Noah Tilman. Rowles

Patent Trials and Appeals Board

Oct 31, 2019

15046958 - (D) (P.T.A.B. Oct. 31, 2019)

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.
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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.
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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).
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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.
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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)).
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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).
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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,
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“[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
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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.
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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
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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
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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.
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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.
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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