Target Brands, Inc.Download PDFPatent Trials and Appeals BoardNov 17, 20202020002420 (P.T.A.B. Nov. 17, 2020) 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. 14/943,629 11/17/2015 Jay Matthew Fricke 201502550 5379 67260 7590 11/17/2020 TARGET BRANDS, INC. 1000 NICOLLET MALL, TPS-3165 MINNEAPOLIS, MN 55403 EXAMINER ANDREI, RADU ART UNIT PAPER NUMBER 3622 NOTIFICATION DATE DELIVERY MODE 11/17/2020 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.MAIL@TARGET.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JAY MATTHEW FRICKE, STEVEN JOHN CAMPBELL, JEFFREY PATRICK NELSON, ANANTH RANGANATH, KATHRYN LOUISE MORIN, and HEIDI BUEHLER TEWINKEL ____________ Appeal 2020-002420 Application 14/943,629 Technology Center 3600 ____________ Before ROBERT E. NAPPI, JAMES R. HUGHES, and CATHERINE SHIANG, Administrative Patent Judges. SHIANG, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1–20, which are all the claims pending and rejected in the application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We use “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Target Brands, Inc., as the real party in interest. App. Br. 3. Appeal 2020-002420 Application 14/943,629 2 STATEMENT OF THE CASE Introduction The present invention relates to “computer resource management for manufacturer and retailer offers.” Title (emphasis omitted). In particular, A method includes receiving information that represents a first offer made by a manufacturer and is related to a product. Information that represents a second offer made by a retailer that is also related to the product is also received. A request to display offers related to the product is received and in response, a user interface is generated that shows the first offer and the second offer. The user interface allows a retailer to set designations for the first offer and the second offer such that the first offer is available to customers and the second offer is not available to customers. A request from a customer for offers available at the retailer is received and in response the first offer but not the second offer is provided based on the designations set for the first offer and the second offer. Spec. ¶ 3. Claim 1 is exemplary: 1. A computer-implemented method comprising: receiving information over a network, the information representing a first offer made by a manufacturer, wherein the first offer is related to a product; storing the first offer together with a designation for the first offer indicating that the first offer is unavailable such that when customers request offers, the first offer is not provided to the customer while other offers are provided to the customer and such that every received and stored offer made by a manufacturer is initially designated as being unavailable when other offers are designated as being available so as not to increase a bandwidth required for responding to queries for offers; receiving information representing a second offer made by a retailer, wherein the second offer is related to the product; receiving a search query; in response to receiving the search query, searching offers designated as being available and offers designated as being unavailable, and generating a user interface that shows the results of the searching and that includes the first offer and the second offer, the user interface allowing a retailer to Appeal 2020-002420 Application 14/943,629 3 change the designation for the first offer and set a designation for the second offer such that the first offer is available to customers and the second offer is not available to customers; and receiving a request from a customer for offers available at the retailer and in response providing the first offer but not the second offer based on the designations set for the first offer and the second offer. Rejection2 Claims Rejected 35 U.S.C. § References 1–20 101 1–3, 7 103 Lieblang (US 2011/0047018 A1, pub: Feb. 24, 2011), Strickler (US 2015/0026138 A1, pub: Jan. 22, 2015), Debow (US 2010/0049620 A1, pub: Feb. 25, 2010), Dicke (US 2011/0313892 A1, pub; Dec. 22, 2011) 8–13 103 Lieblang, Strickler, Debow 14 103 Lieblang, Strickler, Debow, Cunningham (US 8,090,615 B1, iss: Jan. 3, 2012) 15−17, 20 103 Lieblang, Strickler, Debow, Krejcarek (US 2011/0183306 A1, pub: July 28, 2011) 4−6 103 Lieblang, Strickler, Debow, Cunningham, Dicke 18 103 Lieblang, Strickler, Debow, Krejcarek, Ouimet (US 2015/0324882, pub. Nov. 12, 2015) 19 103 Lieblang, Strickler, Debow, Krejcarek, Ouimet, Strimling (US 2009/0248527 A1, pub. Oct. 1, 2009) 2 Throughout this opinion, we refer to the (1) Final Office Action dated May 21, 2019 (“Final Act.”); (2) Appeal Brief dated Oct. 21, 2019 (“Appeal Br.”); (3) Examiner’s Answer dated Dec. 5, 2019 (“Ans.”); and (4) Reply Brief dated Feb. 5, 2020 (“Reply Br.”). Appeal 2020-002420 Application 14/943,629 4 ANALYSIS 35 U.S.C. § 101 We disagree with Appellant’s arguments. To the extent consistent with our analysis below, we adopt the Examiner’s findings and conclusions in (i) the action from which this appeal is taken and (ii) the Answer. Section 101 of the Patent Act provides “[w]hoever 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. 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. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (internal quotation marks and citation omitted). 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 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, and, thus, patent ineligible, include certain methods of organizing human activity, such as fundamental Appeal 2020-002420 Application 14/943,629 5 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” (Diamond v. Diehr, 450 U.S. 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. (15 How.) 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held that “[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.”). Having said that, the Supreme Court also indicated that a claim “seeking patent protection for that formula in the abstract . . . is not accorded the protection of our patent laws, . . . and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now 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 Appeal 2020-002420 Application 14/943,629 6 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 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). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. The United States Patent and Trademark Office published revised guidance on the application of § 101. USPTO, 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”).3 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 activity such as a fundamental economic practice, or mental processes) (Step 2A, Prong 1); and (2) additional elements that integrate the judicial exception into a practical application (see Manual of Patent Examining Procedure (“MPEP”) § 2106.05(a)–(c), (e)–(h)) (9th ed. rev. 08.2017 2018) (Step 2A, Prong 2). 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 3 The Guidance was updated in October 2019, and the Manual of Patent Examination Procedure (MPEP), Ninth Edition, Revision 10.2019 (revised June 2020) also includes the Guidance. See MPEP §§ 2103 through 2106.07(c). Appeal 2020-002420 Application 14/943,629 7 (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. (Step 2B.) See Guidance, 84 Fed. Reg. at 54–56. Step 2A, Prong 1 of the Guidance Turning to Step 2A, Prong 1 of the Guidance, independent claims 1, 8, and 15 (with emphases added) recite: 1. A computer-implemented method comprising: receiving information over a network, the information representing a first offer made by a manufacturer, wherein the first offer is related to a product; storing the first offer together with a designation for the first offer indicating that the first offer is unavailable such that when customers request offers, the first offer is not provided to the customer while other offers are provided to the customer and such that every received and stored offer made by a manufacturer is initially designated as being unavailable when other offers are designated as being available so as not to increase a bandwidth required for responding to queries for offers; receiving information representing a second offer made by a retailer, wherein the second offer is related to the product; receiving a search query; in response to receiving the search query, searching offers designated as being available and offers designated as being unavailable, and generating a user interface that shows the results of the searching and that includes the first offer and the second offer, the user interface allowing a retailer to change the designation for the first offer and set a designation for the second offer such that the first offer is available to customers and the second offer is not available to customers; and receiving a request from a customer for offers available at the retailer and in response providing the first offer but not the second offer based on the designations set for the first offer and the second offer. 8. A server comprising: an offer database receiving offers made by manufacturers and offers made by a retailer such that when any offer made by any manufacturer is Appeal 2020-002420 Application 14/943,629 8 received and stored in the offer database it is initially designated in the offer database as being unavailable to customers while other offers in the offer database are designated as being available to customers; an offer management tool executed by a processor to display a user interface to allow a retailer to enter and submit a search query, to use the search query to search available and unavailable offers, to show the results of the search query to allow the retailer to individually set offers in the offer database made by manufacturers as available and offers in the offer database made by the retailer as available; and an offer application executed by the processor to generate user interfaces that allow a customer to select an available offer made by a manufacturer such that after the offer is selected, the selected offer can be redeemed by the customer. 15. A method comprising: storing offers made by a retailer in a database; receiving offers made by manufacturers over a network; filtering the offers made by manufacturers to select fewer than all of the offers made by manufacturers and storing all selected offers in the database such that all selected offers are designated as being unavailable to customers when initially stored while other offers in the database are designated as being available so as not to increase a bandwidth associated with responding to queries for offers; displaying a first user interface to allow a retailer to enter and submit a search query to search available and unavailable offers, to show the results of the search query, and to allow the retailer to designate which of the offers made by the retailer and which of the offers made by manufacturers are to be made available to customers; and displaying a second user interface that allows a customer to view offers made by the retailer and offers made by manufactures that are available to customers and to select a viewed offer for later redemption. All of the italicized limitations are associated with marketing. Turning to claim 1, “receiving information . . . the information representing a first offer made by a manufacturer, wherein the first offer is related to a product” promotes marketing by receiving a manufacturer’s offer for a product (“first offer”). Similarly, the limitation: Appeal 2020-002420 Application 14/943,629 9 storing the first offer together with a designation for the first offer indicating that the first offer is unavailable such that when customers request offers, the first offer is not provided to the customer while other offers are provided to the customer and such that every received and stored offer made by a manufacturer is initially designated as being unavailable when other offers are designated as being available so as not to increase a . . . required for responding to queries for offers; facilitates marketing by managing offers and resources: storing the manufacturer’s offer with a designation and designating the received manufacturer offer as being unavailable, so that the resources required for responding to offer inquiries will not be increased. Appellant asserts the receiving and storing limitations “are not part of advertising, marketing or sales activities” (Appeal Br. 7), but does not persuasively explain why. Further, “receiving information representing a second offer made by a retailer, wherein the second offer is related to the product” of claim 1 promotes marketing by receiving an offer from a retailer (“second offer”). Finally, the limitations: receiving a search . . . ; in response to receiving the search . . ., searching offers designated as being available and offers designated as being unavailable, and generating a user . . . that shows the results of the searching and that includes the first offer and the second offer, the user . . . allowing a retailer to change the designation for the first offer and set a designation for the second offer such that the first offer is available to customers and the second offer is not available to customers; and receiving a request from a customer for offers available at the retailer and in response providing the first offer but not the second offer based on the designations set for the first offer and the second offer. Appeal 2020-002420 Application 14/943,629 10 facilitate marketing by managing offers: searching for available and unavailable offers, resulting in offers that include the first offer and the second offer, and the retailer can change availability of the offers by making the first offer and the second offer available and unavailable to customers, respectively. As a result, a customer requesting available offers will receive the first offer (available), but not the second offer (unavailable). Turning to claim 8, for similar reasons discussed above with respect to claim 1, the first two limitations (“an offer . . . receiving offers . . .” and “an offer management tool . . .”) facilitate marketing with the recited functions. Further, the third limitation “an offer application executed by . . . to generate user . . . that allow a customer to select an available offer made by a manufacturer such that after the offer is selected, the selected offer can be redeemed by the customer” facilitates marketing by allowing a customer to select an available offer that can be redeemed.4 Turning to claim 15, for similar reasons discussed above with respect to claims 1 and 8, the limitations “storing offers . . .,” “receiving offers . . .,” “displaying a first user . . .,” and “displaying a second user . . .” facilitate marketing with the recited steps. Further, the limitation filtering the offers made by manufacturers to select fewer than all of the offers made by manufacturers and storing all selected offers in . . . such that all selected offers are designated as being unavailable to customers when initially stored while other offers in . . . are designated as being available so as not to increase . . . associated with responding to queries for offers; 4 Appellant asserts the limitation “an offer . . . receiving offers . . .” is “not part of advertising, marketing or sales activities” (Appeal Br. 8), but does not persuasively explain why. We note the claimed “server” in the preamble is an additional element. Appeal 2020-002420 Application 14/943,629 11 facilitates marketing by managing offers and resources: selecting some manufacturers’ offers and designate them as being unavailable, in order to not increase the resources associated with responding to offer inquiries.5 Our determination is supported by the Specification, which describes the deficiencies of the existing systems, and the need to provide more efficient techniques to managing offers, in order to facilitate marketing by manufacturers and retailers: [0019]A number of different web sites and mobile applications exist that allow customers to search for coupons or other offers for products. Each site or application includes its own collection of such offers. As a result, customers tend to access multiple web sites or use multiple applications to find as many offers as possible. [0020] This has created an inefficient system where customers are submitting the same queries multiple times to multiple different web sites and/or applications. Further, the offers that are selected from different web sites or applications are stored separately from each other. As a result, at checkout, the customer must access multiple locations to retrieve the identifiers for the offers that are being redeemed. This slows down the checkout process and results in retailers having to hire additional employees to run additional registers so that the total wait time for checking out does not increase. [0021] In addition, since not all products are available at a particular retail store, many of the offers selected by the customer cannot be redeemed at the store where the customer intends to shop. As a result, the customer has wasted their time and the computing resources of the servers that provide the web sites and mobile applications. 5 Appellant asserts the limitation “receiving . . .” and “filtering . . .” are “not part of advertising, marketing or sales activities” (Appeal Br. 9), but does not persuasively explain why. Appeal 2020-002420 Application 14/943,629 12 [0022] The current technology also does not provide any tools that allow a retailer to select between a manufacturer's offer and a retailer's offer when establishing a set of offers that customers can search and select from and as a result, both manufacturer and retailer offers are returned in response to search queries. Spec. ¶¶ 19–22 (emphases added). Because marketing activities are similar to “showing an advertisement before delivering free content” in Ultramercial, the concept of marketing is an abstract idea. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (“showing an advertisement before delivering free content” is an abstract idea). Consistent with Ultramercial, marketing activities constitute commercial interactions under the Guidance. See Guidance, Step 2A, Prong 1 (Groupings of Abstract Ideas). Therefore, we conclude each of claims 1, 8, and 15 recites a commercial interaction, which is one of certain methods of organizing human activity identified in the Guidance, and thus an abstract idea. See Guidance, Step 2A, Prong 1 (Groupings of Abstract Ideas). Step 2A, Prong 2 of the Guidance Turning to Step 2A, Prong 2 of the Guidance, contrary to Appellant’s assertions (Appeal Br. 7–10; Reply Br. 2–4), none of claims 1, 8, and 15 recites additional elements that integrate the judicial exception into a practical application. Appellant cites paragraph 29 of the Specification, and argues that “the additional elements . . . represent an improvement in the Appeal 2020-002420 Application 14/943,629 13 functioning of a computer because the additional elements allow additional items to be added to a database from a third party without increasing the bandwidth required to respond to queries.” Appeal Br. 7–8, 10; see also Reply Br. 2–3. That argument is unpersuasive because “a claim for a new abstract idea is still an abstract idea.” Synopsys, 839 F.3d at 1151. “[U]nder the Mayo/Alice framework, a claim directed to a newly discovered law of nature (or natural phenomenon or abstract idea) cannot rely on the novelty of that discovery for the inventive concept necessary for patent eligibility . . . .” Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016) (citations omitted). Contrary to Appellant’s assertions (App. Br. 7, 9–10), the rejected claims 1, 8, and 15 are unlike the claims in Enfish. In Enfish, the court determined: The . . . patents are directed to an innovative logical model for a computer database. . . . A logical model generally results in the creation of particular tables of data, but it does not describe how the bits and bytes of those tables are arranged in physical memory devices. Contrary to conventional logical models, the patented logical model includes all data entities in a single table, with column definitions provided by rows in that same table. The patents describe this as the “self-referential” property of the database. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1330 (Fed. Cir. 2016) (emphases added). [T]he plain focus of the claims is on an improvement to computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity. [T]he claims . . . are directed to a specific improvement to the way computers operate, embodied in the self-referential table. Id. at 1336. Appeal 2020-002420 Application 14/943,629 14 Unlike the claims of Enfish, claims 1, 8, and 15 are not “directed to an innovative logical model for a computer database [that] . . . includes all data entities in a single table, with column definitions provided by rows in that same table” or similar improvements. Id. at 1330. Instead, claims 1, 8, and 15 are directed to the abstract idea of managing offers in order to facilitate marketing by manufacturers and retailers, using known computing devices and networks as tools. Indeed, the Specification describes the claimed server as a well-understood and conventional computing device: FIG. 12 provides an example of a computing device 10 that can be used as a server device or client device in the embodiments above. Computing device 10 includes a processing unit 12, a system memory 14 and a system bus 16 that couples the system memory 14 to the processing unit 12. System memory 14 includes read only memory (ROM) 18 and random access memory (RAM) 20. A basic input/output system 22 (BIOS), containing the basic routines that help to transfer information between elements within the computing device 10, is stored in ROM 18. Spec. ¶ 49. Similarly, the Specification describes the claimed “network” and “processors” as well-understood and conventional devices. See Spec. ¶ 50 (“a communications network (e.g., communication utilizing Internet or web- based software systems)”); Spec. ¶ 57 (“network connections shown in FIG. 12 are exemplary and other means for establishing a communications link between the computers, such as a wireless interface communications link, may be used”); Spec. ¶ 53 (“Processing unit 12, also referred to as a processor, executes programs in system memory 14 and solid state memory 25 to perform the methods described above.”). In addition, consistent with the knowledge of one skilled in the art, the Specification repeatedly refers to a conventional database, but does not describes it in particular detail. See, Appeal 2020-002420 Application 14/943,629 15 e.g., Spec. ¶ 29 (“The manufacturer’s offers that are not removed by offer filter 112 are stored in an offer database 118 as unavailable manufacturer offers 120 at step 206.”); Spec. ¶ 38 (“offer management tool 122 updates offer database 118 to reflect the received availability settings”). In short, Enfish is inapplicable here. Appellant also cites Example 40 (Appeal Br. 7–10), but does not persuasively explain why that case is similar to the present case. According to the USPTO: The claim recites the combination of additional elements of: 1) collecting, by the network appliance, traffic data relating to the network traffic passing through the network appliance, the traffic data comprising at least one of network delay, packet loss, or jitter; 2) using a network appliance to perform the comparing step; and 3) collecting additional traffic data relating to the network traffic when the collected traffic data is greater than the predefined threshold, the additional traffic data comprising NetFlow protocol data. USPTO, Example 40. Although each of the collecting steps analyzed individually may be viewed as mere pre- or post-solution activity, the claim as a whole is directed to a particular improvement in collecting traffic data. The additional elements recite a specific manner of collecting additional NetFlow protocol data whenever the initially collected data reflects an abnormal condition, which avoids excess traffic volume on the network and hindrance of network performance. The collected data can then be used to analyze the cause of the abnormal condition, which provides a specific improvement over prior systems, resulting in improved network monitoring. The claim as a whole integrates the mental process into a Appeal 2020-002420 Application 14/943,629 16 practical application. Id. (emphasis added). Unlike Example 40, claim 1, 8, and 15 do not “recite a specific manner of collecting additional NetFlow protocol data whenever the initially collected data reflects an abnormal condition, which avoids excess traffic volume on the network and hindrance of network performance” or provide similar technology improvements. Id. To the contrary, as discussed above, the disputed claims merely use known computing devices and networks as tools. Therefore, Example 40 is inapplicable here. As a result, we conclude claim 1, 8, and 15 do not recite additional elements that integrate the judicial exception into a practical application. See Guidance, Step 2A, Prong 2. Step 2B of the Guidance Turning to Step 2B of the Guidance (Alice step two), Appellant does not argue any specific limitation (when viewed individually or as an ordered combination) was not well-understood, routine, or conventional in the field. Nor does Appellant argue the Examiner erred in that aspect. Since Appellant does not advance arguments under Step 2B, Appellant has not shown the Examiner erred with respect to the Guidance’s Step 2B analysis. See Guidance, Step 2B. Because Appellant has not persuaded us the Examiner erred, we sustain the Examiner’s rejection of claims 1, 8, and 15 under 35 U.S.C. § 101. Appeal 2020-002420 Application 14/943,629 17 We also sustain the Examiner’s rejection of claims 2–7, 9–14, and 16– 20, as Appellant does not advance separate substantive arguments about those claims. See 37 C.F.R. § 41.37(c)(1)(iv). 35 U.S.C. § 1036 We have reviewed the Examiner’s rejection in light of Appellant’s contentions and the evidence of record. We concur with Appellant’s contentions that the Examiner erred in finding the cited portions of Lieblang and Strickler collectively teach “in response to receiving the search query, searching offers designated as being available and offers designated as being unavailable, and generating a user interface that shows the results of the searching,” as recited in independent claim 1 (emphases added). See App. Br. 11; Reply Br. 4–5. The Examiner finds: Lieblang does not disclose, however, Strickler discloses: . . . in response to the search query, searching offers designated as being available and offers as being unavailable {see at least [0048] search offers (reads on in response to the search query), search existing offers (reads on available offers), show expired offers (reads on unavailable offers); [0056]--[0057] search existing offers {reads on offers designated as available}, show expired offers (reads on offers designated as unavailable)}[.] Final Act. 14–15; see also Ans. 6–7. We have reviewed the cited Strickler portions, and they do not discuss “in response to receiving the search query, searching offers designated as 6 Appellant raises additional arguments regarding the prior art rejection. Because the identified issue is dispositive of the appeal with respect to the prior art rejection, we do not address the additional arguments. Appeal 2020-002420 Application 14/943,629 18 being available and offers designated as being unavailable, and generating a user interface that shows the results of the searching,” as recited in independent claim 1 (emphases added). To the contrary, the cited Strickler paragraphs describe “show[ing]”—not searching—unavailable offers: search existing offers, show expired offers . . . The search option of the offer menu may allow a merchant system to search existing offers by, for example, offer ID, offer title, offer description, and the like. The show expired offers option allows a merchant system to change the list of offers shown from active existing offers to a list of offers that have since expired or have been revoked. . . . Strickler ¶¶ 48, 57 (emphases added). Further, the Examiner’s conclusory statement that “displaying active and expired offers at the same time is an obvious variant to toggling between active and non-active offers” (Ans. 6) does not constitute objective evidence, and is insufficient to show the cited Strickler paragraphs teach or suggest the disputed limitation. Because the Examiner fails to provide sufficient evidence or explanation to support the rejection, we are constrained by the record to reverse the Examiner’s rejection of independent claim 1, and independent claims 8 and 15 for similar reasons. We also reverse the Examiner’s rejection of corresponding dependent claims 2–7, 9–14, and 16–24. Although the Examiner cites additional references for rejecting some dependent claims, the Examiner has not shown the additional references overcomes the deficiency discussed above in the rejection of claim 1. Appeal 2020-002420 Application 14/943,629 19 CONCLUSION We affirm the Examiner’s decision rejecting claims 1–20 under 35 U.S.C. § 101. We reverse the Examiner’s decision rejecting claims 1–20 under 35 U.S.C. § 103. Because we affirm at least one ground of rejection with respect to claims 1–20 on appeal, we affirm the Examiner’s decision rejecting claims 1–20. See 37 C.F.R. § 41.50(a)(1). In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–20 101 Subject Matter Eligibility 1–20 1−3, 7 103 Lieblang, Strickler, Debow, Cunningham, Dicke 1−3, 7 8−13 103 Lieblang, Strickler, Debow 8−13 14 103 Lieblang, Strickler, Debow, Cunningham 14 15−17, 20 103 Lieblang, Strickler, Debow, Krejcarek 15−17, 20 4−6 103 Lieblang, Strickler, Debow, Cunningham, Dicke 4−6 18 103 Lieblang, Strickler, Debow, Krejcarek, Ouimet 18 19 103 Lieblang, Strickler, Debow, Krejcarek, 19 Appeal 2020-002420 Application 14/943,629 20 Ouimet, Strimling Overall Outcome 1–20 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37 C.F.R. § 41.50(f). AFFIRMED Copy with citationCopy as parenthetical citation