Edward Patrick et al.Download PDFPatent Trials and Appeals BoardAug 20, 20212020004019 (P.T.A.B. Aug. 20, 2021) 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. 12/955,486 11/29/2010 Edward Patrick 002964.P020C2 7579 8791 7590 08/20/2021 WOMBLE BOND DICKINSON (US) LLP ATTN: IP DOCKETING P.O. BOX 7037 ATLANTA, GA 30357-0037 EXAMINER BLACK, LINH ART UNIT PAPER NUMBER 2163 NOTIFICATION DATE DELIVERY MODE 08/20/2021 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): IPDocketing@wbd-us.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte EDWARD PATRICK, JAMES MASON, and NEHEMIA ZUCKER ____________________ Appeal 2020-0040191 Application 12/955,486 Technology Center 2100 ____________________ Before MICHAEL J. STRAUSS, JOHN P. PINKERTON, and DANIEL J. GALLIGAN, Administrative Patent Judges. STRAUSS, Administrative Patent Judge. DECISION ON APPEAL Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 2–5, 7–9, 12–15, 17–22, 24, and 25. Final Act. 1.3 1 In our prior Decision issued on October 29, 2015, we affirmed the Examiner’s rejection of claims 2–11 under 35 U.S.C. § 103(a) as being unpatentable over Elmore and Mears (claims 2–4, 10, 11), and further in view of Loh (US 2004/0139161 A1, pub. July 15, 2004) (claim 5) and Stender (US 7,333,939 B1, iss. Feb. 19, 2008) (claims 6–9). 2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Advanced Messaging Technologies as the real party in interest. Appeal Br. 3. 3 Our Decision refers to the Final Office Action mailed April 17, 2019 (“Final Act.”); Appellant’s Appeal Brief filed October 29, 2019 (“Appeal Appeal 2020-004019 Application 12/955,486 2 Claims 1, 6, 10, 11, 16, and 23 are canceled. Appeal Br. 26–28, 30 (Claims App.). We have jurisdiction pursuant to 35 U.S.C. § 6(b). We AFFIRM. STATEMENT OF THE CASE Introduction Appellant generally describes the disclosed and claimed invention as “directed to automated processes for distributing online content that may be used for influencing the behavior of recipients.” Spec. ¶ 2. Claims 2, 12, and 19 are independent. Claim 2, which is reproduced below with formatting altered and labeling of the constituent claim limitations added, is illustrative of the subject matter on appeal: 2. An article of manufacture comprising: [(I)] a machine-accessible medium [(1)] having stored therein a viewer application that is associated with a user, [(2)] wherein the viewer application is a client program that programs a machine to enable the user to view a message that is contained in a file, [(II)] wherein the viewer application [(1)] upon being launched in the machine determines whether an Internet connection exists in the machine and [(2)] if so sends a resource locator that includes an identification of the user to a server over the Internet, [(3)] wherein the identification of the user includes [(i)] the user’s inbound telephone number or [(ii)] the user’s email address; [(III)] the programmed machine is to Br.”) and Reply Brief filed April 24, 2020 (“Reply Br.”); the Examiner’s Answer mailed February 24, 2020 (“Ans.”); and the Specification filed November 29, 2010 (“Spec.”). Appeal 2020-004019 Application 12/955,486 3 [(1)] then display a splash screen of the viewer application that contains a splash screen window, [(2)] wherein content of the splash screen window is [(i)] personalized or [(ii)] selected by the server for the user, [(iii)] based on a) the server having received the identification of the user in the resource locator, b) a current state value of the user that indicates a customer life cycle of the user as a registered customer for a particular service, and c) predetermined content delivery rules stored in the server; [(IV)] wherein the server [(1)] retrieves the current state value of the user based on the identification of the user, and [(2)] automatically updates the current state value of the user with one of a plurality of predefined states, in response to applying the predetermined content delivery rules to analyze collected data associated with the user. Appeal Br. 26 (Claims App.). Rejection on Appeal The Examiner rejects claims 2–5, 7–9, 12–15, 17–22, 24, and 25 under the following grounds: Appeal 2020-004019 Application 12/955,486 4 Claims 35 U.S.C. § Reference(s) Citation 2–5, 7–9, 13–15, 17, 18, 20–22, 24, 25 103(a) Elmore, 4 Parry,5 Mears6 Final Act. 11– 23 12, 19 103(a) Elmore, Mears Final Act. 23–33 ANALYSIS We have reviewed the Examiner’s rejections of claims 2–5, 7–9, 12– 15, 17–22, 24, and 25 in light of Appellant’s arguments in the Appeal Brief and the Reply Brief. See Appeal Br. 6–25; Reply Br. 2–8. Arguments Appellant could have made, but did not make, are forfeited. See 37 C.F.R. § 41.37(c)(1)(iv) (2018). For the reasons discussed below, Appellant’s arguments are not persuasive of error by the Examiner. Unless otherwise indicated, we agree with, and adopt as our own, the Examiner’s findings of fact and conclusions as set forth in the Final Office Action from which this appeal is taken and in the Answer. Final Act. 2–17; Ans. 3–13. We provide the following explanation for emphasis. Appellant argues independent claim 2 and states that the rejections of claims 3–5, 7–9, 12–15, 17–22, 24, and 25 are improper for at least the reasons set forth for claim 2. See Appeal Br. 23–24. Accordingly, we address Appellant’s arguments in view of the limitations of claim 2. The Examiner rejects claim 2 under 35 U.S.C. § 103(a) as obviousness over the combined teachings of Elmore, Parry, and Mears. 4 US 2006/0059107 A1 (published Mar. 16, 2006, “Elmore”). 5 US 2002/0178213 A1 (published Nov. 28, 2002, “Parry”). 6 US 7,092,509 B1 (issued Aug. 15, 2006, “Mears”). Appeal 2020-004019 Application 12/955,486 5 Final Act. 11–19. Appellant contends that the cited prior art references, individually or in combination, fail to teach or suggest: the programmed machine is to then display a splash screen of the viewer application that contains a splash screen window, wherein content of the splash screen window is personalized or selected by the server for the user, based on a) the server having received the identification of the user in the resource locator, b) a current state value of the user that indicates a customer life cycle of the user as a registered customer for a particular service, and c) predetermined content delivery rules stored in the server. Appeal Br. 8; Reply Br. 2. We consider below Appellant’s arguments in support of this contention seriatim as they appear in the Appeal Brief, but we are not persuaded that the Examiner erred. The Examiner finds Elmore’s disclosure of a system and method for establishing electronic business systems supporting communication services teaches or suggests the majority of claim 2’s subject matter including claim limitations I(1)(2), III(2)(i–iii), and IV(1)(2). Final Act. 11–17 (citing Elmore ¶¶ 5, 10–12, 37, 38, 48–50, 65–67, 81–84, 115, 162–167, 174–175, 265, 299, 339, 421–423, 565–568, 622, 633, 712–717, 750–755, 852, 907– 914, 917, 962–965, 974, 980–984, 999, 1011, 1027, 1071, 1189; Fig. 7; Table 2.55). In particular, the Examiner finds Elmore’s disclosure of Profile Manage 130, which collects and organizes information about a customer, and CPS/Communication service, which “determines which news and information item to select based on where a customer lives, e.g. [a] customer’s address or different criteria” teaches a splash screen window (i.e., service presentation) “is personalized OR selected by the server for the user” as recited by claim recitations III.2(i)–(ii). Final Act. 13 (emphasis omitted). However, according to the Examiner, Elmore fails to explicitly Appeal 2020-004019 Application 12/955,486 6 teach the first of the two alternative actions of either (1) personalizing or (2) selecting, finding “Elmore et al. does not explicitly disclose the splash screen window is personalized.” Id. at 17. Addressing the alternative personalization option (i.e., claim limitation III(2)(i)), the Examiner finds Parry’s disclosure of managing session data using Universal Resource Locator (URL) munging7 teaches the content of a splash screen window is personalized. Final Act. 17. In combining the teachings, the Examiner finds “it would have been obvious . . . to combine the teachings of Elmore and Parry in order to allow effectively communicate to the users/customers based on the users’ preferences.” Id. at 17–18. In connection with limitations II(1)–(2), the Examiner finds Mears’s disclosure of a contact center including a customer database of customer classifications teaches, upon the viewer application being launched, determining whether an Internet connection exists in the machine and, if so, sending to a server over the Internet a resource locator including 7 Parry describes URL munging as follows: URL munging is the process by which session variables are encoded and appended to a URL. These session variables may include a unique identifier of the specific Web user, profile information about that user, and the specific information requested by the user. A user’s Web browser provides these session variables to a Web server when the user’s browser is requesting a Web page. The Web server can then use those variables to dynamically generate a Web page that is tailored for that individual user at that specific time. “Munging” refers to the changes that are made to a URL when these session variables are added to it. Parry ¶ 48 (emphasis added). Appeal 2020-004019 Application 12/955,486 7 identification of the user. Final Act. 18. The Examiner finds Mears’s Figures 30–32 depicting “examples of different types of reports generated by the system administrator” (Mears 5: 34–35) teach identification of the user including the user’s inbound telephone number (limitation II(3)(i)). Final Act. 18. The Examiner finds Mears’s Table 26 describing an EMAIL media type teaches a user identification including a user’s email address. Id. The Examiner further finds Mears’s splash screen 248 as depicted in Figure 83 teaches displaying a splash screen of the viewer application that contains a splash screen window. Id. at 19 (citing Mears 53:1–29; Figs. 82–84). Personalized Splash Screen Window (limitations III(1)–(2)) Appellant contends the prior art of Elmore, Parry, and Mears, individually or in combination, fails to teach or suggest limitations III(1)– (2). Appeal Br. 8. Appellant argues if, as found by the Examiner, Elmore does not explicitly disclose the splash screen window is personalized, then it follows that the Examiner improperly relies on Elmore for teaching personalization or selection of splash screen content based on factors in limitations III(2)(iii)(a)–(c). Id. at 9. Addressing Elmore, Appellant argues as follows: Elmore’s “Splash page” is only used to display a “New User Register Here” link that takes a new customer to another page (i.e., “Create User” page), where the user can enter a user name and password. That is, Elmore is silent as to personalization and/or selection of content of the “Splash page”, and also is silent as to any content of the “Splash page” being related to “a) the server having received the identification of the user in the resource locator, b) a current state value of the user that indicates a customer life cycle of the user as a registered customer for a Appeal 2020-004019 Application 12/955,486 8 particular service, and c) predetermined content delivery rules stored in the server,” as recited in claim 2. Id. at 11 (emphasis omitted). According to Appellant, rather than being personalized, Elmore’s splash screen display of New User Register Here link is independent of any identification of the user. Id. at 12. The Examiner responds, finding Elmore’s system that tracks user preferences, remembers personalized profiles, and provides a personalized Web-based interface teaches or suggests disputed limitations III(1)(i) through III(2)(iii)(a), which recite as follows: (III) the programmed machine (1) displays a splash screen of the viewer application that contains a splash screen window, (2) wherein content of the splash screen window is (i) personalized or (ii) selected by the server for the user, (iii) based on a) the server having received the identification of the user in the resource locator. Ans. 5–7. The Examiner reasons that a client uses a URL to request a file or item such that, because “Elmore teaches using certain interface that works for the user system/need and displaying information that is tailored to the user’s preference, the browser request does contain information that identifies the user and allows the web server to provide the user the most appropriate information and/or promotional items.” Id. at 7. In connection with limitation III(2)(iii)(b), i.e., basing personalization on a “current state value of the user that indicates a customer life cycle of the user as a registered customer for a particular service”, the Examiner finds the recited criterion is taught or suggested by Elmore’s tracking of customer order status. Id. at 8 (citing Elmore ¶¶ 534–541, 754–755). Appellant replies by again arguing that, if Elmore does not teach a personalized splash screen, it follows that Elmore cannot teach Appeal 2020-004019 Application 12/955,486 9 personalization based on limitations III.2.iii.a through c. Reply Br. 3. Appellant argues: Nowhere is it clear how these Paragraphs of Elmore teach or suggest a customizable or personalized splash screen or the limitations a–c of claim 2. Instead, the Paragraphs of Elmore quoted by the Examiner in this section, including, “Business Rule Manager 128, which defines valid business relationships between customers, accounts, products, and processes”, that is in no way tied to the splash page 182 of Elmore, as the splash page 182, which is part of a registration process is not based on the Business Rule Manager 128 which “defines valid business relationships between customers, accounts, products, and processes.[”] Id. (emphasis omitted). Appellant further contends Parry fails to teach the disputed personalized splash screen window, arguing as follows: Although Parry may generally mention a “customized splash screen,” Parry does not discuss any content of this customized splash screen, and does not teach that a splash screen window should be personalized based on b) a current state value of the user that indicates a customer life cycle of the user as a registered customer for a particular service, and c) predetermined content delivery rules stored in the server. Id. at 4 (emphasis omitted). Appellant’s argument is unpersuasive of reversible Examiner error. During examination, pending claims are given their broadest reasonable interpretation consistent with the Specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under the broadest reasonable interpretation standard, claim terms are given their ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Appeal 2020-004019 Application 12/955,486 10 Appellant’s argument that Elmore’s splash page is independent of user identification, rather than being personalized (Appeal Br. 11), is unpersuasive because it fails to address the Examiner’s finding that Parry, not Elmore, teaches the disputed personalized splash screen window. See Final Act. 5. Furthermore, we are not persuaded by Appellant’s argument that, in the absence of an explicit disclosure of a personalized splash screen, it is not clear how Elmore can be relied upon for teaching how to personalize or select content of a splash screen window (Appeal Br. 9) because Appellant does not explain why information content personalization or selection factors (i.e., bases) disclosed by Elmore in general as applied to user displays are not also applicable to splash screens. That is, Appellant does not explain why a splash screen is distinguishable from any other display area or window. Appellant’s Specification discloses a splash screen may be launched and “contain typical information such as the brand name of the viewer application, as well as its version number. The splash screen provides an introduction to the software product being launched, in this case a viewer application.” Spec. ¶ 63. In the absence of an intrinsic definition of “splash screen” within Appellant’s Specification, we turn to extrinsic evidence to interpret the term. The Microsoft Computer Dictionary defines “splash screen” as follows: splash screen n. A screen containing graphics, animation, or other attention–getting elements that appear while a program is loading or as an introductory page to a Web site. A splash screen used with an application typically contains a logo, version information, author credits, or a copyright notice, and it appears when a user opens a program and disappears when loading is Appeal 2020-004019 Application 12/955,486 11 complete. A splash screen used on a Web site serves as a front door, typically loading before any content-related pages. MICROSOFT COMPUTER DICTIONARY 493 (5th ed. 2002). Thus, a splash screen is understood to be a window of an application containing an initial display of typically introductory content subject matter. Thus, from an operational point of view, a splash screen is any initial display or introductory web page that appears when an application is opened and closes when loading is complete, but is otherwise indistinguishable from other displays of information such as a web page. For the reasons discussed and in the absence of sufficient evidence to the contrary, we find any features and functionalities taught or suggested by the prior art as applicable to computer display of information, graphics, and images in general are also applicable to displays characterized as or otherwise considered to be splash screens. We further consider the meaning of what is required of a personalized splash screen. Appellant does not explain what is required to satisfy the personalization requirement. In construing a claim term, we start with the language of the claims. See, e.g., Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc). (“[T]he context in which a term is used in the [claim at issue] can be highly instructive.”). Here, the relevant limitations of claim 2 provide as follows: wherein content of the splash screen window is (1) personalized . . . based on (a) the server having received the identification of the user in the resource locator, (b) a current state value of the user that indicates a customer life cycle of the user as a registered customer for a particular service, and (c) predetermined content delivery rules stored in the server. Appeal 2020-004019 Application 12/955,486 12 Limitations III(2)(i) and (iii)(a)–(c). “[T]he specification ‘is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.’” Phillips, 415 F.3d at 1315. The Specification discloses “online content that is to be delivered to the selected member is automatically personalized or changed for the member” (Spec. ¶ 19) and that “content may be personalized for the customer, based on that customer’s current [life cycle management (LCM)] state value as maintained by the system” (id. ¶ 42), for example, based on whether or not a customer has recently used a particular service (see id. ¶ 32). Elmore discloses splash page 182 to register a new user and to allow a user to log in to a portal. Elmore ¶¶ 911, 710. Parry describes, “[i]n various embodiments of the invention, this information may comprise a customized splash screen.” Parry ¶ 54. Mears discloses using splash page 248 to notify a customer of a pending callback. Mears 53:19–21. Thus, all three references teach splash screens. Furthermore, Parry’s customized splash screen and Mears’s splash page notifying a customer of pending callback teach or suggest alternative splash screens and splash screen windows specific to a user, i.e., personalized splash screens. See also Parry ¶ 48 (use of URL munging to identify a user and tailor a web page for the individual user). In addition, Elmore’s customer/partner homepage which provides “a customer summary section, showing each of the customer/partner’s accounts” (Elmore ¶¶ 981–982), i.e., a display of personalized information, teaches or suggests presentation of personalized content, including that provided by Elmore’s separately disclosed splash page. See also Final Act. 14. Thus, although Elmore does not explicitly disclose the specific display Appeal 2020-004019 Application 12/955,486 13 designated as a “splash screen” is personalized, Elmore (as do the other references) teaches screens or windows that are personalized and selected for a particular user. Furthermore, both Parry and Mears teach or suggest personalized splash screens. Accordingly, Appellant’s argument that Elmore cannot teach the personalization criteria of limitations III(2)(i) and (iii)(a)–(c) is not persuasive. In the absence of persuasive evidence or argument to the contrary, we agree with the Examiner’s finding that Elmore specifically teaches or suggests those criteria. See Final Act. 13–16; Reply Br. 6–9. Based on our finding that features described by the prior art as applicable to displays in general are also applicable to splash displays, including those disclosed by Elmore, Parry, and Mears, we find unpersuasive Appellant’s argument that Elmore is deficient because it does not explicitly describe incorporating such features and functionality specifically into a splash screen. For example, Appellant contends “Elmore . . . does not disclose content of a splash screen window that can be personalize[d] or selected based on, or is otherwise related to, ‘b) a current state value of the user that indicates a customer life cycle of the user as a registered customer for a particular service’ as recited in claim 2.” Appeal Br. 14 (emphasis omitted). In particular, Appellant argues “history and events [which the Examiner finds teach a current state value of the user] can only be viewed from this customer/partner home page and cannot be viewed from the Elmore’s splash page 182.” Id. (emphasis omitted). However, as found by the Examiner, Elmore’s disclosure of allowing a user to view history items described as life-cycle events of a customer (Final Act. 4 (citing Elmore ¶¶ 962–965, 999)) teaches or suggests supplying information Appeal 2020-004019 Application 12/955,486 14 for display indicative of a customer life cycle as required by limitation III(2)(iii)(b). See also id. at 14–15; Ans. 8–9. Again, Appellant does not explain why such display customization is not applicable to splash screen types of displays. Similarly, we agree with the Examiner in finding Elmore’s business rule manager and Web session controller teach or suggest basing content on predetermined content delivery rules stored in a server as required by limitation III(2)(iii)(c). See Final Act. 15–16 (citing Elmore ¶¶ 38, 42, 48, 162–167, 174–175, 182, 299, 339, 565–568, 750–755, 907– 908, 1011, 1027). URL Containing User Identification Information (limitation II(2)) Appellant further disputes the Examiner’s finding that “the resolved actual URL for displaying back to [a] client, the URL must have contained the user contact information/identification in order to deliver the requested [information] and/or which news and information item to display/provide to the user,” arguing the Examiner has provided insufficient evidence to support the finding. Appeal Br. 12 (quoting Final Act. 4). According to Appellant: The rejection provides no indication that user contact information, in fact, is necessarily present in the Elmore’s URL. Notwithstanding this, the Examiner’s discussion of this URL seems unrelated to and does not indicate that the content of the Elmore splash page 182 is dependent on the identification of a user. Id. at 13 (emphasis omitted). Appellant argues that, rather than including user identification including either the user’s inbound telephone number or the user’s email address, Elmore includes an IP address of a computer. Id. The Examiner responds: Appeal 2020-004019 Application 12/955,486 15 Typically, when requesting a file at the client’s browser, a client must provide the file/item’s URL. The web server checks if the requested URL matches an existing/stored file. If yes, then [it sends] the file back to the browser. Since Elmore teaches using [a] certain interface that works for the user system/need and displaying information that is tailored to the user’s preference, the browser request does contain information that identifies the user and allows the web server to provide the user the most appropriate information and/or promotional items. Ans. 7. Appellant’s contention is unpersuasive of reversible Examiner error. To display information applicable to a user (e.g., user personalized content), it logically follows that the user must be identified. See, e.g., Elmore ¶ 289 (Table 2.77 (“END USR VIEW”)); Parry ¶ 89 (“session information may include . . . a customer identifier”). Mears discloses identifying a customer by telephone number (Mears 1:61–64; 10:53–56, Table I; 24:9–11, Table 17). Parry discloses URL munging in which session variables, including a unique user identifier, are encoded and appended to a URL. Final Act. 7–8 (citing Parry ¶¶ 43, 48). Thus, we agree with the Examiner in finding the combination of Elmore (identifying a user), Mears (identification of a user by telephone number) and Parry (providing user identification as part of a URL) teaches or suggests disputed limitation II(2). See Final Act. 3–10, 13– 14, 17–19; Ans. 5–7, 9–10. Propriety of the Combination of References In combining the various teachings, the Examiner concludes “it would have been obvious . . . to combine the teaching[] of Elmore and [Parry’s teaching of personalizing the content of a splash screen window] in order to allow effectively communicate to the users/customers based on the users’ Appeal 2020-004019 Application 12/955,486 16 preferences.” Final Act. 17–18. The Examiner further finds “it would have been obvious . . . to combine the teachings of Elmore, Parry with [Mears’s teaching of determining whether an Internet connection exists and, if so, sending a user id/identification to the server over the Internet] in order to allow efficient communications or distributing of online content to users/customers and/or other entities.” Id. at 19. Appellant argues the Examiner failed to perform the objective analysis set forth in Graham8 and KSR9 or support the proposed combination of Elmore, Parry, and Mears with articulated reasoning as to how and why a person of ordinary skill in the art would have been motivated to combine the references. Appeal Br. 22. Appellant argues as follows: Here, the FOA’s mere conclusory reasoning that it would be obvious to have combined the disclosures of the cited references just for “efficient communications,” without more, is not sufficient to establish a prima facie showing of obviousness under 35 U.S.C. §103(a). Notably, the FOA does not make any attempt to go through the requisite analysis [required under Graham and KSR as] discussed above, and further the FOA’s brief statements in support of its combination of references do not seem to correspond to any recognized rational for properly supporting an obviousness conclusion under 35 U.S.C. §103(a). Further still, the FOA’s statements are contrary to the Federal Circuit’s recent admonition in its Personal Web decision[10] that 8 Graham v. John Deere Co., 383 U.S. 1, 17 (1966) (noting that 35 U.S.C. § 103 leads to three basic factual inquiries: (1) the scope and content of the prior art; (2) the differences between the prior art and the claims at issue; and (3) the level of ordinary skill in the art). 9 KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) (affirming Graham’s three step analysis and establishing rationales to support combining teachings of the prior art). 10 Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 993–94 (Fed. Cir. 2017). Appeal 2020-004019 Application 12/955,486 17 more than a mere statement that one skilled in the art would have attempted to combine the asserted references just because the different pieces/points of the cited references “could be combined,” is required to support a finding of obviousness. (See Personal Web, Appeal No. 2016-1174, at p. 4 (emphasis in original).) Simply arguing that “it would have been obvious to one of ordinary skill in the art at the time of the invention to combine the teachings of Elmore and Parry in order to allow effectively communicate to the users/customers based on the users’ preferences” or that “it would have been obvious to one of ordinary skill in the art at the time of the invention to combine the teachings of Elmore, Parry with Mears in order to allow efficient communications or distributing of online content to users/customers and/or other entities” consequently fails to provide a sufficient, necessary explanation of how one skilled in the art would have made such a combination, and fails to provide any indication of whether they would have had a reasonable expectation of success in doing so. Appeal Br. 22–23 (emphasis omitted). The Examiner responds, repeating previously made findings addressing (1) what each reference teaches (the scope and content of the prior art) and (2) the deficiencies of the prior art (the differences between the prior art and the claims at issue). Ans. 26–29. Addressing reasons for combining the teachings of Elmore, Parry, and Mears, the Examiner finds as follows: The combination of teachings of Elmore, Parry and Mears does allow communications to the users more effectively/efficiently as information is tailored based on the users’ profiles, preferences, or interests as cited in paragraphs above. Or to further explain that the merchant keeps the user’s identification, profile or current state value of his service, for example, in order to allow the user to upgrade his/her service (para. 506) then send to the users offers based on the merchant’s next step/rule of what and/or when to recommend to the users based on the rules engine as cited above in para. 754–755. Appeal 2020-004019 Application 12/955,486 18 Id. at 29. Appellant replies, arguing “[t]he paragraphs cited in this justification are only from Elmore, and nowhere in pages 25–29 of the Examiner’s Answer is it clear how a person skilled in the art would combine Elmore with Parry and Mears.” Reply Br. 6 (emphasis omitted). Appellant’s arguments are unpersuasive of reversible Examiner error. Addressing the first two basic Graham factual inquiries, the Examiner has made findings concerning (1) the scope and content of the prior art and (2) the differences between the prior art and the claims at issue. Ans. 26–29; Final Act. 12–19. As to the level of ordinary skill, Graham factor 3, an express definition of the level of ordinary skill is not required in all situations, as the level of ordinary skill in the art can be reflected in the cited prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error where the prior art itself reflects an appropriate level and a need for testimony is not shown.” (internal quotations omitted)); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). We find the level of ordinary skill in the art to be reflected in the cited references, and we determine that no express statement of the level of ordinary skill in the art is required. Furthermore, we determine the Examiner has articulated reasoning with rational underpinnings sufficient to justify the legal conclusion of obviousness. “[T]he law does not require that the references be combined for the reasons contemplated by the inventor.” In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992); see Outdry Techs. Corp. v. Geox S.p.A., 859 F.3d 1364, 1371 (Fed. Cir. 2017). “[A]ny need or problem known in the field of Appeal 2020-004019 Application 12/955,486 19 endeavor at the time of invention and addressed by the patent can provide a reason for combining” references. KSR, 550 U.S. at 420. However, we are mindful that, although one of ordinary skill in the art may understand that two references could be combined as reasoned by the Examiner, this does not imply a motivation to combine the references. Personal Web, 848 F.3d at 993–94; see also Belden Inc. v. Berk–Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”); InTouch Techs., Inc. v. VGO Commc’ns., Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014). As explained above, in rejecting claim 2, inter alia, the Examiner sets forth reasoning why one of ordinary skill in the art would have been motivated to combine Elmore with Parry (Final Act. 17–18) and further combine that combination of teachings with that of Mears (id. at 19). See also Ans. 29. In connection with Appellant’s argument the Examiner does not make clear how a person skilled in the art would combine the references (Appeal Br. 23; Reply Br. 6), there is no requirement that the Examiner must disclose how the structural components of a combination must work together, as Appellant contends. See MPEP § 2142 (9th ed. Rev. 10.2019, rev. June 2020). Indeed, “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981); see also KSR, 550 U.S. at 418 (“[A] court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”). Furthermore, “[a] Appeal 2020-004019 Application 12/955,486 20 person of ordinary skill is also a person of ordinary creativity, not an automaton.” Id. at 421. Moreover, an artisan must be presumed to know something about the art apart from what the references disclose. See In re Jacoby, 309 F.2d 513, 516 (CCPA 1962). Apart from unsubstantiated attorney argument, Appellant presents no persuasive evidence or technical reasoning that tends to show that combining the teachings of the references to achieve the claimed invention would have required more than mere ordinary skill. Here, as detailed above, we find the Examiner has provided the requisite “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Moreover, Appellant has not provided persuasive argument or evidence that the proposed combination uses the elements of the references in a way other than their established functions to achieve predictable results. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR, 550 U.S. at 416. Further, Appellant does not provide persuasive evidence or reasoning that the proposed combination would be “uniquely challenging or difficult for one of ordinary skill in the art” or “represented an unobvious step over the prior art.” Leapfrog Enters. Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418–19). For the reasons discussed supra, we are unpersuaded of Examiner error. Accordingly, we sustain the Examiner’s rejection of independent claim 2. For similar reasons, we also sustain the Examiner’s rejection of independent claims 12 and 19, which recite similar limitations and in which Appeal 2020-004019 Application 12/955,486 21 Appellant merely repeats arguments made in connection with claim 2. See Appeal Br. 23–24. In addition, we sustain the Examiner’s rejections of claims 3–5, 7–9, 13–15, 17, 18, 20–22, 24, and 25, which depend directly or indirectly therefrom and are not argued separately. DECISION We affirm the Examiner’s rejections of 2–5, 7–9, 12–15, 17–22, 24, and 25 under 35 U.S.C. § 103(a) as being unpatentable over the applied combinations of Elmore, Parry and Mears. SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 2–5, 7–9, 13–15, 17, 18, 20–22, 24, 25 103(a) Elmore, Parry, Mears 2–5, 7–9, 13–15, 17, 18, 20–22, 24, 25 12, 19 103(a) Elmore, Mears 12, 19 Overall Outcome 2–5, 7–9, 12–15, 17– 22, 24, 25 No 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