]–[g] involving a “determining” step
that can be done by a person merely observing information (e.g., current
drivers’ locations in limitation [d], user ID in limitation [e], and
authorization rules, transport type and authorized transport type, pickup
location, and configured geofence specifying an authorized geographic area
for pickup locations in limitations [f]–[g]) and mentally providing or writing
down the determination. These steps can involve mere judgement and
logical reasoning. See Mortg. Grader, 811 F.3d at 1324 (holding a claim
reciting selecting information, upon determining a borrower wishes to obtain
a loan, could be performed by humans without a computer); see
CyberSource, 654 F.3d at 1372–73 (noting that a recited step that used a
map of credit card numbers to determine the validity of a credit card
transaction could be performed entirely mentally by merely using logical
reasoning). Likewise, the step of “charging the service account” (limitation
[h]) involves evaluating the authorization rules.
Accordingly, limitations [c]–[h] fall squarely within the mental
processes category of the agency’s guidelines and, therefore, recite an
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abstract idea. See Guidance, 84 Fed. Reg. at 52 (listing exemplary mental
processes include observation and evaluation).
Appellant argues certain emphasized features in claim 30 “make clear
the subject matter of claim [30] is patent-eligible.” Appeal Br. 13. The
emphasized features are (1) “network-computing system comprising: one or
more processors” and (2) “a memory storing instructions that, when
executed by the one processors, cause the computer system to:” (a) “based
on an executing client application on computing devices throughout a given
geographic region, establish wireless network connections to communicate
with the computing devices of the users over one or more wireless
networks;” (b) “based on an executing driver application on computing
devices of drivers operating vehicles throughout the given geographic
region, establish wireless network connections to communicate with the
computing devices of the drivers over the one or more wireless networks;”
(c) “receive, over the one or more wireless networks from a computing
device of a user, a transport request for a transport service for the user, the
transport request indicating (i) a user identifier (ID) associated with the user,
(ii) a requested transport type, and (iii) a pickup location” and (d) “receiv[e],
over the one or more wireless networks from the computing devices of the
drivers, location data indicating current locations of the drivers.” Id. at 12
(bolding the above limitations in claim 30 omitted). These limitations are
similar to limitations [a]–[d] in claim 1.
To be sure, claim 30, as well as claims 1 and 21, recite a network-
computing system, processor(s), and other additional elements. However,
Step 2A, Prong 1 of USPTO Guidance is satisfied where the claim sets forth
or describes an abstract idea. October 2019 Update, 1. As further explained
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by the courts, a determination of whether a claim is directed to an abstract
idea involves looking at the “focus” of the claims and their “character as a
whole.” SAP, 898 F.3d at 1167. For reasons explained above, the focus of
claims 1, 21, and 30 is on requesting and processing a requested transport
service, not the network-computing system, the processor, memory, and
establishing the wireless network connections for the user and driver
computing devices to communicate as Appellant asserts. The Specification
also supports this conclusion, summarizing the invention as an on-demand
service arrangement system that involves requesting a transport service and
processing the request subject to rules to determine whether the request is
valid. See Spec. ¶¶ 1, 8–10, Abstract.
In the Reply Brief, Appellant argues the emphasized features of claim
30 (e.g., executing the client and driver applications on computing devices to
establish wireless connections over wireless networks for computing devices
to communicate and receiving data over the wireless networks) demonstrate
the method cannot be performed mentally. Reply Br. 4. Yet, cases support
that a claim’s subject matter can be considered a mental process even though
a claim recites elements requiring the process to be performed using
computing devices or a network. See, e.g., Gottschalk v. Benson, 409 U.S.
63, 65–67 (1972) (determining the claimed process, involving a general-
purpose computer, that converts BCD (binary-coded decimal) numerals to
pure binary numerals is a mental process that can be performed by the
human mind); see, e.g., CyberSource, 654 F.3d at 1372–73 (determining
claim 3’s steps, which involve using the Internet, recite unpatentable mental
processes that can be performed by the human mind).
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Alice/Mayo Step 2; Revised Guidance Step 2A, Prong 2
Under Step 2A, Prong 2 of the Revised Guidance, we next determine
whether the claims recite additional elements that integrate the judicial
exception into a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)).
To integrate the exception into a practical application, the additional claim
elements must, for example, improve the functioning of a computer or any
other technology or technical field (see MPEP § 2106.05(a)), apply the
judicial exception with a particular machine (see MPEP § 2106.05(b)), affect
a transformation or reduction of a particular article to a different state or
thing (see MPEP § 2106.05(c)), or apply or use the judicial exception in
some other meaningful way beyond generally linking the use of the judicial
exception to a particular technological environment (see MPEP
§ 2106.05(e)). See Revised Guidance.
The “additional elements” recited in claim 1, 21, and 30 include “a
network-based on-demand transport service” (claim 1), “one or more
processors” (claims 1, 21, and 30), “a network-computing system” (claims 1,
21, and 30), “client application on computing devices” of users (claims 1,
21, and 30), “wireless network connections to communicate with the
computing devices” of users and drivers “over the one or more wireless
networks” (claims 1, 21, and 30), “driver application on computing devices
of drivers” (claims 1, 21, and 30), “[a] non-transitory computer-readable
medium” (claim 21), and “a memory storing instructions” (claim 30).
Appeal Br. 24–25, 28–29, 32–33 (Claims App.); Final Act. 7. The Examiner
found these elements were nothing more “generic computer component[s]
that perform . . . generic computer functions,” such as receiving, processing,
storing, and transmitting information over a network. Final Act. 7; Ans. 5.
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Upon review, Appellant has not persuaded us that the Examiner erred.
Our reviewing court has “made clear that mere automation of manual
processes using generic computers does not constitute a patentable
improvement in computer technology.” Credit Acceptance Corp. v.
Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017). Like the claims in
Credit Acceptance, the focus of claim 1 is on the business practice of
processing a received transport service request “and the recited generic
computer elements ‘are invoked merely as a tool.’” Id. (citing Enfish, LLC
v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)); see also Versata Dev.
Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015).
Specifically, the claimed “one or more processors,” “network-computing
system,” “applications” for the users and drivers, “computing devices” for
users and drivers, “one or more wireless networks,” and “wireless network
connections” are computer elements invoked as tools to implement
processing the received transport service request and to achieve the claimed
results. See Appeal Br. 24–25 (Claims App.).
The Specification confirms the generic nature of the claimed “one or
more processors,” “network-computing system,” “applications” for the users
and drivers, “computing devices” for users and drivers, “one or more
wireless networks,” and “wireless network connections.” See Spec. ¶¶ 13–
15, 17–20, Fig. 1. For example, the wireless networks and connections
perform the generic function of communicating with computing devices, the
client and driver applications perform the generic function of providing the
framework to establish the connections between computing devices, and the
network-computing system and processor perform generic functions of
processing information. See id. Similarly, for claims 21 and 30, the
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Specification confirms the generic nature of the claimed “non-transitory
computer-readable medium” and “memory.” See id. ¶ 18.
Appellant argues claim 30 does not include generic recitations to
computers and networks performing basic and generic computer functions.
Appeal Br. 14–15. Instead, Appellant argues “[w]ithout [the recited]
wireless network connections established via these distinct executing
applications, the claimed process cannot be performed.” Id. at 14. For this
reason, Appellant contends claim 30 “imposes ‘meaningful limits on the
claim’s scope,’ and therefore recites features that amount to ‘significantly
more’ than the alleged abstract idea of ‘requesting a transportation service.’”
Id.; Reply Br. 7.
We are not persuaded. Several cases have found similar recitations to
those in claim 1 do not integrate the judicial exception into a practical
application or transform claims into patent-eligible subject matter. As cited
by the Examiner (Ans. 5), the claims in buySAFE, Inc., 765 F.3d 1350,
involve a process that received a request for a service on a computer
application program running on a computer, processing the request on the
computer application running on the computer, and offering the service
through a computer network. buySAFE, 765 F.3d at 1352. The court in
buySAFE found the recited “computers add[ed] no inventive concept” and
“[t]he computer functionality is generic.” Id. at 1355. The court also
concluded “[t]hat a computer receives and sends the information over a
network—with no further specification—is not even arguably inventive.”
Id. (further discussing the computers in Alice received and sent information
over networks connecting the intermediary to the other institutions and
indicating the Court found the claimed role of the computers insufficient).
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Also, in OIP Technologies, Inc. v. Amazon.com, Inc., 788 F.3d 1359 (Fed.
Cir. 2015), its claims were directed to a process for pricing a product for sale
that involve using a network, a machine-readable medium, a computer
system, and communicating over the network. See OIP Techs., 788 F.3d at
1361. Like buySAFE, the court in OIP Technologies found these additional
elements did not transform the identified abstract idea into a patent-eligible
application. Id. at 1364.
Similar to buySAFE and OIP Technologies, claims 1, 21, and 30’s
additional elements are computing devices that perform generic computer
functionality over a network with no significant further details. See Appeal
Br. 24–25 (Claims App.). Although the additional elements in claims 1, 21,
and 30 may permit the identified judicial exception to be achieved more
quickly using computer devices and network connections, we determine the
additional elements do not provide a significant role in permitting the claims
to be performed. Thus, unlike the claim in SiRF Technology, Inc. v.
International Trade Commission, 601 F.3d 1319 (Fed. Cir. 2010), discussed
by Appellant (Appeal Br. 14), where the court found a GPS receiver
essential to the operation of the claimed methods and thus, the claims were
eligible under § 101, id., 601 F.3d at 1332–33, Appellant has not
persuasively shown that claims 1, 21, or 30 recite a machine that imposes
meaningful limits on claim 1, 21, or 30’s scope.
The Examiner further found “the steps/functions of independent
claims 1, 21, and 30 whether taken alone or in an ordered combination” do
not improve a technology or technical field, solve a problem specifically
arising in computer technology, or improve the claimed processor’s
function. Final Act. 7. Appellant has not contested whether claims 1, 21,
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and 30 improve a technology other than stating it disagrees with the
Examiner’s statement in this regard. See Appeal Br. 13 (stating “Appellant
disagrees” but not further elaborating on whether the claims improve a
technology).
In any event, we agree with the Examiner. The above-identified
additional elements in claims 1, 21, and 30 do not focus on “a specific
means or method that improves the relevant technology.” McRO, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016).
Rather, as buySAFE explains, the additional elements “[a]t best” are an
“‘attempt[ ] to limit the use’ of the abstract . . . idea ‘to a particular
technological environment,’ which has long been held insufficient to save a
claim in this context.” buySAFE, 765 F.3d at 1355 (citing Alice, 573 U.S. at
223). That is, claims 1, 21, and 30 do no more than generally link the
identified judicial exception (e.g., processing a requested transport request)
to a particular technology environment (i.e., computing devices within
wireless networks).
For these reasons, Appellant has not persuaded us of Examiner error
with respect to Step 2A, Prong 2 of the Revised Guidance. We, therefore,
conclude the judicial exception is not integrated into a practical application
under the Revised Guidance.
Alice/Mayo Step 2; Revised Guidance Step 2B
Under Step 2B of the Revised Guidance, we next determine whether
the claims recite an “inventive concept” that “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 Glob.
Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir.
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2016). There must be more than “computer functions [that] are ‘well-
understood, routine, conventional activit[ies]’ previously known to the
industry.” Alice, 573 U.S. at 225 (second alteration in original) (quoting
Mayo, 566 U.S. at 73).
The Examiner determined that the additional elements in claims 1, 21,
and 30 are not sufficient to amount to significantly more than the identified
judicial exception. Final Act. 7. The Examiner found the additional
elements are generic computer components “perform[ing] functions . . . that
are well-understood, routine, and conventional activities previously known
to the industry.” Id. (citing Alice, 573 U.S. 208, and its “corresponding
citations” from USPTO July 2015 Update on Subject Matter Eligibility 7).
In the Appeal Brief, Appellant does not contest the functions
performed by the additional elements in claims 1, 21, and 30 are well-
understood, routine, and conventional. See Appeal Br. 10–15. In the Reply
Brief, however, “Appellant respectfully disagree” because the Examiner
should only conclude an activity is well-understood, routine, and
conventional when the element “is widely prevalent or in common use in the
relevant industry.” Reply Br. 6 (citing “the ‘Berkheimer Memo”6); see id. at
6–7.
We are not persuaded. The Berkheimer Memo sets forth four separate
ways the Office can support an additional element is well-understood,
routine, and conventional. The Berkheimer Memo 3–4. These include: (1) a

6 Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.), available at
https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-
20180419.PDF (“the Berkheimer Memo”).
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citation to a statement in the Specification or during prosecution that
demonstrates the well-understood, routine, and convention nature of the
additional elements, (2) a citation to one or more court decisions noting the
well-understood, routine, and conventional nature of the additional elements,
(3) a citation to a publication indicating the well-understood, routine, and
conventional nature of the additional elements, or (4) a statement by the
Examiner taking official notice of the well-understood, routine, and
conventional nature of the additional elements. See id.
Here, we find the Examiner’s position reasonable because case law
supports the well-understood, routine, and conventional nature of the
additional elements. For example, using computing devices to obtain data
(e.g., limitations [a]–[d]), process data (e.g., limitations [d]–[g]), and issue
automated instructions (e.g., limitation [h]) have been found to be well-
understood, routine and conventional activities previously known in
industry. See Alice, 573 U.S. at 225. Additionally, claim limitations related
to programming devices to communicate and receive information (e.g.,
limitations [a]–[d]) as well as using a computer system to determine
outcomes automatically (e.g., limitations [f]) can be considered conventional
computer activities. See OIP Techs., 788 F.3d at 1363.
Lastly, referring to the limitations in claim 30, Appellant contends
claim 30 “does not seek to tie up every application of ‘requesting a
transportation service,’ and therefore eligibility is self-evident.” Appeal Br.
13; see also Reply Br. 6 (discussing steps in claim 30 that purportedly do not
tie up every application of the “alleged abstract idea”). “While preemption
may signal patent ineligible subject matter, the absence of complete
preemption does not demonstrate patent eligibility.” Ariosa Diagnostics,
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Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also Rapid
Litig. Mgmt. v. CellzDirect, Inc., 827 F.3d 1042, 1052 (Fed. Cir. 2016)
(citing Ariosa, 788 F.3d at 1378–79). Instead, issues related to preemption
are resolved by the two-part framework set forth in Alice and Mayo. See
Ariosa, 788 F.3d at 1379. As illustrated above, issues related to preemption
have been resolved by these principles.
We therefore agree with the Examiner that the claims do not recite an
“inventive concept” sufficient to transform the claims from an abstract idea
to a patent eligible application.
For the foregoing reasons, Appellant has not persuaded us of error in
the rejection of independent claims 1, 21, and 30 and dependent claims 2–6,
8–11, and 22–29, which are not argued separately.
OBVIOUSNESS REJECTION OVER HILL, LAL, AND GREAK
Claims 1, 2, 5, 8,7 10, 11, 21, 22, 25, 28, and 30 are rejected under 35
U.S.C. § 103 as being unpatentable over Hill, Lal, and Greak. Final Act. 8–
15. Regarding independent claim 1, the Examiner found that Hill teaches
many of its features. Final Act. 8–9. In combination with Hill, the
Examiner turned to (1) Lal to teach the “determining . . . that the user is
associated with a service entity,” “determining, by the network-computing
system, whether the transport request satisfies a set of authorization rules,”
and “determining that the transport request satisfies the set of authorization

7 The rejection includes claim 9 in its heading. Final Act. 8. However,
claim 9 is not addressed in the rejection’s body (id. at 8–15) and is
separately rejected based on Hill, Lal, Greak, and Sullivan (id. at 20–21).
We presume including claim 9 in the rejection’s heading is typographical
error.
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rules ” steps, and (2) Greak to teach “charging the service account” step. Id.
at 9–11 (citing Lal ¶¶ 40, 59–60 and Greak ¶ 143).
Among other arguments, Appellant contends Lal involves a person
determining that a employee is authorized to rent a car in a city and thus
does not involve “determining, by a network-computing system, whether the
transport request satisfies a set of authentication rules” as claim 1 requires
(Appeal Br. 24 (Claims App.) (emphasis added)) and under claim 1’s
broadest reasonable construction. Id. at 17–18 (citing Lal ¶¶ 59–60, code
(57)). Appellant reiterates this argument in the Reply Brief, contending
Lal’s portal does not determine whether the request satisfies a set of rules
but rather an administrator (e.g., a human) performs this task. Reply Br. 9–
10.

ISSUE
Under 35 U.S.C. § 103, has the Examiner erred by finding that Hill,
Lal, and Greak disclose:
in response to determining that the user is associated with the
service entity, determining, by the network-computing system,
whether the transport request satisfies a set of authorization rules
for utilizing a service account of the service entity based, at least
in part, on the requested transport type and the pickup location,
wherein the set of authorization rules specify one or more
authorized transport types and a configured geofence specifying
a geographic area within which pick-up locations are authorized

(“the disputed determining step”) in claim 1 and similarly recited in claims
21 and 30?
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ANALYSIS
Based on the record before us, we find error in the rejection. As
presented, the Examiner acknowledges Hill does not teach the disputed
determining step, turning to Lal for its teachings in this regard. Final Act. 9–
11. We therefore confine our discussion to Lal.
The Examiner cites Lal to teach the disputed determining step,
including that “the network-computing system” performs this step. See id.
(citing Lal ¶¶ 59–60). Lal discusses an administrative portal, shown in
Figure 12, that provides the administrator with options in responding to the
employee requests through a web-based employee service center (ESC). Lal
¶¶ 48, 51–52, 59, Figs. 10, 12. Specifically, Lal discusses:
[T]he administrative portal would allow the administrator to
approve the request, ask the employee for clarification
concerning the request, or reject the request. For example, the
administrator may review a car rental request and determine from
the employee’s user access identification code that the employee
is not authorized to rent a car. In that case, the administrator
would select the “rejection” option on the portal, which would,
in one embodiment, be configured to send the employee an email
rejection of the service.

Id. ¶ 59. Lal further states
A foreign employee would make a request through the ESC for
a rental car in a certain city on certain dates. If the administrator
determines that the employee is authorized to rent the car in the
city and on the dates specified, the process administrator would
approve the request for third party processing 200.

Id. ¶ 60.
In response to Appellant’s argument that a network-computing system
in Lal does not perform the disputed determining step, the Examiner asserts
paragraph 59’s teaching in Lal
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means that Lal teaches that the administrator uses a portal (i.e.[,]
“network computing system”) to determine whether the request
meets a set of rules and approve the request. [The] Examiner
interprets the administrator portal taught by Lal to be the claimed
“network computing system” and therefore Lal teaches the
limitation as claimed.

Ans. 9.
Although the above passages discuss the administrator using the
portal to gain access to employee requests, Lal describes the administrator,
not the portal, as determining whether or not the employee’s request satisfies
certain rules (e.g., whether or not the employee is authorized to rent a car
and whether to reject the request). See id. ¶¶ 48, 59–60. Thus, like
Appellant, we disagree Lal teaches or suggests a network-computing system
performs the disputed determining step as recited in independent claim 1 or
as similarly recited in independent claims 21 and 30.
In the Final Action, the Examiner additionally stated it would have
been obvious to an ordinarily skilled artisan “to check for authorization in
Hill as taught by Lal” (Final Act. 11) in order to teach the disputed
determining step. See id. at 10–11. The rejection thus proposes to include
Lal’s teaching that an administrator uses a portal to decide whether or not
the transport request satisfies certain rules to teach the disputed determining
step. As discussed above, this proposed combination fails to suggest a
network-computing system performing the disputed determining step.
We thus are constrained on the record to conclude the rejection based
on Hill and Lal as proposed8 does not teach or suggest the recited step of:

8 Hill teaches a transport transaction service (e.g., element 107 in Fig. 1)
within a wireless network running on server computer 108, which performs
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determining . . . whether the transport request satisfies a set of
authorization rules for utilizing a service account of the service
entity based, at least in part, on the requested transport type and
the pickup location, wherein the set of authorization rules specify
one or more authorized transport types and a configured
geofence specifying a geographic area within which pick-up
locations are authorized

as independent claim 1 recites and independent claims 21 and 30 similarly
recite.
For the foregoing reasons, Appellant has persuaded us of error in the
rejection of (1) independent claim 1, (2) independent claims 21 and 30,
which recite commensurate limitations, and (3) dependent claims 2, 5, 8, 10,
11, 22, 25, and 28 for similar reasons.
THE REMAINING OBVIOUSNESS REJECTIONS
Claims 3, 4, 6, and 9 ultimately depend from claim 1; claims 23, 24,
26, and 29 ultimately depend from claim 21. Claims 3 and 23 are rejected
are rejected under 35 U.S.C. § 103 as being unpatentable over Hill, Lal,
Greak, and Ye (Final Act. 15–16); claims 4 and 24 are rejected are rejected
under 35 U.S.C. § 103 as being unpatentable over Hill, Lal, Greak, and
Gaitan (Final Act. 16–18); claims 6 and 26 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Hill, Lal, Greak, and Lerenc (Final Act.
18–19); claims 9 and 29 are rejected are rejected under 35 U.S.C. § 103 as

various determinations using schedule manager 116 and transaction
manager, for instance, when arranging a transport transaction. See Hill
¶¶ 16–20, 27–32, 65–69, Fig. 1. If prosecution continues, the Examiner
should consider whether Hill’s teaching, when combined with Lal, further
suggests to an ordinary skilled artisan using a network-computing system, as
opposed to an a person (e.g., the administrator in Lal), to determine whether
a transport request satisfies the “set of authorization rules” as claim 1 recites.
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being unpatentable over Hill, Lal, Greak, and Sullivan (Final Act. 20–21).
The Examiner does not rely on the additionally cited references (i.e., Ye,
Gaitan, Lerenc, and Sullivan) to cure the above-noted deficiency discussed
previously related to the disputed determining step found in claim 1 and
similarly recited in claims 21 and 30. See id. at 15–21. Accordingly, we do
not sustain these rejections.
Lastly, although reciting similar subject matter to claim 8, we note
dependent claim 27 was not rejected under 35 U.S.C. § 103. See id. at 8–21.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–6, 8–11,
21–30
101 Eligibility 1–6, 8–11,
21–30

1, 2, 5, 8,
10, 11, 21,
22, 25, 28,
30
103 Hill, Lal, Greak 1, 2, 5, 8,
10, 11, 21,
22, 25, 28,
30
3, 23 103 Hill, Lal, Greak,
Ye
3, 23
4, 24 103 Hill, Lal, Greak,
Gaitan
4, 24
6, 26 103 Hill, Lal, Greak,
Lerenc
6, 26
9, 29 103 Hill, Lal, Greak,
Sullivan
9, 29
Overall
Outcome
1–6, 8–11,
21–30

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