Ex Parte Ahmad et al

Patent Trials and Appeals BoardMay 29, 2014

90011577 - (D) (P.T.A.B. May. 29, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 90/011,577 03/17/2011 Subutai Ahmad 2230.0003L 1771 27896 7590 05/29/2014 EDELL, SHAPIRO & FINNAN, LLC 9801 Washingtonian Blvd. Suite 750 Gaithersburg, MD 20878 EXAMINER BANANKHAH, MAJID A ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 05/29/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _____________ Ex parte INTERVAL LICENSING _____________ Appeal 2014-002901 Reexamination Controls 90/011,577 & 90/012,074 Patent 6,263,507 B1 Technology Center 3900 ______________ Before ROBERT E. NAPPI, THU A. DANG, and JASON V. MORGAN, Administrative Patent Judges. NAPPI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2014-002901 Reexamination Controls 90/011,577 & 90/012,074 Patent 6,263,507 B1 2 Patent Owner (“Owner”) appeals under 35 U.S.C. § 134(b) and 306 from the Final Rejection of claims 20 through 24, 27, 28, 31, 34, 37, 38, 63 through 67, 70, 71, 74, 77, 80, 81, and 130 through 188. Claims 39, 40, 43, 82, 83, and 86 are canceled and are not appealed. Claims 1 through 19, 25, 26, 29, 30, 32, 33, 35, 36, 41, 42, 44 through 62, 68, 69, 72, 73, 75, 76, 78, 79, 84, 85, and 87 through 129 are not subject to reexamination. We have jurisdiction under 35 U.S.C. §§ 134(b) and 306. We heard oral arguments at the Oral Hearing held on May 14, 2014. We affirm. STATEMENT OF THE CASE This proceeding arose from a request for ex parte reexamination filed March 17, 2011 (Control No. 90/011,577), and a request for ex parte reexamination filed December 28, 2011 (Control No. 90/012,074). Both filings requested reexamination of U.S. Patent 6,263,507 B1 (hereinafter the ’507 patent) issued to Subutai Ahmad, Neal A. Bhadkamkar, Steve B. Cousins, Emanuel E. Farber, Paul A. Freiberger, Christopher D. Horner, Philippe P. Piernot, and Brygg A. Ullmer on July 17, 2001. The USPTO granted and subsequently merged the two requests (See Decision Merging Proceedings, August 1, 2012). The ’0507 patent relates to a system that facilitates the review of a body of information (see Abstract of the ’507 patent). Claim 20 is representative and reproduced below: 20. A method for acquiring and reviewing a body of information, wherein the body of information includes a plurality of segments, each segment representing a defined set of information in the body of information, the method comprising the steps of: acquiring data representing the body of information; Appeal 2014-002901 Reexamination Controls 90/011,577 & 90/012,074 Patent 6,263,507 B1 3 storing the acquired data; generating a display of a first segment of the body of information from data that is part of the stored data; comparing data representing a segment of the body of information to data representing a different segment of the body of information to determine whether, according to one or more predetermined criteria, the compared segments are related; and generating a display of a portion of, or a representation of, a second segment of the body of information from data that is part of the stored data, wherein the display of the portion or representation of the second segment is generated in response to the display of a first segment to which the second segment is related. REFERENCES Orr US 5,537,151 Jul. 16, 1996 Russo US 5,701,383 Dec. 23, 1997 Reilly US 5,740,549 Apr. 14, 1998 WIRE SERVICE TRANSMISSION GUIDELINES SPECIAL REPORT NUMBER 84-2, American Newspaper Publishers Association (June 15, 1984) Walter Bender & Pascal Chesnais Network Plus 900 SPIE Imaging Applications in the Work World (1988) Brij Masand et al. Classifying News Stories using Memory Based Reasoning The 15th Annual Int’l SIGIR, Assn for Computing Machinery 59-65 (June 1992) THE ASSOCIATED PRESS STYLEBOOK AND LIBEL MANUAL (Norm Goldstein ed., 1994) Appeal 2014-002901 Reexamination Controls 90/011,577 & 90/012,074 Patent 6,263,507 B1 4 Thorsten Joachims et al. WebWatcher: Machine Learning and Hypertext Carnegie Mellon University (May 29, 1995) Pascal R. Chesnais et al. The Fishwrap Personalized News System IEEE 275-282 (1995) Rune Hjelsvold et al. Integrated Video Archive Tools Assn for Computing Machinery 283-293 (1995) Makoto Iwayama & Takenobu Tokunaga Cluster-Based Text Categorization: A Comparison of Category Search Strategies SIGIR ’95 Assn for Computing Machinery 273-280 (1995) REJECTIONS AT ISSUE Rejections based upon Reilly The Examiner has rejected original claims 20 through 24, 31, 34, 37, 63 through 67, 74, 77 and 80 under 35 U.S.C. § 102(e) anticipated by Reilly. Final Rejection 3.1 The Examiner has rejected original claims 27, 38, 70, and 81 under 35 U.S.C. § 103(a) as unpatentable over Reilly and Bender. Final Rejection 3. The Examiner has rejected original claims 28 and 71 under 35 U.S.C. § 103(a) as unpatentable over Reilly and Admitted Prior Art. Final Rejection 3. 1 Throughout this opinion we refer to the Final Rejection dated May 6, 2013, Examiner’s Answer mailed on October 18, 2013, and Owner’s Brief filed September 9, 2013, and Reply Brief filed December 18, 2013. Appeal 2014-002901 Reexamination Controls 90/011,577 & 90/012,074 Patent 6,263,507 B1 5 The Examiner has rejected new claims 130, 132 through 136, 138 through 141, 143 through 147, 150 through 154, 156 through 162, 164 through 175, 178 through 181, and 185 through 188 under 35 U.S.C. § 102(e) anticipated by Reilly. Final Rejection 5. The Examiner has rejected new claims 148, 149, 176, and 177 under 35 U.S.C. § 103(a) as unpatentable over Reilly and Iwayama. Final Rejection 5. The Examiner has rejected new claims 131, 137, 142, 155, 163, 165, and 182 through 184 under 35 U.S.C. § 103(a) as unpatentable over Reilly and Bender. Final Rejection 5. Rejections based upon Bender and Russo The Examiner has rejected original claims 20, 21, 24, 27, 31, 34, 37, 38, 63, 64, 67, 70, 74, 77, 80, and 81 under 35 U.S.C. § 103(a) as unpatentable over Bender and Russo. Final Rejection 3. The Examiner has rejected original claims 28 and 71 under 35 U.S.C. § 103(a) as unpatentable over Bender, Russo, and Admitted Prior Art. Final Rejection 3. The Examiner has rejected original claims 22, 23, 65, and 66 under 35 U.S.C. § 103(a) as unpatentable over Bender, Russo, and Chesnais. Final Rejection 3. Rejections based upon Bender and Orr The Examiner has rejected original claims 20, 21, 24, 27, 31, 34, 37, 38, 63, 64, 67, 70, 74, 77, 80, and 81 under 35 U.S.C. § 103(a) as unpatentable over Bender and Orr. Final Rejection 3. Appeal 2014-002901 Reexamination Controls 90/011,577 & 90/012,074 Patent 6,263,507 B1 6 The Examiner has rejected original claims 28 and 71 under 35 U.S.C. § 103(a) as unpatentable over Bender, Orr, and Admitted Prior Art. Final Rejection 3. The Examiner has rejected original claims 22, 23, 65, and 66 under 35 U.S.C. § 103(a) as unpatentable over Bender, Orr, and Chesnais. Final Rejection 3. Rejections based upon Bender and Reilly The Examiner has rejected original claims 20 through 24, 27, 31, 34, 37, 38, 63 through 67, 70, 74, 77, 80, and 81 under 35 U.S.C. § 103(a) as unpatentable over Bender and Reilly. Final Rejection 4. The Examiner has rejected original claims 28 and 71 under 35 U.S.C. § 103(a) as unpatentable over Bender, Reilly, and Admitted Prior Art. Final Rejection 4. The Examiner has rejected new claims 130 through 147, 150 through 157, and 178 through 188 under 35 U.S.C. § 103(a) as unpatentable over Bender and Reilly. Final Rejection 6. The Examiner has rejected new claims 148, 149, 176, and 177 under 35 U.S.C. § 103(a) as unpatentable over Bender, Reilly, and Iwayama. Final Rejection 6. The Examiner has rejected new claims 134, 135, 160, 166, 168, 180, and 188 under 35 U.S.C. § 103(a) as unpatentable over Bender, Reilly, and Chesnais. Final Rejection 6. The Examiner has rejected new claims 158, 159, 186, and 187 under 35 U.S.C. § 103(a) as unpatentable over Bender, Reilly, and Russo. Final Rejection 6. Appeal 2014-002901 Reexamination Controls 90/011,577 & 90/012,074 Patent 6,263,507 B1 7 The Examiner has rejected new claims 134, 135, 160, 166, 168, 180, and 188 under 35 U.S.C. § 103(a) as unpatentable over Bender, Reilly, Russo, and Chesnais. Final Rejection 6. The Examiner has rejected new claims 158, 159, 186, and 187 under 35 U.S.C. § 103(a) as unpatentable over Bender, Reilly, and Orr. Final Rejection 6. The Examiner has rejected new claims 134, 135, 160, 166, 168, 180, and 188 under 35 U.S.C. § 103(a) as unpatentable over Bender, Reilly, Orr, and Chesnais. Final Rejection 6. The Examiner has rejected new claims 158, 159, 186, and 187 under 35 U.S.C. § 103(a) as unpatentable over Bender, Reilly, and Hjelsvold. Final Rejection 6. Rejections based upon Bender and Hjelsvold The Examiner has rejected original claims 20, 21, 24, 27, 31, 34, 37, 38, 63, 64, 67, 70, 74, 77, 80, and 81 under 35 U.S.C. § 103(a) as unpatentable over Bender and Hjelsvold. Final Rejection 4. The Examiner has rejected original claims 28 and 71 under 35 U.S.C. § 103(a) as unpatentable over Bender, Hjelsvold, and Admitted Prior Art. Final Rejection 4. The Examiner has rejected original claims 22, 23, 65, and 66 under 35 U.S.C. § 103(a) as unpatentable over Bender, Hjelsvold, and Chesnais. Final Rejection 4. Appeal 2014-002901 Reexamination Controls 90/011,577 & 90/012,074 Patent 6,263,507 B1 8 Rejections based upon Chesnais, AP Stylebook, and Wire Service Transmission Guidelines The Examiner has rejected original claims 20 through 24, 27, 31, 34, 37, 38, 63 through 67, 70, 74, 77, 80, and 81 under 35 U.S.C. § 103(a) as unpatentable over Chesnais, AP Stylebook, and Wire Service Transmission Guidelines. Final Rejection 4. The Examiner has rejected original claims 28 and 71 under 35 U.S.C. § 103(a) as unpatentable over Chesnais, AP Stylebook, Wire Service Transmission Guidelines, and Admitted Prior Art. Final Rejection 4. The Examiner has rejected new claims 130 through 147, 150 through 175 and 178 through 188 under 35 U.S.C. § 103(a) as unpatentable over Chesnais, AP Stylebook , Wire Service Transmission Guidelines, and Joachims. Final Rejection 5. The Examiner has rejected new claims 148, 149, 176, and 177 under 35 U.S.C. § 103(a) as unpatentable over Chesnais, AP Stylebook, Wire Service Transmission Guidelines, Joachims, and Iwayama. Final Rejection 5. The Examiner has rejected new claims 148, 149, 176, and 177 under 35 U.S.C. § 103(a) as unpatentable over Chesnais, AP Stylebook, Wire Service Transmission Guidelines, Joachims, and Masand. Rejections based upon Chesnais and Bender The Examiner has rejected original claims 20 through 24, 27, 31, 34, 37, 38, 63 through 67, 70, 74, 77, 80, and 81 under 35 U.S.C. § 103(a) as unpatentable over Chesnais and Bender. Final Rejection 4. Appeal 2014-002901 Reexamination Controls 90/011,577 & 90/012,074 Patent 6,263,507 B1 9 The Examiner has rejected original claims 28 and 71 under 35 U.S.C. § 103(a) as unpatentable over Chesnais, Bender, and Admitted Prior Art. Final Rejection 4. Rejections based upon Joachims The Examiner has rejected original claims 20 through 24, 31, 34, 37, 63 through 67, 74, 77, and 80 under 35 U.S.C. § 102(b) anticipated by Joachims. Final Rejection 4. The Examiner has rejected original claims 27 and 70 under 35 U.S.C. § 103(a) as unpatentable over Joachims, and Bender. Final Rejection 5. The Examiner has rejected original claims 28 and 71 under 35 U.S.C. § 103(a) as unpatentable over Joachims, Bender, and Admitted Prior Art. Final Rejection 5. The Examiner has rejected new claims 130, 132, 134 through 136, 139 through 141, 152, 157 through 162, 164, 166 through 171, 180, and 185 through 188 under 35 U.S.C. § 102(a) anticipated by Joachims. Final Rejection 7. The Examiner has rejected new claims 131, 133, 137, 138, 142, 143, 154 through 156, 163, 165, and 182 through 184 under 35 U.S.C. § 103(a) as unpatentable over Joachims and Bender. Final Rejection 7. The Examiner has rejected new claims 143 through 147, 150, 151, 153 through 156, 165, 172 through 175, 178, 179, 181, 184, and 188 under 35 U.S.C. § 103(a) as unpatentable over Joachims, and Reilly. Final Rejection 7. Appeal 2014-002901 Reexamination Controls 90/011,577 & 90/012,074 Patent 6,263,507 B1 10 The Examiner has rejected new claims 148, 149, 176, and 177 under 35 U.S.C. § 103(a) as unpatentable over Joachims, Reilly, and Iwayama. Final Rejection 7. ANALYSIS We begin our review of the Examiner’s rejections of the reexamination claims addressing the rejections based upon Joachims. Rejection of claims 20 through 24, 31, 34, 37, 63 through 67, 74, 77, and 80 under 35 U.S.C. § 102(b) anticipated by Joachims Owner argues that Joachims teaches a system, titled WebWatcher, which inserts a menu bar at the top of an original page and when the user selects the “Mark this page as interesting” button, the system finds and displays a list of related web pages. Appeal Brief 77-79. Owner argues this feature does not meet the claimed requirement of generating a display of the portion or representation of a second segment in response to the display of a first segment which is related to the second segment. Appeal Brief 80-82. Owner asserts that “because WebWatcher never displays the list of related links [which are equated to the second portion] unless and until the user selects the ‘Mark this page as interesting’ option, the display of the list of related links is not generated in response to the display of the ILPNET page.” Appeal Brief 80. Owner asserts that broadest reasonable interpretation of independent claims 20 and 63 is that the second segment “occurs in reaction to the display of the related first segment, and not, instead, in reaction to an intervening action on the part of a user.” Appeal Brief 81. Owner reasons that the claims require a causal relationship Appeal 2014-002901 Reexamination Controls 90/011,577 & 90/012,074 Patent 6,263,507 B1 11 between two displays and that, as such, require the automatic identification without any user intervention. Appeal Brief 81-82, 22-27. However, the Examiner finds that the “ILPNET” page displayed in Joachims Figure 5 is the claimed first segment, and the list of web pages WebWatcher estimates as closely related is the portion or representation of the second segment. Final Rejection 74. In response to Owner’s arguments, the Examiner finds WebWatcher has a learning machine aspect and each time a user selects a hyperlink or suggest a page is interesting WebWatcher logs the selection to learn for future advice. Answer 60. Further, the Examiner finds WebWatcher will insert advice anytime the user takes a hyperlink without clicking on the “Mark this page as interesting” button. Answer 61. The Examiner further finds that independent claims 20 and 63 do not recite “automatic generation” as argued by Owner and that while such limitation is recited in the Specification, and newly filed claim 174, it is not recited in claim 20. We disagree with Owner’s proffered claim interpretation. Contrary to Owner’s arguments, we do not consider the Specification to require the display of a second portion in response to the display of a first segment to require the generation of the display to be automatic and without user intervention. As stated by the Examiner, the claim does not recite the display is generated in response to the display of the first segment, rather the portion or representation of the second segment is generated in response to the display of the first segment. Further, while the Specification does disclose an embodiment where the display is automatic without user intervention, we decline to read such limitations into claim 20. We additionally note that the Specification also discusses an embodiment where Appeal 2014-002901 Reexamination Controls 90/011,577 & 90/012,074 Patent 6,263,507 B1 12 the display of the second segment is predicated upon user action in addition to second section being generated in response to the display of the first segment. See Col. 14, ll. 60-63 (“[A] GUI according to the invention could be implemented such that a display of the related secondary information [reaction] is produced only upon appropriate interaction with one or more menus and/or dialog boxes.”). Thus, we disagree with the claim interpretation proffered by Owner as we do not find the evidence supports Owner’s claim interpretation. Similarly, we disagree with the claim interpretation proffered in the October 11, 2011, Declaration of Danny Goodman (Exhibit A of Appeal Brief). The Declaration in paragraph 22, cites to col. 3, ll. 43-45 of the Specification of the ’507 patent, which describes the automatic embodiment, and col. 19, ll. 2-4, which states that when the primary information display changes the secondary information displays “typically” change as well, neither portion limits the term “in response to” to automatic (without user intervention). Finally, we are not persuaded of error by Owner’s argument based upon American Calcar, Inc. v. American Honda Motor Co., Inc., 651 F.3d 1318, 1340 (Fed. Cir. 2011), to show that “in response to” requires an automatic action without user interaction. Appeal Brief 25. The Federal Circuit’s decision in American Calcar, Inc. v. American Honda Motor Co., Inc. involves a district court’s claim construction which is not based upon the broadest reasonable interpretation standard, and is based upon the disclosure in particular to that case. As such, the holding does not have direct bearing on the case currently before us. Thus, we concur with the Examiner’s interpretation of the limitation “generating . . . in response to the display of [the] first segment” to be such that there is a causal relationship between the first and second Appeal 2014-002901 Reexamination Controls 90/011,577 & 90/012,074 Patent 6,263,507 B1 13 segments, but not limited to the generation being automatic and without user interaction. Having determined the scope of the claim, we look to the Examiner’s finding that Joachims anticipates the claim 20 limitation of “generating a display of a portion of, or a representation of, a second segment . . . in response to the display of a first segment to which the second segment is related.” We concur with the Examiner’s finding that the “ILPNET” page displayed in Joachims Figure 5 meets the claimed first segment, and the list of web pages WebWatcher estimates as closely related is the portion or representation of the second segment. Joachims teaches that this second portion is identified and displayed in response to the display of the first page in that it is identified and displayed because it is related to the first segment (see the last paragraph of section 2 of Joachims). This finding is also consistent with statements made in paragraphs 23-34 of the Declaration of Danny Goodman. We, however, disagree with Owner’s arguments and the statements in the Declaration that Joachims differs from the claimed invention as the display of the second segment requires user action. As discussed above, we do not find representative claim 20 to be so limited. Accordingly, Owner’s arguments have not persuaded us of error in the Examiner’s rejection of representative claim 20 and we sustain the anticipation rejection of claim 20 based upon Joachims. As Owner has not separately argued claims 21 through 24, 31, 34, 37, 63 through 67, 74, 77, and 80, we similarly sustain the anticipation rejection of these claims based upon Joachims. Rejection of original claims 27 and 70 under 35 U.S.C. § 103(a) as Appeal 2014-002901 Reexamination Controls 90/011,577 & 90/012,074 Patent 6,263,507 B1 14 unpatentable over Joachims and Bender. Owner argues that modifying Joachims to include keyword matching, such as taught in Bender, would not lead to a predictable result. Appeal Brief 82-83. Owner reasons the combination is not predictable because of the “vast differences between the two systems.” Appeal Brief 82. Further, Owner argues the Examiner’s conclusion directed to the obviousness of the combination is based upon an improper use of Official Notice. Appeal Brief 82-83. The Examiner finds that Bender teaches comparing keywords of two segments of data. Final Rejection 89. The Examiner finds that “Both Joachims and Bender relate to systems and methods for collecting and reviewing information, comparing data representing that information to identify related information, and presenting the related information to a user in a computer based interface.” Final Rejection 90 and Answer 63. Based upon these findings the Examiner concludes the skilled artisan would combine the teachings as the result would provide the predictable and expected result of deterring subject matter similarities between web pages. Final Rejection 90. We concur with the Examiner’s findings as they are supported by the Bender’s disclosure (see Bender, section titled “2. SCOPE OF THIS EXPERIMENT”) and Joachims disclosure (see first two paragraphs of Joachims section titled “2 WebWatcher”). We agree with the Examiner’s conclusion and consider it supported by sufficient rationale. We note this combination of the references is substitution of the use of one form of determining similarities between documents with another (i.e., using known functions to produce their known results). Owner has not explained nor do Appeal 2014-002901 Reexamination Controls 90/011,577 & 90/012,074 Patent 6,263,507 B1 15 we find there to be such “vast differences” between the two systems which would preclude the skilled artisan from combining the references. Thus, we are not persuaded that the Examiner erred in modifying Joachims to include keyword matching, such as taught in Bender. Owner’s arguments directed to the Examiner’s use of Official Notice is not persuasive of error as the Examiner’s rejection did not rely upon Official Notice, and as discussed above, the Examiner has provided sufficient rationale. We note that Owner, in the Reply Brief, also presents arguments directed to Joachims teaching way. However, these arguments are deemed waived as they were presented for the first time in the Reply Brief. Owner has not explained why, nor is it apparent that, these arguments were necessitated by a new point in the Answer or any other circumstance constituting “good cause” for its belated presentation. See Ex parte Borden, 93 USPQ2d 1473, 1473-74 (BPAI 2010) (“informative”) (absent a showing of good cause, the Board is not required to address arguments in the Reply Brief that could have been presented in the principal Brief). Further, had they been timely presented, we do not find the argument persuasive. “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). We do not consider the passages of Joachims cited by Owner to support the argument of teaching away, i.e. the passages do not discourage the use of comparing keywords of two segments of data, rather they merely show that Joachims determines similarity of data based upon another method. Appeal 2014-002901 Reexamination Controls 90/011,577 & 90/012,074 Patent 6,263,507 B1 16 For the aforementioned reasons, Owner’s arguments have not persuaded us of error in the Examiner’s obviousness rejection of claims 27 and 70 based upon Joachims and Bender and we sustain the rejection. Rejection of original claims 28 and 71 under 35 U.S.C. § 103(a) as unpatentable over Joachims, Bender and Owner’s Admission Owner argues the Examiner’s finding that modifying Joachims with Bender and Owner’s admission would yield predicable result is in error as it is not supported by evidence, and as such, is relying upon Official Notice, and is a conclusory statement upon which obviousness cannot be found. Appeal Brief 84-85. These arguments have not persuaded us of error in the Examiner’s findings of obviousness. As discussed above with respect to the rejection of claims 27 and 70, we do not find error in the Examiner’s findings or conclusion that the skilled artisan would combine Joachims with Bender. The Examiner further finds that the Specification of the ’507 patent includes an admission “that the use of relevance feedback methods to compare text was well known.” Final Rejection 92-94. Further, the Examiner finds that the skilled artisan would use relevance feedback in combination with Joachims and Bender as it represents one of multiple methods that could be used to compare information. Final Rejection 93. We concur with the Examiner’s finding and find it is supported by ample evidence. The Specification of the ’507 patent states “[t]he use of relevance feedback to determine the similarity between two text segments is well-known.” Col. 28, ll. 55-57. As with the combination of Joachims and Bender discussed above, the use of relevance feedback is substitution of the use of one form of Appeal 2014-002901 Reexamination Controls 90/011,577 & 90/012,074 Patent 6,263,507 B1 17 determining similarities between documents with another (i.e., using known functions to produce their known, predictable, results). Thus, we are not persuaded that the Examiner erred in modifying Joachims and Bender to include relevance ranking. For the aforementioned reasons, Owner’s arguments have not persuaded us of error in the Examiner’s obviousness rejection of claims 28 and 70 based upon Joachims and Bender and we sustain the rejection. Rejection of new claims 131, 133, 137, 138, 142, 143, 154 through 156, 163, 165, and 182 through 184 under 35 U.S.C. § 103(a) as unpatentable over Joachims and Bender Owner states that new claims 130 through 188 depend upon claims 20 or 63 and are directed to providing a user interface that allows navigation among related segments without having to return to a main menu or topic selection page and provide a brief summary of the claims. Appeal Brief 86. Owner argues that the arguments presented with respect to claim 20 apply to the rejection of these claims. Appeal Brief 89. Further, Owner argues Joachims limits the user’s ability to navigate, as the user can only move from the original page to a web page that is pointed to by a common web page unless the user leaves the WebWatcher system. Appeal Brief 89. As discussed above, Owner’s arguments with respect to claim 20 have not persuaded us of error in the Examiner’s anticipation rejection. Further, as the Examiner identified, Owner has not made it clear which claim limitations are not taught. Answer 66. Owner’s arguments directed to these claims do not provide any specificity as to how the limitations are to be interpreted and differentiated from the art, other than what is argued for Appeal 2014-002901 Reexamination Controls 90/011,577 & 90/012,074 Patent 6,263,507 B1 18 claim 20. 37 C.F.R. § 41.37(c)(1)(iv) states “[a] statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.”2 Further, the Examiner has provided a claim by claim analysis of where the claimed features are taught in Joachims. Final Rejection 190-200. Owner has not addressed in these findings. Thus, we are not persuaded of error in the Examiner’s 103 rejection of claims 131, 133, 137, 138, 142, 143, 154 through 156, 163, 165, and 182 through 184. Rejection of new claims 143 through 147, 150, 151, 153 through 156, 165, 172 through 175, 178, 179, 181, 184, and 188 under 35 U.S.C. § 103(a) as unpatentable over Joachims and Reilly and claims 148, 149, 176, and 177 under 35 U.S.C. § 103(a) as unpatentable over Joachims, Reilly, and Iwayama. Owner argues that these claims are patentable over the combination of Joachims and Bender for the reasons set forth with respect to claim 20 and discussed with respect to the arguments discussed above with respect to the other rejections of the new claims. 2 We note that on page 37 of the Reply Brief, Owner identifies a specific limitation of claim 130 and states that the Examiner “makes no effort to explain in the Examiner’s Answer how this requirement is met” and asserts that there is no automatic display. While the issue of automatic display was raised and discussed with respect to claim 20, Owner’s argument directed to limitations of claim 130 are waived as they were raised for the first time in the Reply Brief. Further, the arguments do not address the Examiner’s findings directed to these features on page 190 of the Final Rejection. Appeal 2014-002901 Reexamination Controls 90/011,577 & 90/012,074 Patent 6,263,507 B1 19 As discussed above, we are not persuaded of error in either the rejection of claim 20 or the rejections of the other new claims. Accordingly, we sustain the Examiner’s obviousness rejections of claims 143 through 151, 153 through 156, 165, 172 through 179, 181, 184, and 188. Other rejections As we have found no error in the Examiner’s rejection of claims 20 through 24, 27, 28, 31, 34, 37, 63 through 67, 70, 71, 74, 77, 80, and 130 through 188 based upon Joachims, alone or in combination with other teachings, we need not reach the other rejections of the claims. Review of alternative prior art bases for rejection of claims, which have already been determined to be appropriately rejected over the prior art, is discretionary. See, e.g., In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009) (not reaching rejections based on obviousness when claims already are rejected as anticipated). However, as the Examiner did not include claims 38 and 81 in a rejection based upon Joachims, we consider the Examiner’s rejection of original claims 20 through 24, 27, 31, 34, 37, 38, 63 through 67, 70, 74, 77, 80, and 81 under 35 U.S.C. § 103(a) as unpatentable over Chesnais and Bender. Owner argues that Chesnais in combination with Bender fails to teach the claimed comparison step. Appeal Brief 74. Owner also argues that the combination of the references would not yield predictable results because of the vast differences between the two systems and because Bender compares a single item to several articles, which is much fewer than the thousands of articles used in Chesnais’ Fishwrap system. Appeal Brief 74. In particular, Appeal 2014-002901 Reexamination Controls 90/011,577 & 90/012,074 Patent 6,263,507 B1 20 owner argues the Examiner’s conclusion that the combination would yield predicable result is in error as it is not supported by evidence, and as such, is relying upon Official Notice. Appeal Brief 15. Further, Owner argues nothing in Bender suggests modifying Chesnais to comparing articles to articles or photos as Chesnais is a topic centric online newspaper. Appeal Brief 75 and 76. The Examiner, in response to Owner’s arguments states: [I]n the rejection of claims, it is indicated why the [B]ender’s comparison method would be advantageous. From the rejection, because Chesnais discloses that each item in the system is assigned a "signature" that includes keywords and discloses identifying photos and audio that "match" a news article, and Bender discloses using a keyword matching scheme to "match" news stories to a broadcast, one of skill in the art would have been motivated to combine Bender's keyword matching scheme with the disclosure of Chesnais to identify matching photos and sound recordings. Bender discloses that the Network Plus system's use of a threshold of four matching keywords to identify related items was "computationally inexpensive" and "worked well." Bender, p. 82. Thus, it would have been obvious to use the keyword matching scheme of Bender to compare information in Chesnais because the "signatures" contain keywords and the keyword matching scheme of Bender was "computationally inexpensive" yet also "worked well." Moreover, the combination of Chesnais and Bender yields a predictable result, and one of ordinary skill in the art would clearly be capable of combining these systems to achieve the expected result of determining similarities between two information sources. Answer 55. We concur with the Examiner’s findings and conclusion. We note this combination of the references does not rely upon Official Notice and is merely the substitution of one form of determining similarities between documents with another (i.e., using known functions to produce Appeal 2014-002901 Reexamination Controls 90/011,577 & 90/012,074 Patent 6,263,507 B1 21 their known results). In addition to the rationale provided by the Examiner, we note that Bender in the section titled Motivation specifically discusses synthesis of media, newspapers, and television, and as such, the skilled artisan would consider using Bender’s teaching of providing multiple documents (segments)3 which are related to each other in a custom newspaper such as Fishwrap which is disclosed in Chesnais. Accordingly, we are not persuaded of error in the Examiner’s rejection of claims 20 through 24, 27, 31, 34, 37, 38, 63 through 67, 70, 74, 77, 80 and 81 under 35 U.S.C. § 103(a) as unpatentable over Chesnais and Bender and we sustain the Examiner’s rejection. DECISION 3 We recognize that with respect to the rejections based upon Bender, Owner argues Bender does not teach the claimed second portion or representation of a segment. Appeal Brief 46-50. Owner, in these arguments goes through several permutations of showing why the different display fields in Bender’s Figures 1 and 2 do not match up with the claimed displays. In as much as Owner’s arguments apply to this rejection, we are not persuaded of error by these arguments. The limitations directed to the displayed segments are merely describing the information displayed and are not functionally related to the claimed method. The Examiner need not give patentable weight to descriptive material absent a new and unobvious functional relationship between the descriptive material and the substrate. See In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004); In re Lowry, 32 F.3d 1579, 1583-84 (Fed. Cir. 1994); Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005). Further, we note that the claims do not require the first and second segment to be different, thus any two display fields in Bender would meet the claim. We also note the displays of Bender that seem to most closely track what Owner intends their claim to cover is the text article (left side of figure 2) as the first Footnote continued on next page. Appeal 2014-002901 Reexamination Controls 90/011,577 & 90/012,074 Patent 6,263,507 B1 22 The decision of the Examiner to reject claims 20 through 24, 27, 28, 31, 34, 37, 38, 63 through 67, 70, 71, 74, 77, 80, 81, and 130 through 188 is affirmed. Requests for extensions of time in this ex parte reexamination proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f). AFFIRMED PATENT OWNER EDELL, SHAPIRO & FINNAN, LLC 9801 Washingtonian Blvd. Suite 750 Gaithersburg, MD 20878 THIRD PARTY REQUESTORS NOVAK DRUCE + QUIGG LLP 1000 Louisiana Street 53rd Floor Houston, TX 77002 Lori A. Gordon STERNE, KESSLER, GOLDSTEIN & FOX PLLC 1100 New York Avenue, NW Washington, DC 20005 gvw segment and the still of the video (upper left of figure 2) as the portion or representation of the second segment.