Edward Patrick et al.

Patent Trials and Appeals Board

Aug 20, 2021

2020004019 (P.T.A.B. Aug. 20, 2021)

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
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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.”).
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[(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:
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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”).
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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
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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).
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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
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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
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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).
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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
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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.
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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
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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
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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:
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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’
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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).
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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.
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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
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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]
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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
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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