Mobileoffer, Inc

Patent Trials and Appeals Board

Oct 20, 2021

2021001884 (P.T.A.B. Oct. 20, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/855,538 12/27/2017 Kurt Brendlinger FSP1317 4985
29586 7590 10/20/2021
Rowan TELS LLC
431 H Street
Crescent City, CA 95531
EXAMINER
STIBLEY, MICHAEL R
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
10/20/2021 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
charles.mirho@rowantelsllc.com
eofficeaction@appcoll.com
jane.clark@rowantelsllc.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KURT BRENDLINGER and ANTHONY WENTZEL
____________

Appeal 2021-001884
Application 15/855,5381
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, SHEILA F. McSHANE, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

McSHANE, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 1–20. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as MOBILOFFER
INC. Appeal Brief filed October 22, 2020, hereafter “Appeal Br.” 3.
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BACKGROUND
The invention relates to the use of rideshare applications, including
providing promoted destinations to users and redirecting the destination to
selected promoted destinations. Specification, hereafter “Spec.,” ¶ 20.
Claims 1 and 16 are the only independent claims, with representative
claim 1 reproduced from page 29 of the Appeal Brief (Claims App.):
1. A method of reconfiguring a rideshare application executing
on a mobile device from a separate master application also
executing on the mobile device, the method comprising:
receiving an activation control to activate the master
application;
sending first instructions to the rideshare application to
push a destination notification control to the master application,
the destination notification control comprising a destination
selected in the rideshare application;
re-configuring the master application to display
promotion controls on a user interface, the promotion controls
associated with an area proximate with the destination and each
operable to receive an input; and
sending a selected destination control to the rideshare
application in response to receiving the input at one of the
promotion controls, the selected destination control comprising
second instructions to alter the destination of the rideshare
application to a selected destination, the selected destination
associated with the one of the promotion controls selected.
The Examiner rejects claims 1–20 under 35 U.S.C. § 101 as directed
to non-statutory subject matter and rejects claims 1–20 as unpatentable
under 35 U.S.C. § 103 over Gordon2 and Liu3. Final Action, hereafter

2 US 2018/0032997 A1, published February 1, 2018.
3 US 2016/0321771 A1, published November 3, 2016.
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“Final Act.,” 2–32, mailed April 30, 2020; Answer, hereafter “Ans.,” 3–10,
mailed November 20, 2020.
DISCUSSION
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]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
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, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). 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 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.”).
Concepts determined to be abstract ideas 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 (Gottschalk v.
Benson, 409 U.S. 63, 67 (1972)). Concepts determined to be patent eligible
include physical and chemical processes, such as “molding rubber products”
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(Diamond v. Diehr, 450 U.S. 175, 191 (1981) (“Diehr”)); “tanning, dyeing,
making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at
182 n.7 (quoting Corning v. Burden, 56 U.S. 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 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 turn 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 (citation and 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. (quoting Mayo, 566 U.S. at 77).
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“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The USPTO has guidance on the application of 35 U.S.C. § 101, in
accordance with judicial precedent. 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50, 57 (Jan. 7, 2019) (“2019 Guidance”).
Under 2019 Guidance, a claim is “directed to” an abstract idea if the claim
recites any of (1) mathematical concepts, (2) certain methods of organizing
human activity, and (3) mental processes—without integrating such abstract
idea into a “practical application,” i.e., without “apply[ing], rely[ing] on, or
us[ing] 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.” Id. at 52–55. A claim so
“directed to” an abstract idea constitutes ineligible subject matter, unless it
recites an additional element (or combination of elements) amounting to
significantly more than the abstract idea. Id. at 56.
With this context in mind, we evaluate the Examiner’s rejection of
representative claim 1.4 The Examiner considers the claimed steps and finds
that claim 1 is directed to a method of organizing human activity because
displaying promotion controls on a user interface, and, more specifically,
advertising to consumers based on consumer location, is an advertising
activity, which is an abstract concept. Ans. 3; Final Act. 2–5. The Examiner
further finds that “[t]he field of use of ridesharing is . . . is merely applying
advertising principles to the field of ridesharing.” Ans. 4.

4 Appellant argues § 101 issues to the claims as a group (Appeal Br. 10–19),
and we select claim 1 as representative of the claims for the § 101
evaluation. 37 C.F.R. § 41.37(c)(1)(iv).
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Appellant argues that claim 1 does not recite an abstract idea. Appeal
Br. 11–15. Appellant contends that the claims are reasonably “understood to
recite a mutual interaction and reconfiguration between two separate
applications executing on a mobile device.” Id. at 11. Appellant asserts that
“[t]he claims are thus directed to a system and process to more efficiently
reconfigure a ridesharing application via an interaction with and actions
taken on a different, master application.” Id. Appellant contends that “[a]
result of this reconfiguration is that a rideshare application is configured
with a new destination address.” Id. Appellant argues that, although there is
some level of human activity involved in the claimed process, the automatic
reconfiguration of the ridesharing application on the mobile device cannot
be accomplished by mere mental steps and is not organizing human activity.
Id. at 11–12. Appellant further asserts that the display of the promotional
controls are one feature recited in the claims, but are not what the claims are
directed to. Reply Brief, hereafter “Reply Br.,” mailed January 19, 2021, 3.
Under step one of the Alice framework, we “look at the ‘focus of the
claimed advance over the prior art’ to determine if the claim’s ‘character as a
whole’ is directed to excluded subject matter.” Affinity Labs of Texas, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)).
The “directed to” inquiry is considered in light of the Specification,
based on whether “their character as a whole is directed to excluded subject
matter.” Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343,
1346 (Fed. Cir. 2015); see also Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1335 (Fed. Cir. 2016). The first step of the Alice framework “asks
whether the focus of the claims is on the specific asserted improvement in
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[the relevant technology] or, instead, on a process that qualifies as an
‘abstract idea’ for which computers are invoked merely as a tool.” Enfish,
822 F.3d at 1335–36; see also 2019 Guidance at 54–55.
The Specification provides evidence on what the claimed invention is
directed to. The Specification states that a master application may be
invoked to override a destination location configured in the rideshare
application where the operation is in accordance with the processes shown in
Figures 5–10. Spec. ¶ 19. All of the referenced figures include sending
promotion controls associated with promoted destinations to users, with a
promotion destination then selected. Id. ¶¶ 25, 29–30, 33–42. The
promoted destinations are selected based on their proximate location to the
user. Id. ¶¶ 20, 25. In the process shown in Figure 3, “user of the master
application 202 is motivated to select one of the promoted destinations 304
for use with the rideshare application 204,” and “[u]pon a successful
selection of one of the promoted destinations 304, the rideshare application
204 is reconfigured with the selected promoted destination (i.e., a selected
destination).” Id. ¶ 20.
The Specification consistently indicates that the computer operations,
including applications, are used for the promotion of destinations including
redirecting users to the promoted destinations. Spec. ¶¶ 20, 23–25, 28–30,
33–42. Promotions are used to attract people to businesses and other venues
via ridesharing, and the promotion is paid for by those businesses and
venues so that the users “engage with the promoter’s facilities for a
reasonable period of time, which will help ensure the promoter is
compensated by the patronage of the user.” Id. ¶ 36. Considering the claim
limitations and Specification, we characterize the claims as being directed to
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promoting and redirecting users to destinations, which is a certain method of
organizing human activity, that is, advertising.
Although the Examiner describes the claims at different levels of
abstraction, that is, on a limitation-by-limitation basis (Final Act. 2–5), as to
what the claims are directed, it is recognized that “[a]n abstract idea can
generally be described at different levels of abstraction.” Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in
this case does not, “impact the patentability analysis.” Id. at 1241. Here,
even under differing levels of abstraction, the claims are found to be directed
to a method of organizing human activity, that is, advertising, which is an
abstract idea.
We are not persuaded by Appellant’s argument that the claims are
directed to “a technological process for mutual reconfiguration of two
applications (master and rideshare) executing separately on a mobile device”
because Appellant merely lists the claim limitations, and then states the
alleged characterization of the claim in a conclusory manner. Appeal Br.
12–14; see also Reply Br. 3. Rather, as discussed above, the focus of the
Specification is directed to promoting and redirecting users to destinations, a
method of organizing human activity. Appellant also argues that software,
and more specifically, the master and rideshare applications, are physical
components that are not mere abstractions. Reply Br. 4–5. However, it is
apparent that in this instance, “computers are invoked merely as a tool.”
Enfish, 822 F.3d at 1336.
We therefore conclude that representative claim 1 recites a judicial
exception to 35 U.S.C. § 101, that is, a method of organizing human activity,
which is an abstract idea.
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The next issue under the second prong of step 2A is whether
additional elements in representative claim 1 integrate the judicial exception
into a practical application, such as elements reflecting an improvement in
the functioning of a computer or an improvement to other technology or
technical field.
The Examiner finds that “the claims recite additional elements, using
explicit or implied computing elements including mobile device, user
interface, device, server, network at a high-level of generality,” and
performing generic computing functions “such that it amounts to adding the
words ‘apply it.’” Final Act. 5; see also Ans. 5. The Examiner further finds
that the additional limitations do not do more than generally linking the
judicial exception to a particular technological environment. Id.
Appellant argues that claim 1 recites a combination of specific
technological components and specific operations of the components to
more efficiently automate the reconfiguration of applications. Appeal Br.
14. More specifically, Appellant argues that the claims recite “an
improvement in the field of mobile device operation during driving, by
enabling the automated reconfiguration of a ridesharing application
destination via user interaction with a displayed control in a separate, master
application,” that does not require a “search for and manual reconfiguration
of a new destination into the ridesharing application” which is “inefficient
and potentially unsafe if the vehicle is in motion.” Id. Appellant argues that
claims are patent-eligible because they entail an unconventional
technological solution to a technological problem, reciting an
“unconventional operation of a ride sharing application.” Id. at 14–15.
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Appellant additionally asserts that “[t]he claims recite a particular
technological solution to a technological problem, and do not merely claim
the outcome or results of the solution.” Appeal Br. 18 (citing McRO, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016)). Appellant
argues that the automatic reconfiguration of the ridesharing application to a
new destination is a novel method. Id. at 18–19.
In Enfish, the Federal Circuit noted “[s]oftware can make non-abstract
improvements to computer technology just as hardware improvements
can[.]” Enfish, 822 F.3d at1335. However, the court asked “whether the
focus of the claims is on [a] specific asserted improvement in computer
capabilities . . . or, instead, on a process that qualifies as an ‘abstract idea’
for which computers are invoked merely as a tool.” Id. at 1335–36.
We are not persuaded by Appellant’s argument that representative
claim 1 recites an improved means for performing the functions that are an
advance over conventional technology. Although Appellant argues that
automated reconfiguration is a more efficient and unconventional
technological solution (Appeal Br. 14–15), this is attorney argument only.
Appellant provides no citations to the Specification to support this attorney
argument and we find no indication in the Specification that this is
unconventional operation. Moreover, claim 1 does not recite technological
implementation details or “a particular way of programming or designing the
software . . ., but instead merely claim[s] the resulting system[].” Apple,
Inc., 842 F.3d at 1241.
There is no disclosure in the Specification that any of the mobile
phone operations, including the applications or interaction between any
applications, are novel or inventive, nor is there any description of any
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programming. More specifically, we have reviewed the Specification and
find no disclosure that the reconfiguration of the applications is an alleged
inventive improvement. See Spec. ¶¶ 19–20, 32–34, 52, 58; Figs. 2–3, 5–10.
We also do not discern any implementation details or discussion of
particular programming in the Specification or recited in the claim
associated with the “reconfiguration” step, and, further, we do not find any
details or particular programming disclosed associated with the “sending
first instructions” and “sending a selected destination control” steps. See
Appeal Br. 17–18. The court in McRO asked whether the claims as a whole
“focus on a specific means or method that improves the relevant technology”
or are “directed to a result or effect that itself is the abstract idea and merely
invoke generic processes and machinery.” McRO, 837 F.3d at 1314.
Contrary to Appellant’s argument, our view is that these limitations are to
the outcome or results, that is, the reconfiguration of an application is for the
display promotion controls for user selection of a promoted destination, with
no details provided for the reconfiguration, and this is not an improvement to
technology. Apple, Inc., 842 F.3d at 1241 (“They do not claim a particular
way of programming or designing the software to create [the claimed
customizable display] that [has the recited] features, but instead merely
claim the resulting [method].”). Similar to the claims at issue in Intellectual
Ventures, “the claim language here provides only a result-oriented solution,
with insufficient detail for how a computer accomplishes it. Our law
demands more.” Intellectual Ventures I LLC v. Capital One Financial
Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017) (citing Elec. Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1356 (Fed. Cir. 2016)).
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As a result, we conclude that representative claim 1 does not recite
additional elements that integrate the judicial exception into a practical
application, and, and discussed above, we find no reversible error with the
Examiner’s findings that representative claim 1 recites an abstract idea.
We now look to whether representative claim 1 contains any inventive
concept or adds anything significantly more to transform the abstract
concept into a patent-eligible application. Alice, 573 U.S. at 216.
The Examiner finds that additional elements, such as the mobile
phone and user interface, perform generic computing functions “such that it
amounts to adding the words ‘apply it.’” Final Act. 5. The Examiner finds
that the additional elements do not amount to significantly more than the
judicial exception. Id.
The Federal Circuit has held that, after determining that the claim is
directed to an ineligible concept, we assess “whether the claim limitations,
other than the invention’s use of the ineligible concept to which it was
directed, were well-understood, routine, and conventional.” BSG Tech LLC
v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018). We find no error
with the Examiner’s finding that the claim does not recite more than the
implementation of the abstract idea by a computer. Final Act. 5. The use of
conventional computer components to perform conventional steps to
implement an abstract idea has repeatedly been found to not make an
abstract idea patent eligible. See Alice, 573 U.S. at 217–18 (Instructing one
to “apply” an abstract idea and reciting no more than generic computer
elements performing generic computer tasks does not make an abstract idea
patent eligible.).
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Appellant also argues that the Examiner fails to provide sufficient
findings that additional limitations of “sending first instructions,” “re-
configuring the master application,” and “sending a selected destination
control” are well-understood, routine, and conventional activities as required
under Berkheimer. See Appeal Br. 15–18; Berkheimer v. HP Inc., 881 F.3d
1360 (Fed. Cir. 2018). We, however, agree with the Examiner that the
additional elements such as a mobile device and user interface are described
at a high level of generality and perform functions recited in the claim that
do not do more than apply the judicial exception. See Final Act. 5. In other
words, the additional elements are invoked merely as tools in the application
of the abstract idea.
Accordingly, we are not persuaded of error in the Examiner’s
conclusion that representative claim 1 is directed to patent-ineligible subject
matter.
35 U.S.C. § 103
The Examiner finds that independent claims 1 and 16 are obvious in
view of the combination of Gordon and Liu. Final Act. 8–15, 27–31. The
Examiner finds that the limitation “sending a selected destination control to
the rideshare application . . . the selected destination control comprising
second instructions to alter the destination of the rideshare application to a
selected destination . . . associated with one of the promotion controls
selected” is taught by the combination of Gordon and Liu. Id. at 12–15.
The Examiner relies upon Gordon’s disclosure of the presentation of
alternative routes associated with relevant ads for the teaching of the
“sending” limitation. Id. at 13 (citing Gordon ¶ 495). The Examiner also
relies upon Gordon’s disclosure of the mobile device of recommended
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destinations to a user, upon user selection, with the mobile device updating
the vehicle’s navigation to the new destination. Id. at 14 (citing Gordon
¶ 1988). The Examiner relies on Liu for its teaching of the use of ride-
sharing applications in combination with trip-planning applications. Id. at
14–15.
Appellant contends that Gordon and Liu do not teach that when the
selected destination control is sent back to the rideshare application from the
master application, the selected destination control instructions alters the
destination of the rideshare application to a selected destination associated
with the selected promotion control. Appeal Br. 20. More specifically,
Appellant argues that Gordon does not teach altering the destination of the
rideshare application to a selected destination. Id. at 20–21 (citing Gordon
¶ 495). Appellant contends that Gordon’s paragraph 495 discloses that there
are a variety of routes that may be presented to a user, but there is no
teaching of altering the destination. Id.
Appellant also contends that Examiner’s relied-upon paragraph 1988
of Gordon describes a user using an audio command to specify a destination,
but the vehicle’s navigation system is updated to the new destination.
Appeal Br. 21 (citing Gordon ¶ 1988). Appellant asserts that the Examiner
has equated the master application of Gordon to the claimed master
application, and the Gordon’s “feeder” application, in combination with Liu,
is equated to the claimed rideshare application. Id. at 20. Appellant argues,
however, that when considering paragraph 1988 of Gordon, if the vehicle’s
navigation is the master device, there is then no communication of a new
destination back to the user’s mobile device. Id. at 21. Alternatively,
Appellant argues that if the vehicle’s navigation system is the rideshare
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application, then the Examiner is contending that the rideshare application
presents the ad, which is not consistent with Applicant’s claims.
We agree with Appellant’s arguments. More specifically, we agree
that Gordon’s paragraph 495 discloses presenting alternative routes
associated with relevant ads, but there is no disclosure of altering a
destination. Gordon ¶ 495. Additionally, paragraph 1988 of Gordon
discloses that if the user agrees with a suggested destination, the mobile
phone will update the new destination with the vehicle’s navigation system.
Id. ¶1988. So the destination would be altered on the vehicle’s navigation
system. The Examiner does not explain how the vehicle’s navigation system
disclosed in paragraph 1988 of Gordon is mapped to the elements of claim 1.
And even if Gordon’s vehicle navigation system were mapped as either the
master or rideshare applications for the teaching of “altering the
destination,” the result would be that other limitations of the claim would not
be taught by the vehicle navigation system.
The Examiner presented additional findings relying on Gordon’s
disclosures on social network applications, advertisement/content
management (AD) platform or modules, and navigation routing applications.
Ans. 7–9 (citing Gordon ¶¶ 171, 315, 606). We have reviewed these
portions of Gordon and do not find that they disclose the claimed “altering
the destination.”
Accordingly, after considering Appellant’s contentions and the
evidence presented in this Appeal, we are persuaded that Appellant identifies
reversible error, and we therefore cannot sustain the § 103 rejection for
independent claims 1 and 16. The prior art relied upon for the prior teaching
of dependent claims 2–15 and 17–20 (Final Act. 15–23, 31–32), fail to
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remedy the deficiencies in the teachings for independent claims 1 and 16,
and we therefore cannot sustain the rejections of these claims.
CONCLUSION
For the above reasons, the Examiner’s rejection of claims 1–20 is
affirmed.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20
1–20 103 Gordon, Liu 1–20
Overall
Outcome
1–20

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