Noah Tilman. RowlesDownload PDFPatent Trials and Appeals BoardOct 31, 201915046958 - (D) (P.T.A.B. Oct. 31, 2019) Copy Citation 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. 15/046,958 02/18/2016 Noah Tilman Rowles ROWLP001C1 3775 21912 7590 10/31/2019 VAN PELT, YI & JAMES LLP 10050 N. FOOTHILL BLVD #200 CUPERTINO, CA 95014 EXAMINER MENGESHA, MULUGETA A ART UNIT PAPER NUMBER 2424 NOTIFICATION DATE DELIVERY MODE 10/31/2019 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): usptocorrespondence@ip-patent.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NOAH TILMAN ROWLES Appeal 2018-008767 Application 15/046,958 Technology Center 2400 BEFORE MICHAEL J. STRAUSS, JOSEPH P. LENTIVECH, and SCOTT RAEVSKY, Administrative Patent Judges. RAEVSKY, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–21. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 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 Rowles Holdings, LLC. Appeal Br. 2. Appeal 2018-008767 Application 15/046,958 2 CLAIMED SUBJECT MATTER The claims recite techniques to allow advertising to be dismissed for later follow up. See Spec., Abstract. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A system, comprising: a memory device; and a processor coupled to the memory device and configured to: receive from a user device via a network an indication to display previously dismissed content, wherein the previously dismissed content includes content that was previously presented on the user device and the user device is configured to receive, from a user via an interface of the user device, an input that indicates the user desires to dismiss and follow up with the content at a later time, wherein interface of the user device is configured to receive one or more different types of input from the user to dismiss the content, wherein an input type of the different types of input that dismisses the content has a corresponding electronic follow-up format; retrieve from a data store a list of previously dismissed content from the memory device; provide via the network the list of previously dismissed content to the user device in an electronic follow-up format associated with the user corresponding to the input type received from the user to dismiss the content; track user engagement with the list of previously dismissed content on the user device; and perform a responsive action based at least in part on the tracked user engagement. REJECTIONS Claims 1–21 stand rejected under 35 U.S.C. § 101 as being directed to non–statutory subject matter. Final Act. 5. Appeal 2018-008767 Application 15/046,958 3 Claims 1–3, 7, 12, 14–18, and 20 stand rejected under 35 U.S.C. § 103 as being unpatentable over Pasula (US 9,204,205 B1, Dec. 1, 2015) and Ma (US 2004/0133909 A1, July 8, 2004). Id. at 8. Claims 4, 5, 13 and 19 stand rejected under 35 U.S.C. § 103 as being unpatentable over Pasula, Ma, and Blake (US 2011/0093320 A1, Apr. 21, 2011). Id. at 21. Claim 8 stands rejected under 35 U.S.C. § 103 as being unpatentable over Pasula, Ma, and Jacobs (US 2012/0054020 A1, Mar. 1, 2012). Id. at 22. Claim 9 stands rejected under 35 U.S.C. § 103 as being unpatentable over Pasula, Ma, Jacobs, and Blake. Id. at 24. Claim 6 stands rejected under 35 U.S.C. § 103 as being unpatentable over Pasula, Ma, and Reddy (US 2011/0153426 A1, June 23, 2011). Id. Claim 10 stands rejected under 35 U.S.C. § 103 as being unpatentable over Pasula, Ma, Jacobs, Blake, and Reddy. Id. at 25. Claim 11 stands rejected under 35 U.S.C. § 103 as being unpatentable over Pasula, Ma, Jacobs, Blake, and Tomsen (US 2002/0016965 A1, Feb. 7, 2002). Id. at 26. Claim 21 stands rejected under 35 U.S.C. § 103 as being unpatentable over Pasula, Ma, and Postrel (US 2005/0149880 A1, July 7, 2005). Id. at 27. We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). Appeal 2018-008767 Application 15/046,958 4 ANALYSIS Rejections under § 101 I. Principles of Law 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. Id. 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 id. 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, 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 (Gottschalk v. Benson, 409 U.S. 63, 67–68 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. Appeal 2018-008767 Application 15/046,958 5 175, 191 (1981)); “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 (1853))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). 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. “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. The U.S. Patent and Trademark Office (“PTO”) recently published revised guidance on the application of § 101. See USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the Guidance, 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 activities such as a fundamental economic practice, or mental processes); 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)). Appeal 2018-008767 Application 15/046,958 6 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: (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. See Guidance, 84 Fed. Reg. at 56. II. Step 2A, Prong One (Judicial Exception) The Examiner determines that claim 12 is directed to the abstract idea of an idea of itself. Final Act. 6. Appellant disputes that the claims are directed toward an abstract idea. Appeal Br. 10–18. We determine that claim 1 recites a mental process because claim 1 broadly recites receiving an indication of a user’s desire to dismiss and follow up with content at a later time, retrieving a list of previously dismissed content, providing the list of previously dismissed content, tracking user engagement with the previously dismissed content, and performing a responsive action based on the tracked user engagement. Specifically, claim 1 recites (1) “receive . . . an input that indicates the user desires to dismiss and follow up with the content at a later time, . . .”; (2) “retrieve . . . a list of previously dismissed content”; (3) “track user 2 Appellant argues claims 1–21 as a group. See Appeal Br. 10–21. We select independent claim 1 as representative of claims 1–21. See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2018-008767 Application 15/046,958 7 engagement with the list of previously dismissed content . . .”; and (4) “perform a responsive action based at least in part on the tracked user engagement.” As drafted, these limitations, under their broadest reasonable interpretation, recite a mental process that can be performed in the human mind or using a pen and paper. See, e.g., CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372–73 (Fed. Cir. 2011) (determining that a claim whose “steps can be performed in the human mind, or by a human using a pen and paper” is directed to an unpatentable mental process). In this case, these limitations encompass acts people can perform using their minds or pen and paper because people can perform the “receive” step by thinking about a desire to dismiss and later follow up with content, for example, by putting away a newspaper containing ads previously viewed by the user; the “retrieve” step by picking up and reviewing the newspaper ads again; the “track user engagement” step by writing a shopping list corresponding to the ads; and the “perform” step by going shopping. Accordingly, we conclude the claim recites an abstract idea, namely, a mental process. IV. Step 2A, Prong Two (Integration into a Practical Application) Under the Guidance, we determine if additional elements in the claims integrate the judicial exception into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)). Appellant contends that “the claims are directed to an improved user interface” as in Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356 (Fed. Cir. 2018). Appeal Br. 14–15. In Core Wireless, Appeal 2018-008767 Application 15/046,958 8 “[a]lthough the generic idea of summarizing information certainly existed prior to the invention, the[] claims are directed to a particular manner of summarizing and presenting information in electronic devices.” 880 F.3d at 1362. The Core Wireless claims “recite[d] a specific improvement over prior systems, resulting in an improved user interface for electronic devices.” Id. at 1363. The claim limitations there recited “a specific manner of displaying a limited set of information to the user, rather than using conventional user interface methods to display a generic index on a computer.” Id. Here, Appellant points to the Specification, which identifies a problem that “[u]sers of modern communication devices and media are bombarded with information, including without limitation advertising content.” Appeal Br. 14 (quoting Spec. ¶ 2). Continuing, the Specification states, “[i]f the user is interested in the advertising content, typically the user must engage with and interact with the content while it remains displayed, which typically requires the user to interrupt the user’s use or other interaction with non-advertising content and/or functionality.” Id. (quoting Spec. ¶ 3). Appellant contends the claims “improve the user interface because a user is able to ‘dismiss and follow up’ with ‘content that was previously presented on the user device’ (e.g., an advertisement) without interrupting the user’s use or other interaction with non-advertising content and/or functionality.” Id. at 14–15. Claim 1 recites additional limitations pertinent to solving this problem, including, receive from a user device via a network an indication to display previously dismissed content, wherein the previously dismissed content includes content that was previously presented on the user device . . ., wherein interface of the user Appeal 2018-008767 Application 15/046,958 9 device is configured to receive one or more different types of input from the user to dismiss the content, wherein an input type of the different types of input that dismisses the content has a corresponding electronic follow-up format; [and] . . . . provide via the network the list of previously dismissed content to the user device in an electronic follow-up format associated with the user corresponding to the input type received from the user to dismiss the content[.] These additional limitations address a technical problem arising in the context of a computer user interface, namely the problem that “[i]f the user is interested in the advertising content, typically the user must engage with and interact with the content while it remains displayed, which typically requires the user to interrupt the user’s use or other interaction with non- advertising content and/or functionality.” Spec. ¶ 3. As claimed and explained in the Specification, the solution to this problem is a technical one. The Specification explains, “[i]n various embodiments, a user control or other interface is provided, in connection with display of an advertisement, to enable the user to dismiss the ad while providing a way for the user to follow up and engage (further) with the ad and/or associated content later.” Spec. ¶ 14. For example, “a prescribed user gesture . . . may result in the ad being dismissed,” or a “visual control or other indicator may be selected by a user” to dismiss the ad “and receive follow up later.” Id. ¶¶ 14, 25. Thus, similar to the claims in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), “[a]lthough the claim[] address[es] a business challenge . . . it is a challenge particular to the Internet.” DDR, 773 F.3d at 1257. Appeal 2018-008767 Application 15/046,958 10 We conclude these limitations integrate the recited judicial exception of a mental process into a practical application. In particular, we agree with Appellant that these limitations improve a user interface by enabling a user to dismiss and follow up with content previously presented on a user device. See Core Wireless, 880 F.3d at 1363. Accordingly, under the Guidance, the claims are eligible because they are not directed to the recited judicial exception. Thus, we need not reach step 2B of the Alice inquiry. We reverse the Examiner’s rejection under § 101. Rejections under § 103 Claims 1–14 and 16–21 Appellant argues that Pasula and Ma fail to teach or suggest claim 1’s “provid[ing] via the network the list of previously dismissed content to the user device in an electronic follow-up format associated with the user corresponding to the input type received from the user to dismiss the content” where “the interface of the user device is configured to receive one or more different types of input from the user to dismiss the content” and “an input type of the different types of input that dismisses the content has a corresponding electronic follow-up format.” Appeal Br. 21–23 (emphasis omitted); Reply Br. 4–6. Specifically, Appellant focuses on the phrase “corresponding electronic follow-up format.” Appeal Br. 21–23. Appellant initially contends, “Pasula does not disclose that double clicking or pinching have ‘a corresponding electronic follow-up format.’” Id. at 22. However, the Examiner relies on Ma, not Pasula, for this claim element. Final Act. 10. Appellant also contends Ma fails to teach the same element, stating, “[a]lthough Ma discloses redelivering advertisements to a Appeal 2018-008767 Application 15/046,958 11 user according to user preferences, Ma does not disclose that the manner in which a user skips an advertisement controls the manner in which the list of advertisements is redelivered to the user.” Appeal Br. 22–23. Appellant explains, “[f]or example, Ma does not disclose that a first manner of skipping an advertisement causes the advertisement list to be redelivered by voicemail and a second manner of skipping an advertisement causes the advertisement list to be redelivered by email.” Id. at 23. Further, Appellant contends, “Ma discloses detecting mouse clicks and/or scrolling actions with respect to an advertisement[;] however, Ma does not disclose that such actions have ‘a corresponding electronic follow-up format.’” Id. The Examiner finds, and we agree, that Ma discloses “deliver[ing] skipped advertising content . . . to the user in accordance with user preferences.” Ans. 16 (quoting Ma ¶ 23) (emphasis omitted). The Examiner further finds that Ma’s “method includes offering options to the user relating to redelivery . . ., such that the user can express an option, for example, to have the advertisements redelivered by voicemail and/or email.” Id. at 16– 17 (quoting Ma ¶ 27). Appellant’s argument is unpersuasive because it is not commensurate with the scope of the claim. Claim 1 does not recite, “the manner in which a user skips an advertisement controls the manner in which the list of advertisements is redelivered to the user.” See Appeal Br. 22–23. Rather, claim 1 recites, “wherein an input type of the different types of input that dismisses the content has a corresponding electronic follow-up format.” The term “corresponding” is a broad term that does not define a particular relationship between the input type and the electronic follow-up format. Under the broadest reasonable interpretation, Ma’s disclosure of having a Appeal 2018-008767 Application 15/046,958 12 skipped advertisement “redelivered by voicemail and/or email” teaches or suggests the claimed “corresponding electronic follow-up format.” See Ma ¶ 27. Accordingly, we sustain the Examiner’s rejection of claim 1. Appellant’s arguments regarding the rejection of independent claims 16 and 20 rely on the same arguments as for claim 1, and Appellant does not argue separate patentability for the dependent claims, except for claim 15, which we address separately below. See Appeal Br. 23–24. We therefore also sustain the Examiner’s rejection of claims 2–14 and 16–21. See 37 C.F.R. § 41.37(c)(1)(iv). Claim 15 Appellant contends Pasula and Ma fail to teach or suggest claim 15’s “wherein the follow up content includes content other than or in addition to the previously dismissed content.” Appeal Br. 23–24; Reply Br. 6–7. The Final Action cites the following passage of Pasula for this limitation: In another example, the user (101) may apply double clicking or pinching to activate the ADQ button (163) to generate the user queuing request. In one or more embodiments, the user queuing request causes the advertisement A (106a) to be added to an advertisement queue for later viewing. For example, the advertisement A (106a) may be added as the queued advertisement A (107a) to the ADQ (107), which is assigned to the user (101) by the ADQ server (120). Final Act. 13 (citing Pasula 4:42–50) (emphasis omitted). Appellant contends that “[a]lthough Pasula discloses adding advertisement A to the queue, Pasula does not disclose including ‘content other than or in addition to’ Advertisement A.” Appeal Br. 24. Appeal 2018-008767 Application 15/046,958 13 In the Answer, the Examiner finds the following additional passage of Ma teaches or suggests claim 15: “the queued advertisements in the clothing category are then presented to the user for viewing. Other queued advertisements in different categories may be discarded or presented to the user after the user completes the viewing of the clothing category advertisements.” Ans. 17 (citing Pasula 9:21–26) (emphasis omitted). Appellant responds, “[t]he ‘queued advertisements in the clothing category’ and ‘other queued advertisements in different categories’ as disclosed in Pasual are ‘previously dismissed content.’ Pasula does not disclose providing ‘content other than or in addition to the [queued advertisements].’” Reply Br. 6 (alteration in original). We agree with Appellant. Claim 15 requires the follow up content to include content “other than or in addition to the previously dismissed content.” (Emphasis added.) In both passages of Pasula highlighted above, Pasula refers to previously dismissed content. For instance, in the first passage, the user in Pasula causes an advertisement A “to be added to an advertisement queue for later viewing.” Pasula 4:42–50. In the second passage, the advertisements in different categories are “queued.” Id. at 9:21–26. Pasula’s queue allows users to “temporarily store a limited number of electronic advertisements for later viewing as an alternative to completely dismissing all advertisements as irrelevant.” Id. at 2:54–58. Accordingly, we agree with Appellant that these passages of Pasula refer solely to previously dismissed content. We, therefore, do not sustain the Examiner’s rejection of claim 15. Appeal 2018-008767 Application 15/046,958 14 CONCLUSION In summary: Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 1–21 101 1–21 1–3, 7, 12, 14–18, 20 103 Pasula, Ma 1–3, 7, 12, 14, 16–18, 20 15 4–5, 13, 19 103 Pasula, Ma, Blake 4–5, 13, 19 8 103 Pasula, Ma, Jacobs 8 9 103 Pasula, Ma, Jacobs, Blake 9 6 103 Pasula, Ma, Reddy 6 10 103 Pasula, Ma, Jacobs, Blake, Reddy 10 11 103 Pasula, Ma, Jacobs, Blake, Tomsen 11 21 103 Pasula, Ma, Postrel 21 Overall Outcome 1–14, 16– 21 15 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 IN PART Copy with citationCopy as parenthetical citation