Audrey Josephine. Leicher et al.

Patent Trials and Appeals Board

Dec 17, 2019

13916116 - (D) (P.T.A.B. Dec. 17, 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.
13/916,116 06/12/2013 Audrey Josephine Leicher 201203991 5003
67260 7590 12/17/2019
TARGET BRANDS, INC.
1000 NICOLLET MALL, TPS-3165
MINNEAPOLIS, MN 55403
EXAMINER
REINHARDT, RICHARD G
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
12/17/2019 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):
USPTO.MAIL@TARGET.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte AUDREY JOSEPHINE LEICHER,
WILLIAM JOHN BITUNJAC, NATALIE VICTORIA DOYNE, and
SARAH ROXANNE PETERSON
___________

Appeal 2018-006028
Application 13/916,116
Technology Center 3600
____________

Before ERIC B. CHEN, HUNG H. BUI, and MICHAEL M. BARRY,
Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3–7, 10–14, and 17–20. Claims 2, 8,
9, 15, and 16 have been cancelled. 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 Target
Brands, Inc. (Br. 3.)
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CLAIMED SUBJECT MATTER
The claims are directed to a user interface that requests offer
information for an offer provided by a vendor. The offer information is
received from the vendor’s computing device where the offer information
includes a vendor privacy setting. A request is received from a consumer’s
computing device for available offers. An indication that the consumer
selected the offer is received and the offer and the vendor privacy setting are
stored. (Abstract.)
Claim 1, reproduced below, is illustrative of the claimed subject
matter, with bracketed reference numbers added and disputed limitations
shown in italics:
1. A method comprising:
[i] providing a user interface to a vendor’s computing
device that requests offer information for an offer provided by
the vendor;
[ii] receiving the offer information from the vendor’s
computing device, the offer information comprising a privacy
setting that indicates whether the offer is private, the privacy
setting being only for the received offer information;
[iii] receiving a request from a consumer’s computing
device for available offers;
[iv] providing to the consumer’s computing device a user
interface comprising the offer provided by the vendor;
[v] receiving from the consumer’s computing device an
indication that the consumer selected the offer provided by the
vendor;
[vi] storing the offer and the privacy setting for the offer
as a selected offer for the consumer;
[vii] in response to the consumer selecting the offer, a
processor that defaults to posting Internet social media postings
in response to consumers selecting offers, uses the privacy
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setting as a basis for not posting an Internet social media
posting regarding the consumer’s selection of the offer.

REFERENCES
Name Reference Date
Taylor et al. US 2012/0101881 A1 Apr. 26, 2012
Grigg et al. US 2014/0006175 A1 Jan. 2, 2014

REJECTIONS
Claims 1, 3–7, 10–14, and 17–20 stand rejected under 35 U.S.C. § 101
as directed to patent-ineligible subject matter.
Claims 1, 3–7, 10–14, and 17–20 stand rejected under 35 U.S.C. § 103
as being unpatentable over Taylor and Grigg.

OPINION
We are unpersuaded by Appellant’s arguments (Br. 7–13) that
independent claims 1, 11, and 17 are directed to patent-eligible subject
matter under 35 U.S.C. § 101.
The Examiner determined that “[c]laims 1, 3–[7, 10–14], and 17–20
are rejected under 35 U.S.C. [§] 101 because the claimed invention is
directed to a judicial exception (i.e., a law of nature, a natural phenomenon,
or an abstract idea) without significantly more.” (Final Act. 2.) In
particular, the Examiner determined that
a human, using the mind or pen and paper, can request offer
information for an offer provided by a vendor, receive the offer
information including a privacy setting indicating whether the
offer is private, receive a request from a consumer for offers,
providing the offer provided by the vendor, receive an indication
that the consumer selected the offer, storing the offer and privacy
settings for the consumer, determining whether to make a social
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media posting in response to the consumer selecting the offer
based on the privacy setting, and posting (or not posting) the
social media posting based on that determination.
(Id. at 3.) Moreover, the Examiner determined that “[t]he claim does not
include additional elements that are sufficient to amount to significantly
more than the judicial exception because the additional elements when
considered both individually and as an ordered combination do not amount
to significantly more than the abstract idea” because “[t]he ‘computing
device(s),’ ‘user interface,’ ‘processor,’ ‘and Internet social media’ are all
recited at a high level of generality and are recited as generic
computers/computer components and/or are performing generic computer
functions routinely used in computer applications.” (Id. at 4.) We agree
with the Examiner’s determinations and ultimate conclusion that the claims
are directed to patent-ineligible subject matter.
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 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
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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 (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 183 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))).
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 176; 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. at 191 (citing Benson and Flook); see also, e.g., id. at 187
(“It is now commonplace that an application of a law of nature or
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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 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 PTO recently published revised guidance on the application of
§ 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019). Under that 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); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h) (9th ed.
2019)).
See 84 Fed. Reg. at 54–55. Only if a claim (1) recites a judicial exception
and (2) does not integrate that exception into a practical application, do we
then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that are not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
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(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 84 Fed. Reg. at 56.

Are the claims at issue directed
to a patent-ineligible concept?
Step One
Claim 1 is a method claim, which falls within the “process” category
of 35 U.S.C. § 101. Claim 11 is a computing device claim, and claim 17 is a
storage medium claim, which fall within the “manufacture” category of
35 U.S.C. § 101. Therefore, claims 1, 11, and 17 fall within one of the four
statutory categories of patentable subject matter identified by 35 U.S.C.
§ 101. Although claims 1, 11, and 17 fall within the statutory categories, we
must still determine whether the claims are directed to a judicial exception,
namely an abstract idea. See Alice, 573 U.S. at 216. Thus, we must
determine whether the claims recite a judicial exception and whether the
exception is integrated into a practical application. See 84 Fed. Reg. at 52–
55.

Step 2A, Prong One
Independent claim 1 is a method claim, and recites the following
limitations: “[i] requests offer information for an offer provided by the
vendor,” “[ii] receiving the offer information . . . the offer information
comprising a privacy setting that indicates whether the offer is private, the
privacy setting being only for the received offer information,” and “[iii]
receiving a request . . . for available offers.” Thus, the method steps of
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claim 1 encompass mental processes. In particular, the foregoing method
limitations of claim 1 can be performed either by human thought alone, by a
human using pen and paper, or by humans without a computer. See
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372–73 (Fed.
Cir. 2011) (“[U]npatentable mental processes” include “steps [that] can be
performed in the human mind, or by a human using a pen and paper.”); see
also Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d. 1314,
1324 (Fed. Cir. 2016) (“The series of steps covered by the asserted claims
. . . could all be performed by humans without a computer.”). For example,
a consumer could receive a correspondence from a vendor via mail, with an
option to receive private offer information. Next, the consumer could send a
return correspondence to the vendor via mail, indicating interest in receiving
private offers.
Independent claim 1 further recites the following limitations: “[v]
receiving . . . an indication that the consumer selected the offer provided by
the vendor, “[vi] storing the offer and the privacy setting for the offer as a
selected offer for the consumer,” and “[vii] in response to the consumer
selecting the offer, . . . postings in response to consumers selecting offers.”
Likewise, the method steps of claim 1 can be performed either by human
thought alone, by a human using pen and paper, or by humans without a
computer. For example, the consumer can communicate acceptance of the
offer to the vendor. The business records of the vendor would include the
privacy setting of the consumer, and if permitted by the privacy setting, the
vendor may further advertise that the consumer purchased a certain item.
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Accordingly, claim 1 recites a judicial exception. Claims 11 and 17
recite limitations similar to those discussed with respect to claim 1. Thus,
claims 11 and 17 also recite a judicial exception.

Step 2A, Prong Two
Because claim 1 recites a judicial exception, we next determine if the
claims recite additional elements that integrate the judicial exception into a
practical application.
Claim 1 recites: “[i] providing a user interface to a vendor’s
computing device that requests offer information for an offer provided by the
vendor,” “[ii] receiving the offer information from the vendor’s computing
device,” “[iii] receiving a request from a consumer’s computing device for
available offers,” “[iv] providing to the consumer’s computing device a user
interface comprising the offer provided by the vendor,” “[v] receiving from
the consumer’s computing device an indication that the consumer selected
the offer provided by the vendor,” and “[vii] in response to the consumer
selecting the offer, a processor that defaults to posting Internet social media
postings in response to consumers selecting offers, uses the privacy setting
as a basis for not posting an Internet social media posting regarding the
consumer’s selection of the offer” (emphases added).
The additional elements recited in claim 1, including “user interface,”
“vendor’s computing device,” “consumer’s computing device,” “processor,”
and “Internet social media postings,” considered individually and in
combination, are merely tools used for performing the abstract idea. See
Affinity Labs of Tex., LLC v. DirecTV, LLC, 838 F.3d 1253, 1262 (Fed. Cir.
2016) (“[T]he claims are directed not to an improvement in cellular
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telephones but simply to the use of cellular telephones as tools in the aid of a
process focused on an abstract idea.”).
Accordingly, claim 1 does not recite additional elements that integrate
the judicial exception into a practical application. Claims 11 and 17 recite
similar limitations.

Is there something else in the claims
that ensures that they are directed to significantly
more than a patent ineligible concept?
Step 2B
Because claims 1, 11, and 17 are directed to a judicial exception, we
next determine, according to Alice, whether these claims recite an element,
or combination of elements, that is enough to ensure that the claim is
directed to significantly more than a judicial exception.
Claim 1 is a method claim, which includes the following additional
elements: “user interface,” “vendor’s computing device,” “consumer’s
computing device,” “processor,” and “Internet social media postings.”
Likewise, computing device claim 11 and storage medium claim 17 recite
similar additional elements.
With respect to the claimed additional elements, Appellant’s
Specification discloses the following:
FIG. 3 provides an example of a vendor offer set-up user
interface 300. In accordance with some embodiments, user
interface 300 is presented to vendor representative 118 after
vendor representative 118 has logged into social savings server
102 such that the identity 302 of the vendor representative and
the identity of the vendor is known.
(Spec. ¶ 21 (emphasis added).)
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FIG. 2 provides a flow diagram for creating offers on
social savings server 102. At step 200, a vendor offer set-up
application 114 receives a request for an offer-creation user
interface from a vendor client device 116. Vendor client device
116 is operated by a vendor representative 118 on behalf of a
vendor.
(Id. ¶ 20 (emphasis added).)
In particular, social savings application 108 provides a
search user interface to client device 130 that provides a text box
where a consumer 132 may enter terms and product names to be
searched. When consumer 132 submits a search query, social
savings application 108 searches index 122 and retrieves all
offers that match the search query. Social savings application
108 then returns the matching offers to client device 130 in a
search results user interface.
(Id. ¶ 28 (emphasis added).)
In accordance with one embodiment, social media
postings 180 take the form of templates with fields that are filled
with information taken from the selected offer. In accordance
with further embodiments, a separate template is provided for
each social media site in social media list 111 such that different
messages can be posted to different social media sites. Such
posting messages can be simple messages such as “Mary has
selected an offer for 15% off a brand “A”, 96 pack of diapers.”
(Id. ¶ 43 (emphasis added).)
An example of a computing device that can be used as a
server and/or client device in the various embodiments is shown
in the block diagram of FIG. 10. The computing device 10 of
FIG. 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.
(Id. ¶ 56 (emphasis added).)
The generalized functional terms by which the additional elements are
described reasonably indicate that Appellant’s Specification discloses: (i)
conventional user interface 300; (ii) conventional vendor client device 116
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(e.g., computing device 10); (iii) conventional client device 130 (e.g.,
computing device 10); (iv) conventional processor 12; and (v) conventional
social media postings 180. Moreover, Appellant’s Figure 1 illustrates that
vendor client device 116, client device 130 having a user interface, and
social media postings 180 function cooperatively as an ordered combination.
In view of Appellant’s Specification, the claimed additional elements
including “user interface,” “vendor’s computing device,” “consumer’s
computing device,” “processor,” and “Internet social media postings”
reasonably may be determined to be generic, purely conventional computer
elements, as an ordered combination.
Thus, claims 1, 11, and 17 do no more than require generic additional
elements to perform generic computer functions, rather than improve
computer capabilities.
First, Appellant argues that
[a]ccepting . . . the Examiner’s erroneous statement that the
claims are directed to the idea of “determining not to post a
selected offer based on privacy settings,” the claims would still
be directed to patentable subject matter because the idea of
“determining not to post a selected offer based on privacy
settings” has never been found to be abstract by the courts.
(Br. 7.) Contrary to Appellant’s arguments, the Examiner has identified the
appropriate judicial exception as “mental processes” and the Examiner has
compared the claimed concepts of independent claim 1 to appropriate
Federal Circuit decisions (i.e., CyberSource). Accordingly, the Examiner
has met the burden of a general prima facie notice requirement. See In re
Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011) (“[A]ll that is required of the
[Patent] [O]ffice to meet its prima facie burden of production is to set forth
the statutory basis of the rejection and the reference or references relied
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upon in a sufficiently articulate and informative manner as to meet the notice
requirement of § 132.”).
Second, Appellant argues that “[b]y not addressing this language
[recited in claim 1], the Office Action comes to the erroneous conclusion
that claim 1 is simply directed to not posting a selected offer based on
privacy settings,” however, “claim 1 includes providing user interfaces to
two different computing devices and using a processor that defaults to
posting on Internet social media when a consumer selects an offer.” (Br. 9.)
However, Appellant is improperly conflating part one of the Alice test with
part two of the Alice test, which includes consideration of an element or
combination of elements to determine if the claim recites “additional
features.”
Third, Appellant argues the following:
The fact that the court in Thales found [the claimed invention] to
be directed to patentable subject matter means that the “human
mind” and “paper and pencil” tests being applied to the present
claims by the Examiner are not valid tests for subject matter
eligibility. As such, the reasoning provided by the Examiner for
rejecting the claims is in error.
(Id. at 11.) However, other than a conclusory statement that “the ‘human
mind’ and ‘paper and pencil’ tests . . . are not valid tests for subject matter
eligibility” with a citation to Thales Visionix Inc. v. United States, 850 F.3d
1343 (Fed. Cir. 2017), Appellant does not adequately explain how this case
pertains to the claimed invention. (Id.) More particularly, in Thales the
claims were patent eligible because of non-generic technological limitations,
i.e., “use [of] inertial sensors in a non-conventional manner to reduce errors
in measuring the relative position and orientation of a moving object on a
moving reference frame.” Thales, 850 F.3d at 1348–49.
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Fourth, Appellant argues that “claims 1, 11 and 17 improve the
process by setting rules that had not been used previously to control when
information is posted to Internet social media.” (Br. 11–12.) Accordingly,
Appellant argues, “[t]his makes claims 1, 11 and 17 similar to the claims in
McRO, where the Federal Circuit found that claims directed to automating
animation were directed to patentable subject matter even though animation
had been done by hand in the past.” (Id. at 12.) However, other than a
conclusory statement that the claims “improve the process by setting rules
. . . when information is posted to Internet social media” with a citation to
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
2016), Appellant does not adequately explain how this case pertains to the
claimed invention.
Fifth, Appellant argues the following:
In claims 1, 3, 5–7 and 10, the ordered combination of elements
is an inventive concept because the prior art does not provide a
processor that defaults to posting Internet social media postings
in response to consumers selecting offers and that uses a privacy
setting provided by a vendor as a basis for not posting an Internet
social media posting regarding a consumer’s selection of the
offer.
(Br. 13.) However, Appellant improperly conflates the requirements for
eligible subject matter with the independent requirements of novelty and
non-obviousness. “The ‘novelty’ of any element or steps in a process, or
even of the process itself, is of no relevance in determining whether the
subject matter of a claim falls within the § 101 categories of possibly
patentable subject matter.” Diehr, 450 U.S. at 188–89.
Last, Appellant argues that “[s]ince this ordered combination of
elements has not been used in the past, either with or without a computer,
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the invention of claims 1, 3, 5–7, and 10 represents patentable subject matter
under Bascom.” (Br. 13.) Contrary to Appellant’s arguments, in Bascom,
the Federal Circuit did not determine that an ordered combination “not used
in the past” equates to an inventive concept under Alice. Rather, the court
articulated that “[t]he inventive concept inquiry requires more than
recognizing that each claim element, by itself, was known in the art” but
instead, “an inventive concept can be found in the non-conventional and
non-generic arrangement of known, conventional pieces.” Bascom Glob.
Internet Servs., Inv. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir.
2016).
Thus, we agree with the Examiner that claims 1, 11, and 17 are
directed towards patent-ineligible subject matter, without reciting
significantly more.
Accordingly, we sustain the rejection of independent claims 1, 11, and
17 under 35 U.S.C. § 101. Claims 3–7, 10, 12–14, and 18–20 depend from
independent claims 1, 11, and 17, and Appellant has not presented any
additional substantive arguments with respect to these claims. We sustain
the rejection of claims 3–7, 10, 12–14, and 18–20 under 35 U.S.C. § 101 for
the same reasons discussed with respect to independent claims 1, 11, and 17.

§ 103 Rejection
We are unpersuaded by Appellant’s arguments (Br. 15–16) that the
combination of Taylor and Grigg would not have rendered obvious
independent claim 1, which includes the limitation “in response to the
consumer selecting the offer, a processor that defaults to posting Internet
social media postings in response to consumers selecting offers, uses the
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privacy setting as a basis for not posting an Internet social media posting
regarding the consumer’s selection of the offer.”
The Examiner found that the L-PROMO platform of Taylor, which is
linked to the user’s social media account and provides notifications of
promotion redemptions, corresponds to the limitation “in response to the
consumer selecting the offer, a processor that defaults to posting Internet
social media postings in response to consumers selecting offers.” (Final
Act. 7.) The Examiner further found that the public offers of Grigg, which
can be limited to a subset of individuals, corresponds to the limitation “uses
the privacy setting as a basis for not posting an Internet social media posting
regarding the consumer’s selection of the offer.” (Id. at 7–8.) The Examiner
concluded that “[i]t would have been obvious . . . to have included
determining to post based on privacy settings because some offers may be
public and some may be private, and only public ones should be publically
posted.” (Id. at 8.) We agree with the Examiner’s findings and conclusions.
Taylor relates to “a financial transaction and offer redemption”
system, referred to as “L-PROMO.” (Abstract.) With respect to L-PROMO,
Taylor explains that “if the consumer is eligible to apply an offer at 245, the
merchant may receive a notification of promotion redemption confirmation
252” and “the social media may populate social media feeds based on the
promotion redemption 260, e.g., automatically posting a Facebook status
update showing the consumer ‘enjoying a 50% off mocha latte at
Starbucks.’” (¶ 50.) Because Taylor explains that L-PROMO can post to a
user’s Facebook profile when an offer is redeemed, Taylor teaches the
limitation “in response to the consumer selecting the offer, a processor that
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defaults to posting Internet social media postings in response to consumers
selecting offer.”
Grigg relates to “providing a social media offer system to users.”
(Abstract.) Figure 1 of Grigg illustrates a flow diagram for providing a
social media offer system. (¶ 12.) Referring to Figure 1, Grigg explains that
“[i]n block 106, once the social media site is identified, the system provides
the offer to the user through the social media site” and “the user is able to
request public and/or private offers.” (¶ 27.) In particular, Grigg explains
that “[a] public offer may be made public to a subset of individuals
associated with the recipient of the offer, such as a group or circle of friends,
acquaintances, or connections,” and that “an offer may be posted on a wall
or other publicly viewable site on a social media site such that the user can
control viewing of the offer by controlling privacy settings related to the
publicly viewable site.” (Id.) Because Grigg explains that a public offer
may be made to a subset of individuals, and the user can control viewing by
controlling privacy settings, Grigg teaches the limitation “uses the privacy
setting as a basis for not posting an Internet social media posting regarding
the consumer’s selection of the offer.”
A person of ordinary skill in the art would have recognized that
incorporating the privacy settings of Grigg for controlling viewing on social
media with the L-PROMO system of Taylor would improve Taylor by
providing the ability to control viewing of redeemed offers social media (e.g.
Facebook). See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)
(“[I]f a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
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application is beyond his or her skill.”). Thus, we agree with the Examiner
(Final Act. 7–8) that modifying Taylor to incorporate the privacy settings of
Grigg would have been obvious.
Appellant argues that “Grigg is discussing how offers are presented to
a user not what is posted to social media after a user selects an offer” and
“Grigg does not show or suggest using a privacy setting from a vendor to
control whether a user’s selection of an offer will result in a posting to
Internet social media.” (Br. 15.) However, the Examiner cited to Taylor for
teaching the limitation “in response to the consumer selecting the offer, a
processor that defaults to posting Internet social media postings in response
to consumers selecting offers” and cited to Grigg for teaching the limitation
“uses the privacy setting as a basis for not posting an Internet social media
posting regarding the consumer’s selection of the offer.” (Final Act. 7.) The
rejection of claim 1 is based on the combination of Taylor and Grigg, and
Appellant cannot show non-obviousness by attacking references
individually. See In re Keller, 642 F.2d 413, 426 (CCPA 1981).
Appellant further argues that “it would not be obvious to modify
Grigg in order use a privacy setting from a vendor to control whether a
user’s selection of an offer will result in a posting to Internet social media.”
(Br. 15.) In particular, Appellant argues that “Grigg[] rewards consumers
for making such postings” but “[a]dding the ability for vendors to prevent
such postings through a privacy setting would greatly limit the ability of
consumers to share their offers and thus would limit the main goal of
Grigg.” (Id. at 16.) Contrary to Appellant’s argument, Grigg explains that
“the user can control viewing of the offer by controlling privacy settings
related to the publicly viewable site.” (¶ 27.)
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Appellant also argues that “the Examiner asserted that it is common
practice for people to make a determination of whether or not they should
make a public post on another person’s social media based on whether the
information is private or not and provided several examples of such
determinations.” (Br. 16.) Accordingly, Appellant argues that “the
Examiner has not cited a reference to support these assertions.” (Id.)
However, even if Appellant is correct that the Examiner’s reliance on
“common practice” is improper, the Examiner also cited to Grigg for
teaching the limitation “us[es] the privacy setting as a basis for not posting
an Internet social media posting regarding the consumer’s selection of the
offer.” (Final Act. 7–8.)
Thus, we agree with the Examiner that the combination of Taylor and
Grigg would have rendered obvious independent claim 1, which includes the
limitation “in response to the consumer selecting the offer, a processor that
defaults to posting Internet social media postings in response to consumers
selecting offers, uses the privacy setting as a basis for not posting an Internet
social media posting regarding the consumer’s selection of the offer.”
Accordingly, we sustain the rejection of independent claim 1 under
35 U.S.C. § 103. Claims 3 and 5–7 depend from claim 1, and Appellant has
not presented any additional substantive arguments with respect to these
claims. Therefore, we sustain the rejection of claims 3 and 5–7 under
35 U.S.C. § 103, for the same reasons discussed with respect to independent
claim 1.
Independent claims 11 and 17 recite limitations similar to those
discussed with respect to independent claim 1, and Appellant has not
presented any additional substantive arguments with respect to these claims.
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We sustain the rejection of claims 11 and 17, as well as dependent claims
12–14 and 18–20, also not separately argued, for the same reasons discussed
with respect to claim 1.

Claim 4
Although Appellant nominally argues the rejection of dependent
claim 4 separately (Br. 17), the arguments presented do not point out with
particularity or explain why the limitations of these dependent claims are
separately patentable. Instead, Appellant argues the following:
Neither paragraph [27 nor 62 of Grigg] indicates that a
determination is made as to whether to enable a consumer to set
a privacy setting for an offer based on a privacy setting received
from a vendor’s computing device. Instead, the cited paragraphs
of Grigg indicate that the consumer is able to indicate whether
they want to receive public or private offers. The ability to set
this preference is not shown in Grigg to be based on a privacy
setting received from a vendor.
(Id.) Instead of presenting arguments pointing out with particularity how
the limitations of claim 4 are distinguishable over Grigg, Appellant merely
summarizes Grigg with a conclusory statement that Grigg does not teach the
features of this dependent claim. Accordingly, Appellant has not presented
any substantive arguments with respect to dependent claim 4. See In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[T]he Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.”). We are not
persuaded by these arguments for the reasons discussed with respect to
claim 1, from which claim 4 depends.

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CONCLUSION
The Examiner’s decision rejecting claims 1, 3–7, 10–14, and 17–20
under 35 U.S.C. § 101 is affirmed.
The Examiner’s decision rejecting claims 1, 3–7, 10–14, and 17–20
under 35 U.S.C. § 103 is affirmed.

DECISION SUMMARY
In summary:
Claims
Rejected
Basis Affirmed Reversed
1, 3–7, 10–14, 17–20 § 101 1, 3–7, 10–14, 17–20
1, 3–7, 10–14, 17–20 § 103 1, 3–7, 10–14, 17–20
Overall Outcome 1, 3–7, 10–14, 17–20

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)(1)(iv).

AFFIRMED